BarbriSFCourseDetails

Course Details

This CLE course will guide patent counsel on disclosing relevant information in patent prosecution and post-issuance patent proceedings such as supplemental examination. The panel will discuss the considerations for the elements of the information disclosure statements, including the information disclosure statements (IDS) pleading, Form PTO/SB/08a and 08b, and addressing the timing of the filing. The panel will also examine the considerations for PTAs, continuing applications, and national phase applications. The panel will offer best practices for information disclosure in patent prosecution.

Faculty

Description

The duty of disclosure is a critical requirement of U.S. patent prosecution. Each individual involved with filing and prosecuting the application must disclose what they know is material to patentability.

This duty continues until a patent is issued and may arise again if the patent is involved in USPTO post-issuance proceedings. To meet the duty to disclose, patent applicants and their counsel should keep several considerations in mind when preparing and submitting IDS to the USPTO.

Failing to comply with the duty of disclosure requirements can be costly. It could lead to an inequitable conduct ruling, an unenforceable patent, and damages.

Patent counsel should also consider the timing of IDS submissions. As the prosecution progresses, these submissions may become more costly and challenging. As a result, counsel should encourage clients to disclose early and disclose new relevant information that comes to light.

Listen as our authoritative panel of patent attorneys examines the composition of an IDS filing. The panel will discuss the various considerations for the elements of the filing, including the IDS pleading, Form PTO/SB/08a and 08b, and addressing the timing of the filing. The panel will also discuss the considerations for PTAs, continuing applications, and national phase applications. The panel will offer best practices for information disclosure in patent prosecution.

Outline

  1. IDS filings: a brief overview
  2. Considerations for elements of the IDS filing
    1. Form PTO/SB/08a
    2. Form PTO/SB/08b
    3. Timing
  3. Other considerations
    1. PTAs
    2. Continuing applications
    3. National phase applications
  4. Best practices for disclosure

Benefits

The panel will review these and other key issues:

  • What considerations for Form PTO/SB/08a or Form PTO/SB/08b should patent counsel keep in mind?
  • What should be disclosed related to a continuing application?
  • What role do IDSs play in a supplemental examination?
  • What strategies should counsel employ when determining whether and when to disclose?