AIA and Patent Prosecution: Navigating the Ethical Grey Areas
Recording of a 90-minute premium CLE webinar with Q&A
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.
New ethical landscape of first-to-file
- No Judicial Statutory Interpretation Yet
- “Best guess” at Which Law Should Be/Have Been Applied
- Compliance with USPTO Rules
- Prior art
- Filing strategy
- Determining which statutes applies
- Entitled to that effective filing date?
AIA’s Answer to Possible Inequitable Conduct Issues: Supplemental Examination
- Pre-Litigation “car wash”?
- Estoppel considerations
“Without Deceptive Intention” Removed from 35 U.S.C.
- Correct Inventorship
Best Mode Challenges
- Best Mode is still required under 35 U.S.C. §112
- AIA amended 35 U.S.C. §282 to remove failure to disclose best mode as grounds for invalidity or unenforceability
- What if a client does not want to disclose the best mode?
- Lab Notebooks – They haven’t gone away
- Averments & Certifications
- New Duties / Extinguished Duites – Knowing Your Duty
- 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
Drinker Biddle & Reath
Ms. Meyer drafts, prosecutes and opines U.S. patents and patent applications, as well as oversees patent portfolio... | Read More
Ms. Meyer drafts, prosecutes and opines U.S. patents and patent applications, as well as oversees patent portfolio management and development in the U.S. and coordinating efforts overseas. She obtains patent term extensions, oversees obtaining Supplemental Protection Certificates and their equivalents abroad and handles requests for reconsideration of patent term adjustment. She also provides expert opinions on ethics issues arising from patent prosecution.Close
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
Mr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He is a founding author of the Patent Docs weblog, which focuses on biotechnology and pharmaceutical patent law.Close