It is the courts and not the Office that are in the best position to fashion an equitable remedy to fit the precise facts in those cases where inequitable conduct is established. Furthermore, inequitable conduct is not set by statute as a criteria for patentability but rather is a judicial application of the doctrine of unclean hands which is appropriate to be handled by the courts rather than by an administrative body. Because of the lack of tools in the Office to deal with this issue and because of its sensitive nature and potential impact on a patent, examiner determinations generally will not deter subsequent litigation of the same issue in the courts on appeal or in separate litigation. In addition, examiner determinations would significantly add to the expense and time involved in obtaining a patent with little or no benefit to the patent owner or any other parties with an interest.
Accordingly, the examiner does not investigate and reject original or reissue applications under 37 CFR 1.56. Likewise, the examiner will not comment upon duty of disclosure issues which are brought to the attention of the Office except to note, in appropriate circumstances, that such issues are not considered by the examiner during examination of patent applications, or during reexamination proceedings or supplemental examination.
Issues of fraud and/or inequitable conduct in an interference proceeding before the Board may be considered by the Board if there is a showing of good cause.