News

How to Avoid Losing Your Patent

Inequitable conduct verdicts hurt; protect your patent with these eight steps

During the early and mid-1990s, Purdue Pharma filed three patent applications for oxycodone formulations. The applications highlighted an unexpected finding:

It has now been surprisingly discovered that the presently claimed controlled release oxycodone formulations acceptably control pain over a substantially narrower, approximately fourfold [range] (10 to 40 mg every 12 hour-around-the-clock dosing) in approximately 90% of patients. This is in sharp contrast to the approximately eight-fold range required for approximately 90% of patients for opioid analgesics in general.

But in 2000, when Purdue sued Endo Pharmaceuticals, alleging that Endo’s generic drug would infringe its three patents, Endo contended that the court should not enforce the patents because Purdue had not explained to the patent examiner that the discovery had been a product of an inventor’s theory-based insight, unsupported by data. Federal district and appellate court judges inferred that Purdue had intended to deceive the patent examiner and declared Purdue’s patents unenforceable. The result? The termination of rights in three patents that cover OxyContin, a drug that reportedly generated more than 70% of Purdue’s annual revenue at one time.

Such verdicts are known as findings of inequitable conduct. They can destroy or severely impair an inventor’s reputation, says St. Jude Children’s Research Hospital director of technology licensing J. Scott Elmer. "An inventor has a duty of candor, good faith, and honesty to patent examiners during the process of obtaining a patent," says David G. Latwesen, a patent attorney at Wells St. John in Spokane, Wash. Inequitable conduct can occur, he says, if an inventor intentionally misleads the examiner.

And the penalties can go beyond a court determination: An inventor guilty of inequitable conduct can "probably forget about raising money or participating in a start-up company," says Elmer. Technology licensing personnel and patent attorneys, he says, will be extremely skeptical of any of the inventor’s new inventions. The patent-killing behavior may also bring grave consequences for the inventor’s organization if it holds the now-worthless patent rights.

Want to avoid becoming the focus of an inequitable conduct defense? Here are eight tips from experts:

By Phillip Jones

Full Story: http://www.the-scientist.com/2005/11/7/34/1

News Catrgory Sponspor:


Dorsey & Whitney - An International business law firm, applying a business perspective to clients' needs in Missoula, Montana and beyond.

Leave a Comment

You must be logged in to post a comment.