New Supplemental Examination: USPTO Outlines New Rules

Navigating the New Mechanism to Cure Inequitable Conduct

USPTO releases game-changing rules on Jan. 24

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

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Conducted on Tuesday, February 14, 2012

Recorded event now available

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Course Materials

This CLE course will provide guidance for counsel to IP owners and inventors on the supplemental examination process under the new America Invents Law. The panel will review the mechanics of the procedure and outline approaches to handle the ethical risks presented by the process.

Description

Supplemental examination is among the many changes coming in 2012 as a result of the enactment of the America Invents Act. The new procedure provides patent applicants with a mechanism to “consider, reconsider, or correct information believed to be relevant to the patent.”

Supplemental examination provides that a patent cannot be held unenforceable based on the information provided during a supplemental examination. Only supplemental examination will provide patent owners this new statutory immunity from inequitable conduct-based challenges.

Examining the new proceeding in the context of the other available post-grant proceedings is the best way to evaluate the advantages and opportunities offered by each, including relating to potential inequitable conduct defenses. Counsel must consider the ethics-related implications of supplemental examination.

Listen as our authoritative panel of patent practitioners discusses the new supplemental examination proceeding, the mechanics of the procedure and the considerations that may govern decisions to use it over other post grant options. The panel will also examine the ethics implications, including questions that must await USPTO and judicial developments relating to supplemental examination.

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Outline

  1. Supplemental examination
    1. Mechanics
    2. Therasense “but for materiality”
    3. Considerations in selecting supplemental examination
    4. Ongoing rulemaking considerations
  2. Potential ethics-related implications of supplemental examination and open questions
    1. Governing candor obligations
    2. Candor-violation consequences
    3. Potential conflict-of-interest considerations
    4. Inequitable conduct-related implications

Benefits

The panel will review these and other key questions:

  • What are the mechanics of using the supplemental examination process?
  • What are the primary factors for deciding whether to use supplemental examination to consider, reconsider, or correct information relevant to a patent?
  • What are the ethical risks that can arise in the supplemental examination process—and how can counsel avoid ethics violations?

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

Faculty

Scott A. McKeown
Scott A. McKeown
Partner
Oblon Spivak McClelland Maier & Neustadt

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the...  |  Read More

Lisa A. Dolak
Lisa A. Dolak
Angela S. Cooney Professor of Law
Syracuse University College of Law

Her research interests include issues at the intersections of patent law and judicial procedure, patent law and the...  |  Read More

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