Patent Law Essentials: A Concise Guide

By Alan L. Durham | Go to book overview

CHAPTER 9
Enforceability
Defenses

Certain defenses to a claim of patent infringement produce, if successful, a holding that the patent is unenforceable rather than invalid. The most important of these are the inequitable conduct and misuse defenses.1 If a patent is unenforceable, it cannot be the basis of an infringement claim.


9.1 INEQUITABLE CONDUCT

In a court proceeding, the presence of an adversary helps to keep the litigants honest. If one party shades the truth or withholds important evidence from the court, the other party will expose the error, if it can. As discussed in Section 5.1, patent prosecution is ex parte, meaning that persons who might oppose the issuance of a patent have no opportunity to participate. If the applicant misrepresents the facts, there is no one to contradict him. Moreover, the Patent Office often relies heavily on information provided by the applicant. The applicant's s sales activities, for example, might be enough to raise a statutory bar under 35 U.S.C. § 102(b),2 but the patent examiner generally knows about those activities only what the applicant chooses to tell. Nevertheless, every issued patent enjoys a presumption of validity.

Because an applicant could take unfair advantage of this situation, applicants are charged with a duty of candor more demanding than what

1 Another unenforceability defense might be raised where ownership of a patent subject to a
terminal disclaimer had been transferred, contrary to the requirement that patents linked by
a terminal disclaimer remain commonly owned. See Section 8.12.

2See Section 8.10.1.

-127-

Notes for this page

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items

Items saved from this book

This book has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this book

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this page

Cited page

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited page

Bookmark this page
Patent Law Essentials: A Concise Guide
Table of contents

Table of contents

  • Title Page i
  • Contents iii
  • Preface vii
  • Chapter 1 - Overview 1
  • Chapter 2 - Patents Distinguished from Other Rights 9
  • Chapter 3 - Reading a Patent 15
  • Chapter 4 - Patentable Subject Matter 23
  • Chapter 5 - Patent Prosecution 31
  • Chapter 6 - Ownership and Other Rights 43
  • Chapter 7 - Interpreting Patent Claims 51
  • Chapter 8 - Conditions of Patentability 67
  • Chapter 9 - Enforceability Defenses 127
  • Chapter 10 - Infringement 135
  • Chapter 11 - Patent Litigation 171
  • Chapter 12 - Special Topics 195
  • Note on Sources 211
  • Appendix A - Sample Utility Patents 213
  • Appendix B - Sample Design Patents 231
  • Index 249
  • About the Author 255
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this book

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Full screen
/ 256

matching results for page

Cited passage

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited passage

Welcome to the new Questia Reader

The Questia Reader has been updated to provide you with an even better online reading experience.  It is now 100% Responsive, which means you can read our books and articles on any sized device you wish.  All of your favorite tools like notes, highlights, and citations are still here, but the way you select text has been updated to be easier to use, especially on touchscreen devices.  Here's how:

1. Click or tap the first word you want to select.
2. Click or tap the last word you want to select.

OK, got it!

Thanks for trying Questia!

Please continue trying out our research tools, but please note, full functionality is available only to our active members.

Your work will be lost once you leave this Web page.

For full access in an ad-free environment, sign up now for a FREE, 1-day trial.

Already a member? Log in now.