The last panel of the day – Ethical Considerations in Reissues and Reexaminations. The panel includes Gerald Murphy, Jr., Partner at Birch Stewart Kolasch & Birch and Practice Center Contributor, and Barbara Mullin of Akin Gump Strauss Hauer & Feld.  Here are some highlights from the panel:

• Reissue and Reexam overlap where the error is overly broad claiming in view of prior art.  If patentee becomes aware of prior art that does not invalidate the claims but does raise a substantial new question of patentability and there are no other errors in the patent that render it wholly or partly inoperative or invalid, only option is ex parte reexam.  If patentee can identify another error in addition to new prior art, Reissue becomes available. 
• Both Reissue and Reexam can give rise to charges of inequitable conduct.
• Patents being reissued and reexamined may present unique issues because: they are often very important, the amount of available “information” potentially material to patentability might be much greater than the information available during the original prosecution, and/or parallel litigation is not unusual.
• Ethical considerations include: zealously represent client, confidentiality, honesty & good faith, to disclose adverse information – similar to ex parte proceedings before a court.
• What must be disclosed?  All “INFORMATION” known to be material!  (Not just prior art)
• What is the duty? The duty is to advise the Examiner of “information” that might be material.  If you think the Examiner might use it against you, you should disclose it.  Extreme example of this is copy of an “opinion” (or Office Action) by a “person” that views the same facts or issues differently.
• Areas to Disclose – information (even if not prior art), copending U.S. Applications/Rejections, information re Foreign proceedings (oppositions and prosecution), evidence of possible prior public use or sale, complete test data to support examples, and/or inactive compounds within scope of claims, prophetic examples.
• Information to Disclose – literature or data that is inconsistent with applicants position, inventorship disputes, possibly interfering patent/applications, mistakes in the specification, allegations of duty of disclosure violations, and/or copies of pleadings, rulings and allegations from related litigations.
• In a Reexamination, there are no certification rules, so you can always file “information” and it should be considered.

Tags: "material" information, ex parte reexam, inequitable conduct, patentability, prior art, reexam, Reissue

This entry was posted on Friday, February 4th, 2011 at 22:13 and is filed under inequitable conduct, Patent Law Institute, posts, Reexamination. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.