Information Disclosure in Patent Prosecution: IDS Filings, Key Considerations, Strategies for Disclosure

Mr. Irving has more than 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. Mr. Irving has served as lead counsel in many patent interferences.

Mr. Mulcahy has more than 20 years of experience in all phases of patent law. His practice includes litigation before federal district courts and the U.S. International Trade Commission (ITC), client counseling and opinions, and patent prosecution and post-grant proceedings in the U.S. Patent and Trademark Office (USPTO). Mr. Mulcahy frequently lectures on topics at the intersection of these practice areas. He has worked with a broad range of technologies, including semiconductors, integrated circuits, optoelectronics, cellular telephony, computer networking, digital video, switching power supplies, solid-state and fluorescent lighting, unmanned systems, and business methods.

Ms. O’Brien has more than 25 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of Ms. O’Brien’s technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products including new chemical entities and formulations, as well as novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds. Ms. O’Brien’s expertise includes all aspects of preparing and prosecuting U.S. and foreign patent applications, such as patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings, appeals hearings, Post-Grant Reviews (PGR), and Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB). Her litigation expertise focuses on patent infringement cases including, for example, Hatch-Waxman litigation involving Abbreviated New Drug Applications, and includes all stages from pre-discovery through trial.