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Description
A recent Federal Circuit precedential decision, Cap v. Zinus, emphasizes the importance of acting in good faith and avoiding questionable behavior by all the parties involved. The court set aside the judgment for false testimony. There was no evidence the attorneys involved in prosecution knew anything about the false testimony. Nothing was said either by the district court or the Federal Circuit imputing any knowledge to the prosecuting attorney of the client's affirmative misrepresentations.
This case represents a dilemma for a prosecuting attorney. No legitimate patent prosecutor wants to be involved with and perhaps even be sucked in by such lies. Drawing on the Zinus case, patent prosecutors can take steps when preparing the patent application to minimize the risks. The prosecuting attorney can ask the inventor specific questions and show the inventor the draft claim(s).
Should a patent prosecutor have any inkling of misrepresentations, he or she should proceed with caution. The panel will also discuss other recent district court and Federal Circuit relevant decisions.
Listen as our panel of patent attorneys discusses the types of activity that patent prosecutors need to watch for and provides insights into practical tactics to avoid the risk of a ruling similar to the Federal Circuit's recent decision.
Presented By

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and trade secret issues, and post-grant trial proceedings at the USPTO, including inter partes review (IPR) and post grant review (PGR). He maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients. He also provides opinions and strategic guidance to clients on infringement, validity, enforceability, and clearance matters. His practice encompasses a range of technologies, including pharmaceuticals, biochemistry, polymers, small molecule chemistry, optics, and medical and analytic devices.

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling, primarily in the chemical and pharmaceutical areas. She has extensive experience in handling patent matters before the U.S. Patent and Trademark Office (USPTO), including post-grant proceedings specifically IPRs, appeals, and oral hearings at the PTAB; drafting and prosecution of patent applications; reissue and reexamination proceedings; and interferences.

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Live Online
On Demand
Date + Time
- event
Tuesday, August 31, 2021
- schedule
1:00 p.m. ET./10:00 a.m. PT
Outline
- Activities that may raise red flags
- Recent court guidance
- Best practices to avoid bad faith risks
Benefits
The panel will review these and other noteworthy issues:
- What activities should put patent prosecutors on alert for possible questionable behavior?
- How are the courts treating the issues of bad faith in patent cases?
- What best practices should patent counsel employ to avoid bad faith questions and concerns?
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