Mack on Research Corp. Techs., Inc. v. Microsoft, 2008 U.S. App. LEXIS 16420 (Fed. Cir. 2008)
In Research Corporation Technologies, Inc. v. Microsoft Corporation, the trial court refused to enforce patents assigned to the plaintiff because the plaintiff failed to disclose post-filing research. However, on appeal, the Federal Circuit reversed. In this commentary, Olga V. Mack, a patent litigator at the Palo Alto office of Wilson Sonsini Goodrich & Rosati, analyzes the Federal Circuit’s reversal and discusses patent unenforceability for inequitable conduct. She writes:
Applicant must disclose to the USPTO the prior art material to the patentability. While numerous materiality tests exist, the reasonable examiner standard outlined in 37 C.F.R. § 1.56 is the most common test. Based on the reasonable examiner standard, information is material if there is a substantial likelihood that a reasonable examiner would have considered it important in determining whether to allow the application to issue as a patent. Consequently, for example, cumulative prior art references are not material.
“Inventors of the patents in this case tested certain additional parameters after they filed the USPTO applications at issue. The Federal Circuit held that no obligation to report to the USPTO exists for post-filing research because these activities are not material to their inventive activity.”
Thus, practitioners should consider numerous factors before deeming the post-filing research as immaterial and not disclosing it to the USPTO. In light of the Courts holding in this case, the following factors indicate that the post-filing research is not material and need not be disclosed to the USPTO:
(a) The post-filing research constituted basic scientific research, not verification of the patented technology.
(b) The inventors tested the invention claimed in the patent application long before their application.
(c) The post-filing research is not necessary to practice the patented invention.
(d) The patents do not even mention the outcome of the post-filing research.
(e) The patented technology and post-filing research had different purposes and disclosures.
(f) The post-filing research did not attempt to test the patented invention but instead sought to explore.
Of course, determining whether the post-filing research had different purposes and disclosures requires practitioners to judge the extent to which the post-filing research relates to the claimed invention. In doing so, the practitioners should discuss the specific circumstances and the above-outlined factors with their clients. This is especially important if the practitioner does not have any educational or practical background in the relevant field. Moreover, if practical, the practitioners should discuss this issue with a person of ordinary skill in the art (e.g., a person who practices in the field of invention at issue). It may be prudent, however, to disclose the post-filing research in close cases.