미국 특허법상 불공정행위 법리의 새로운 전개－ Therasense v. Becton 항소심 판결을 중심으로 －

Inequitable Conduct is the doctrine approved by the court of equity. A U. S. patent may be unenforceable when a court determines that any conduct by a patentee is accepted as a fraud on the Patent Office. This doctrine came widely used in almost patent infringement action. But some commentators and courts pointed out the flaws in the existing standard of the doctrine. So U. S. CAFC's en banc Therasense decision held that raising the standard for proving inequitable conduct to solve problems. First, in the view of materiality prong, the court now demands evidence of but-for materiality. So but for the patentee's deception, the PTO would not have allowed the claim. Second, in the view of intent to deceive prong, the court demands evidence of a deliberate decision to deceive. The court also rejected the sliding scale approach that means strong evidence of materiality to compensate for weak evidence of intent to deceive (and vice-versa). After the decision, PTO proposed to modify PTO Rules to follow Therasense decision, especially in limiting the scope of materiality. And the supplemental examination proceeding in the Leahy-Smith America Invents Act (AIA) that be able to cure the inequitable conduct comes up. Although many commentators criticizes the Therasense standard, the result depends how courts set the standard specificly and the Supreme Court will review the standard.