Avoiding Bad Faith in Patent Prosecution: Recent Court Guidance, Best Practices When Preparing Patent Applications

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


Conducted on Tuesday, August 31, 2021

Recorded event now available

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Course Materials

This CLE course will guide patent counsel on avoiding bad faith when preparing and prosecuting patent applications. The panel will discuss the types of activity that patent prosecutors need to watch for and will provide insights into practical tactics to avoid the risk of a ruling similar to the Federal Circuit's recent decision.

Description

A recent Federal Circuit precedential decision, Cap v. Zinus, emphasizes the importance of acting in good faith and avoiding questionable behavior by all the parties involved. The court set aside the judgment for false testimony. There was no evidence the attorneys involved in prosecution knew anything about the false testimony. Nothing was said either by the district court or the Federal Circuit imputing any knowledge to the prosecuting attorney of the client's affirmative misrepresentations.

This case represents a dilemma for a prosecuting attorney. No legitimate patent prosecutor wants to be involved with and perhaps even be sucked in by such lies. Drawing on the Zinus case, patent prosecutors can take steps when preparing the patent application to minimize the risks. The prosecuting attorney can ask the inventor specific questions and show the inventor the draft claim(s).

Should a patent prosecutor have any inkling of misrepresentations, he or she should proceed with caution. The panel will also discuss other recent district court and Federal Circuit relevant decisions.

Listen as our panel of patent attorneys discusses the types of activity that patent prosecutors need to watch for and provides insights into practical tactics to avoid the risk of a ruling similar to the Federal Circuit's recent decision.

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Outline

  1. Activities that may raise red flags
  2. Recent court guidance
  3. Best practices to avoid bad faith risks

Benefits

The panel will review these and other noteworthy issues:

  • What activities should put patent prosecutors on alert for possible questionable behavior?
  • How are the courts treating the issues of bad faith in patent cases?
  • What best practices should patent counsel employ to avoid bad faith questions and concerns?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

Feldstein, Mark
Mark J. Feldstein, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and...  |  Read More

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