Information Disclosure in Patent Prosecution: IDS Filings, Key Considerations, Strategies for Disclosure
A live 90-minute premium CLE video webinar with interactive Q&A
This CLE course 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 information disclosure statements (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.
Outline
- IDS filings: a brief overview
- Considerations for elements of the IDS filing
- Form PTO/SB/08a
- Form PTO/SB/08b
- Timing
- Other considerations
- PTAs
- Continuing applications
- National phase applications
- 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
Paul W. Browning, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman... | Read More
Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman proceedings, and on appeal. His litigation experience includes taking and cross examining witnesses at trial, briefing and arguing dispositive motions, drafting appellate briefs, and arguing cases on appeal. He has also managed day-to-day litigation activities in actions involving multiple parties. In addition, he advises clients on patent matters, including coordination of prosecution and U.S. and foreign litigation strategy.
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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
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.
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Anthony M. Gutowski
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent... | Read More
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations.
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Thomas L. Irving
Partner
The Marbury Law Group
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
CloseEarly Discount (through 10/13/23)
Cannot Attend November 2?
Early Discount (through 10/13/23)
You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.