Wednesday, August 26, 2009

Failure to Disclose Prior Art Previously Cited in a Parent Application is not Inequitable Conduct

Defendant's motion to dismiss plaintiff's counterclaim of inequitable conduct for failure to state a claim was granted. "When examining a continuation application, the patent examiner will consider the information that was considered by the PTO in the parent application. . . . [A]ny prior art references and/or rejections that are part of the file history of the parent application are considered when examining the continuation application. The applicant is under no duty to resubmit such information in the continuing application. Therefore, it is not inequitable conduct for an applicant not to resubmit information that is already before the PTO in the parent application."

E-Bay, Inc. v. IDT Corp et al.,
(ARWD August 24, 2009, Order) (Barnes, J.)

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