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ppt on patents, ethics, duty of candor, duty of disclosure, IDS
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Ethical Requirements Related to Patent Prosecution & Patent Litigation
Todd Juneau
Power of Attorney• Who is the client, the corporation? the
inventor? both?
• Model Rules (paraphrased): if they think you are their lawyer, you are their lawyer.
• Be clear; in writing.
• Engagement Letters, Disengagement Letters
• Patent Maintenance Fees
Representing Two or More Parties
• Community of Interest Doctrine
• Waiver of Conflict
• Opposing party is USPTO
• Let them know that you would need to withdraw if there is a divergence
Foreign Associates
• Outside contractor
• You pay FA fees or client pays FA fees?
• Prior relationships vs. Duty to Corporation
Patent Searches
• Outside Search Firms
• Quality of Search Reviewed
• Review of Search Results
• Invalidity Searches, Freedom to Operate
• Validity Opinions? Infringement Opinions?
Affirmative Duties
• Duty of Disclosure
• Duty of Candor
• Duty to Notify of Large Entity Status
Conflicts of Interest
• Patent Prosecution Conflicts
• Directly adverse
• Subject Matter - Pulling Punches
• Arguing against prior client’s position
• Improper Use of Trade Secrets?
Leahy-Smith AIA• Failure to Disclose the Best Mode can no
longer be used as a litigation defense when asserting a claim of patent invalidity
• But to obtain a patent, you must still disclose the Best Mode
• What about Patent Invalidity Proceedings at the USPTO?
• What if your client doesn’t want to tell you?
Hmmmm....
• http://farmprod.content.xtranormal.com/2011-11-04/publish/2474a52a-0726-11e1-a7a4-12313b12d0a2.mp4
Prior Art
• Generated from co-pending U.S. Examination Reports and PCT Reports
• Generated from Attorney Searches and Due Diligence Analyses’
• Client/Inventor Awareness of Competitors
Lapse of Application
• Revivable in U.S., Europe, Asia, Israel, etc.
• Unintentional or Unavoidable
• Time limits
Patent Maintenance Fees
• U.S. called “Maintenance fees”: due at years 3.5, 7.5, and 11.5
• International called “Annuities”, due each year
• Missed payment = expired patent = E&O
• Appearance of purposely missed deadline to the advantage of another client? Disgorgement of Fees of Both Clients
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