Navigating Ethical Issues in Patent Prosecution - IIPLA

Navigating Ethical Issues in Patent Prosecution

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About Course

About the Course:

This session discusses a multitude of ethical issues that arise during the prosecution of patents. Examples are provided that illustrate the range of severity of prosecutorial negligence as well as the resulting disciplinary action taken against the counselor.

A review of critical litigation between prosecuting patent attorneys and their clients is presented. A comparative analysis of prosecutorial requirements and best practices–pre- and post-America Invents Act–is provided.

This webinar is crucial for prosecuting attorneys as well as patent valuation analysts.

This unique webinar discusses issues such as:

  • Where can the public learn about complaints filed against prosecuting attorneys?
  • Are warning letters and grievances against prosecuting lawyers published?
  • What is the difference between reciprocal and non-reciprocal decisions?
  • To what extent can conflict checks eliminate ethical quandaries that arise during prosecution?
  • When is an attorney required to point out that another client’s unpublished patents may invalidate a given patent application?
  • Where should it be determined whether the applicant or the outside attorney shall be responsible for paying annuities and maintenance fees?
  • How has the America Invents Act affected combined powers of attorney among the patent lawyer, inventor and applicant?
  • What is required to prove that the inventor / applicant is qualified to receive micro entity status?
  • How has the America Invents Act impacted “deceptive intent” in connection with a retroactive grant of a foreign filing license?
  • How has the America Invents Act impacted “deceptive intent” in connection with initiation of a reissue application?
  • What does the America Invents Act hold in terms of pre-mature sales that occur internally at the patent applicant’s company?
  • What should an attorney do when the client does not want to disclose best mode?
  • Under what circumstances may the prosecuting patent attorney take an interest in the subject patent or client’s business?
  • How are alternative fee arrangements impacted by the America Invents Act?
  • What are the factors used to value securities used in lieu of attorneys’ fees?
  • What must prosecuting attorneys know about the safekeeping of records and fees?

Course Leader: Mercedes Meyer, PhD., Partner, Drinker Biddle & Reath LLP

Dr. Meyer drafts, prosecutes and opines U.S. patents and patent applications, as well as oversees patent portfolio management and development in the U.S. as well as coordinating efforts overseas. She advises on biotechnology-related bioethics issues, such as tissue banking and stem cells. Mercedes also obtains patent term extensions, oversees obtaining Supplemental Protection Certificates (SPCs) and their equivalents abroad and handles requests for reconsideration of patent term adjustment.

She protects clients on such subjects as antibodies, enzymes, especially those useful in the biofuels and industrial enzyme areas, viral vectors, genomics, vaccines, stem cell research, gene therapy, drug screening and identification, protein and tissue arrays, cancer therapeutics, cancer diagnostics, X-ray protein crystallography, beverages, industrial enzymes for biofuels and cosmetics. Her doctoral background provides practical research experience in the area of retroviruses, including HIV-1, virology, molecular biology, cancer biology, immunology and protein chemistry.

Mercedes co-authored Patent Ethics – Prosecution (2009) with David Hricik for Oxford University Press. She speaks and provides expert opinions on ethics issues arising from patent prosecution.

Course Length: Approx. 1.0 hours

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