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Unpublished Paper
An Economic Analysis of Patent Law's Inequitable Conduct Doctrine
ExpressO (2010)
  • Thomas F. Cotter

In recent years, patent law’s inequitable conduct doctrine has attracted considerable attention from judges, legislators, patent lawyers and commentators, culminating most recently in the Federal Circuit’s decision to reconsider en banc several aspects of the doctrine in Therasense, Inc. v. Becton, Dickinson & Co. Building on the work of other scholars, this Article proposes an instrumental view of the doctrine as, ideally, a tool for inducing patent applicants to disclose the optimal quantity of information relating to the patentability of their inventions; it then presents a formal model of the applicant’s choices in deciding how much information to reveal. The model suggests, among other things, that the conditions that trigger a finding of inequitable conduct, both in the doctrine’s current form and in various proposed reformulations, are at best only a rough proxy for the conditions that define optimal disclosure. The model also illuminates how current doctrine poorly defines many of the variables affecting a rational applicant’s decisionmaking process, and thus potentially encourages risk-averse agents to overdisclose. Although the model neither confirms nor refutes critics’ claims that the doctrine routinely induces overdisclosure and excessive administrative costs, the model demonstrates how various doctrinal changes would reduce these reputed consequences. Finally, the model suggests that the need for an inequitable conduct doctrine may be greater in a regime like that of the United States, which lacks an effective system for postgrant oppositions. Conversely, if the United States adopted a postgrant opposition system, it could—and arguably should, to avoid even greater risks of applicant overdisclosure—simultaneously weaken some aspects of the inequitable conduct doctrine.

  • patents,
  • inequitable conduct
Publication Date
September 21, 2010
Citation Information
Thomas F. Cotter. "An Economic Analysis of Patent Law's Inequitable Conduct Doctrine" ExpressO (2010)
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