• January 23, 2023

ILPTO update: Intent to deceive is a prerequisite for finding of Fraud on the PTO

In a recent decision the ILPTO reiterated that subjective intent to deceive is a prerequisite for imposing sanctions on patentees who violated the strict disclosure obligations under the Patents Act. A mistake in good faith by the inventor or the agent prosecuting the application does not amount to Fraud on the PTO and will not give rise to sanctions against the patentee.

Section 18 of the Patents Act, 1967 requires to disclose all the prior art cited by foreign patent offices in connection with corresponding applications and all prior art known to the applicant. Failure to do so may lead to the revocation or shortening of the patent as well as to monetary claims by competitors seeking compensation if the patent constituted a barrier to market entry. In a recent decision, the ILPTO rejected a petition to revoke a patent which was among others based on the grounds that the patentee did not report prior art cited in prosecution of corresponding foreign applications. The ILPTO held that in view of the credible testimony of the agent prosecuting the application, it is clear that the omission to report the cited art was a result of a mistake and there was no deliberate attempt to mislead the examiner. The ILPTO accordingly declined to exercise the sanctions available for breach of the section 18 disclosure obligations.

The decision is particularly significant in view of some recent case law by the courts which seemed to imply that the threshold for intent can be set lower and that Fraud on the PTO can also be found in cases involving negligence. The ILPTO thus remains firm in its position that intent to deceive is required before the arsenal of sanctions against non-disclosure can be invoked.

This update article is provided for general information only and is not in lieu of legal advice. Please contact us directly for any required advice on specific matters.

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