AIA and Patent Prosecution: Navigating the Ethical Grey Areas

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Wednesday, July 24, 2013

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Course Materials

This CLE course will provide patent counsel guidance on the legal ethics implications of the new patent system and recent changes in patent law. The panel will offer best practices for staying on the right side of the ethical line in patent prosecution.


The America Invents Act (AIA) revamped patent laws but exposed patent counsel to new legal ethics risks. Ethical challenges have arisen from many of the changes in patent prosecution, including the switch to the first-to-file system.

While the AIA leaves the best mode requirement in place, the best mode defense that a patent is invalid or unenforceable for failure to disclose the best mode is no longer an option. If a client does not want to disclose the best mode, counsel may face a conflict of interest or at the very least would be committing a fraud on the office to go forward with preparing and filing an application knowing the best mode is not recited.

Patent counsel must understand the new ethics considerations that arise from complying with AIA in patent prosecution. Counsel must also understand emerging ethical grey areas and where to draw the line to avoid violating legal ethical rules.

Listen as our authoritative panel of patent attorneys examines the new ethical landscape of first-to-file, the challenges of best mode requirements, and how to avoid and overcome them. The panel will offer best practices for staying on the right side of the legal ethics line in patent prosecution.



  1. New ethical landscape of first-to-file
    1. No Judicial Statutory Interpretation Yet
    2. “Best guess” at Which Law Should Be/Have Been Applied
    3. Compliance with USPTO Rules
    4. Dates
      1. Prior art
      2. Filing strategy
      3. Determining which statutes applies
      4. Neglect
      5. Entitled to that effective filing date?
  2. AIA’s Answer to Possible Inequitable Conduct Issues: Supplemental Examination
    1. Pre-Litigation “car wash”?
    2. Estoppel considerations
  3. “Without Deceptive Intention” Removed from 35 U.S.C.
    1. Reissue
    2. Correct Inventorship
  4. Best Mode Challenges
    1. Best Mode is still required under 35 U.S.C. §112
    2. AIA amended 35 U.S.C. §282 to remove failure to disclose best mode as grounds for invalidity or unenforceability
    3. What if a client does not want to disclose the best mode?
  5. Lab Notebooks – They haven’t gone away
  6. Averments & Certifications
  7. New Duties / Extinguished Duites – Knowing Your Duty
  8. Opinions
  9. Best practices


The panel will review these and other key questions:

  • How has the AIA changed the ethical landscape for patent attorneys?
  • What are the legal ethics implications of supplemental examination?
  • What steps should patent counsel take to ensure compliance with legal ethics requirements?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


Mercedes K. Meyer
Mercedes K. Meyer

Drinker Biddle & Reath

Ms. Meyer drafts, prosecutes and opines U.S. patents and patent applications, as well as oversees patent portfolio...  |  Read More

Kevin E. Noonan, Ph.D.
Kevin E. Noonan, Ph.D.

McDonnell Boehnen Hulbert & Berghoff

Mr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents...  |  Read More

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