Information Disclosure in Patent Prosecution: IDS Filings, Key Considerations, Strategies for Disclosure

A live 90-minute premium CLE webinar with interactive Q&A


Tuesday, September 15, 2020

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, August 21, 2020

or call 1-800-926-7926

This CLE webinar will guide patent counsel on disclosing relevant information in patent prosecution and post-issuance patent proceedings such as supplemental examination. The panel will discuss the considerations for the elements of the information disclosure statements, including the IDS pleading, Form PTO/SB/08a and 08b, and addressing the timing of the filing. The panel will also examine the considerations for PTAs, continuing applications, and national phase applications. The panel will offer best practices for information disclosure in patent prosecution.

Description

The duty of disclosure is a critical requirement of U.S. patent prosecution. Each individual involved with filing and prosecuting the application is required to disclose what he or she knows is material to patentability.

This duty continues until a patent is issued and may rise again if the patent is involved in post-issuance proceedings at the USPTO. To meet the duty to disclose, patent applicants and their counsel should keep several considerations in mind when preparing and submitting information disclosure statements (IDS) to the USPTO.

Failing to comply with the duty of disclosure requirements can be costly. It could lead to an inequitable conduct ruling, an unenforceable patent, and damages.

Patent counsel should also consider the timing of IDS submissions. As the prosecution progresses, these submissions may become more costly and challenging. As a result, counsel should encourage clients to disclose early, recognizing that if and when new relevant information comes to light, it too must be disclosed.

Listen as our authoritative panel of patent attorneys examines the composition of an IDS filing. The panel will discuss the various considerations for the elements of the filing, including the IDS pleading, Form PTO/SB/08a and 08b, and addressing the timing of the filing. The panel will also discuss the considerations for PTAs, continuing applications, and national phase applications. The panel will offer best practices for information disclosure in patent prosecution.

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Outline

  1. IDS filings: brief overview
  2. Considerations for elements of the IDS filing
    1. IDS pleas
    2. Form PTO/SB/08a
    3. Form PTO/SB/08b
    4. Timing
  3. Other considerations
    1. PTAs
    2. Continuing applications
    3. National phase applications
  4. Best practices for disclosure

Benefits

The panel will review these and other key issues:

  • What considerations for Form PTO/SB/08a or Form PTO/SB/08b should patent counsel keep in mind?
  • What should be disclosed related to a continuing application?
  • What role do IDSs play in a supplemental examination?
  • What strategies should counsel employ when determining whether and when to disclose?

Faculty

Burgy, Adriana
Adriana L. Burgy

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

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

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