The Microsoft challenge in Microsoft v. Lucent raises an important practical alternative to the duty of disclosure as a way to encourage an applicant’s complete searching for and citation of prior art that is now lacking under the current Federal Circuit interpretation of the statutory presumption of validity:

What positive incentive does a patent applicant have to cite the best prior art to the Office during examination – or reexamination? Heretofore, cynical applicants might say that they would rather obtain their patent without citation of the best prior art if this could be done without inequitable conduct: The statutory presumption of validity is the same no matter whether the prior art was considered during procurement or not.

But, if the Microsoft challenge is successful, the patent applicant who does cite the best prior art will continue to be rewarded with the current, strong statutory presumption of validity, while the applicant who even innocently failed to cite the best prior art will be penalized by working under a preponderance standard.

Thus, the Microsoft challenge, if successful, would encourage patent applicants to search for and cite the best prior art during prosecution and encourage the filing of reissues or reexaminations at an early date to rectify shortcomings in the procurement.