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.
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.
- Supplemental examination
- Therasense “but for materiality”
- Considerations in selecting supplemental examination
- Ongoing rulemaking considerations
- Potential ethics-related implications of supplemental examination and open questions
- Governing candor obligations
- Candor-violation consequences
- Potential conflict-of-interest considerations
- Inequitable conduct-related implications
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?
Scott A. McKeown, Partner
Oblon Spivak McClelland Maier & Neustadt,
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,
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.
On-Demand CLE - Streaming Audio
Includes recorded streaming audio of full program plus PDF handouts.
On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.
AK, AZ, CA, CO, DE, FL, GA, HI, IA, ID, IL, IN*, KS, 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 (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)
*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 $297.00
Includes full event recording plus handouts.
Strafford is an approved provider and self-study CLE credit is available in most states.
AK, AZ, CA, CO, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)
Strafford will process CLE credit for one person on each recording.
Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email firstname.lastname@example.org to place your order.
Recorded Webinar Download $297.00
Recorded Audio Download (MP3) $297.00
Strafford webinars 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.
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.
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.
I liked the practical insights, particularly when tied to cases the presenters had worked on.
Strafford provided an enthusiastic presentation that focused on patent practice, not theory.
David H. Vance
Vance Intellectual Property
The computer and telephone sign-on was very easy, and the instructions were straightforward.
The presentations were excellent and timely, and I thought the Q&A was very good.
J. Thomas Carrato
I enjoyed the webinar’s practical pointers.
Steptoe & Johnson
Intellectual Property Law Advisory Board
Winthrop & Weinstine
Fulbright & Jaworski
Winston & Strawn
Feinberg Day Alberti & Thompson
Buchanan Ingersoll & Rooney
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.