Presenting a live 90-minute webinar with interactive Q&A AIA and Patent Prosecution: Navigating the Ethical Grey Area WEDNESDAY, JULY 24, 2013 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Mercedes K. Meyer, Partner, Drinker Biddle & Reath , Washington, D.C. Kevin E. Noonan, Ph.D., Partner , McDonnell Boehnen Hulbert & Berghoff , Chicago The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory and you are listening via your computer speakers, you may listen via the phone: dial 1-866-869-6667 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail sound@straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again.
FOR LIVE EVENT ONLY For CLE purposes, please let us know how many people are listening at your location by completing each of the following steps: In the chat box, type (1) your company name and (2) the number of • attendees at your location Click the SEND button beside the box • If you have purchased Strafford CLE processing services, you must confirm your participation by completing and submitting an Official Record of Attendance (CLE Form). You may obtain your CLE form by going to the program page and selecting the appropriate form in the PROGRAM MATERIALS box at the top right corner. If you'd like to purchase CLE credit processing, it is available for a fee. For additional information about CLE credit processing, go to our website or call us at 1-800-926-7926 ext. 35.
If you have not printed the conference materials for this program, please complete the following steps: • Click on the + sign next to “Conference Materials” in the middle of the left - hand column on your screen. • Click on the tab labeled “Handouts” that appears, and there you will see a PDF of the slides for today's program. • Double click on the PDF and a separate page will open. • Print the slides by clicking on the printer icon.
AIA and Patent Prosecution: Navigating the Ethical Grey Areas July 24, 2013 Mercedes Meyer, Ph.D. Kevin Noonan, Ph.D.
We’re Not Your Lawyers • These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the speakers and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, Drinker Biddle & Reath LLP and McDonnell Boehnen and the speakers cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with either firm or either speaker, or any combination thereof. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. • And nothing represents the views of any sentient life form on the earth or universe, or any parallel universe, alive or dead, fictitious or real! This is for entertainment purposes only. 6
What we will try to cover! • The timeline of change. • Who really gets in trouble. • The AIA. • The New USPTO Ethics Rules. • Daily Business of Prosecution, Litigation, Opinions, Transactions. • Some Solutions? 7
Timeline of Change - Date Insanity New PTO Ethics Rules 6/8/95 11/29/99 12/10/04 9/16/2011 9/26/2011 9/16/2012 5/29/00 3/16/2013 AIPA URAA • FITF PTA 154(b) • Derivation • Prioritized Exam Loss of • Claim of benefit – 1.78 interference • Publication after 18 mos. • Repeal of statutory • Inter partes reexamination invention • Final rules for • RCE v. CPA practice registration interferences and Prometheus • PGR for everything • 17 years from grant appeals (9/10/04) 3/21/2012 else to 20 years from filing • CONS/DIVS/CIPS • • Oath & Dec • CREATE Act Best mode • • Preissuance submission Myriad Virtual & false marking 103(c) • • Supplemental exam 6/13/13 OED Stat. of limitations • • IPR Micro entity status • • PGR for business PTE methods Remembering dates and their application will be a matter of diligence, competence and avoiding negligence. 8
Who Gets In Trouble? Why? & How?
WHO: Statistics • FY2012 – 28 cases of reciprocal decisions, 27 of non- reciprocal. • 22 suspensions, 18 reprimands, and 15 exclusions. – 100 warning letters. – Grievance types (generally): neglect, dishonesty, fraud, misrepresentation, and fee issues. • Requiring more than one issue. 10
HOW: Complaints at OED • OED – reviews complaints, conducts investigations and enforces the Code. • Complaints – Can come from an examiner, a client, published decisions and news articles, state bar associations, or opposing counsel in inter partes proceedings. • No formal “complaint” is required. – Reciprocal Discipline : Practitioners are subject to discipline…regardless of whether their conduct was related to practice before the Office. 11
What Rules? • 1985 – PTO Code adopted. – Still current rules even though based upon “Model Code” which states have replaced with “Model Rules.” – Model Rules not same as PTO Code. • 2012 – OED proposes changing to slightly modify the Model Rules. • 2013 – May 3, 2013 new USPTO rules effective, based on ABA Model Rules (lessens conflicts with state ethical requirements). 12
Neglect Examples Less Severe More Severe In re Kubler (D2012-04) In re Shippey (D2011-27) • Neglected to communicate with • Neglected multiple matters entrusted to clients. him. • Lacked an uniform system of client • Engaged in multiple counts of professional notification and reply. misconduct. • Handled matters without adequate legal Reprimanded preparation. • Failed to seek lawful objectives of client. • Failed to carry out employment contract In re Rayve (D2011-19) with clients. • Failed to notify clients of correspondence. Excluded • Allowed applications to become abandoned. Suspended for 2 years 13
Fraud Examples Less Severe More Severe In re Chan (D2011-21) In re Edelson (D2011-13) • Had clients sign oaths or declarations prior • Provided false or misleading status information on to any application preparation, thus violated patent, PCT, and TM matters to clients. the oath that person reviewed the • Failed to keep himself informed of the status and application. allowed applications to go abandoned without client Reprimanded consent. • Provided false or misleading information to OED during investigation. In re Bollman (D2010-40) Suspended for 3 years • Filed 6 boxes of IDS documents in 4 cases. In re Massicotte (D2012-22) • Failed to read, review, or inspect any of • Provided the Office with false or misleading them. information in connection with petitions to review • Thus, made false certifications to the Office. three abandoned trademark applications. Reprimanded Suspended for 2 years 14
Fee Examples Less Severe More Severe In re Scott (D2011-34) In re Ames (D2011-25) • Had 5 checks returned for insufficient • Abandoned applications and clients funds. without consent. • Agreed to new trust account with Florida • Failed to refund fees. bar monitoring. Excluded Reprimanded In re Peterson (D2011-54) In re Johansen (D2011-35) • Convicted of theft from client’s business • Had 2 checks dishonored for insufficient checking account by using a check debit funds. card to withdraw funds and writing checks on account without client’s knowledge, • Each to revive abandoned applications. permission, or consent. • But both applications were not revived. Excluded Reprimanded 15
AIA Changes
Buckets in Brief Potential Failure to Averments & Missed dates Comply with a Duty / Certifications New Options First Inventor to File (FITF). Inventor’s Oath. Best Mode. Patent Term Extension. Micro Entity / Small First Inventor to File Inter partes reexams. Entity. (FITF). PGR / IPR. Supplemental Marking. Preissuance submissions Preissuance Examination. submissions. Inter partes reexamination. Rule 99 procedures are IPR / PGR / Derivation / now gone. Interference. PTE. 42.12 PTAB Sanctions. Inventor’s Oath. Rules 99 / 292. 17
Recommend
More recommend
