New Supplemental Examination: USPTO Outlines New Rules

Navigating the New Mechanism to Cure Inequitable Conduct

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


Conducted on Tuesday, February 14, 2012
Recorded event now available


This CLE webinar 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.

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?

Faculty

Scott A. McKeown, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the Reexamination/Reissue team responsible for electronics, wireless communications, software and computer-related inventions and business methods. He handles post-issuance proceedings at the USPTO including reissue applications, ex parte and inter partes reexamination proceedings and appeals to the BPAI.

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

Her research interests include issues at the intersections of patent law and judicial procedure, patent law and the media, and patent law and legal ethics. Her research projects focus on media coverage of the U.S. patent system, the effects of the evolving inequitable conduct doctrine on the practice of patent law, and a reconsidered theory of subject matter conflicts.

Ordering

On-Demand CLE - Streaming Audio

Our best recorded option for CLE accreditation. Includes recorded streaming audio of full program plus PDF handouts.

Strafford is an approved provider and can request CLE credit for On-Demand programs in the following states. (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

AK, AZ, CA, CO, DE, FL, GA, HI, IA, ID, IL, IN*, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY*, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

On-Demand CLE Audio $149.00

How does this work?


Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in the following states. (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

AK, AZ, CA, CO, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NM, OR, PA, TN, TX, UT, VT, WA, WV, WY

To apply for Continuing Education credit for a recorded event, contact Strafford CLE to obtain an Attorney Affirmation Form at 1-800-926-7926 ext. 35 or CLE@straffordpub.com.

Recorded Webinar Download $49.00

How does this work?

Recorded Audio Download (MP3) $49.00

How does this work?

DVD (Slide Presentation with Audio) $49.00 plus $9.45 S&H

How does this work?

Webinar

Strafford webinars/teleconferences offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

Ethics Credit

An excellent opportunity to earn ETHICS CLE credits in states where webinars are accredited.  Note: Strafford cannot guarantee that Virginia will approve ethics credits for this event.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

The speakers stayed on point and covered the topic thoroughly.

Daiva Tautvydas

I liked that the webinar gave me the ability to sit at my desk and that the speakers provided personal experiences on the topic.

Katy Dobrowitsky

Miller Canfield

I thought Strafford's program provided good information without being too lengthy.

Erin Aures

McCarter & English

I felt the presenters were very knowledgeable and I liked that they discussed real situations. This was definitely one of the more worthwhile presentations.

Kathleen Mellon

YoungBasile

Convenient and well-organized.  Well-run program.

Michael V. Kruljac

IMERYS

or call 1-800-926-7926

Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.