Dunes^® CLE in Las Vegas

Disclosure - Walking the Line Between McKesson, the Proposed IDS Rule Changes, and the Patent Attorney's Ethical Duties - Robert Ryan Morishita

According to the USPTO, "applicants sometimes provide information in a way that hinders rather than helps timely, accurate examination." The result is a proposed rule package that will likely cap the size and quantity of references disclosed on an IDS and require detailed explanations for references exceeding the caps. The Federal Circuit, in McKesson, found that the failure to disclose the file histories in related patent applications could constitute inequitable conduct on the part of the applicant and the patent attorney. The result has been a de facto rule change that has required applicants to expansively disclose anything remotely related to the pending application, even if it is already available to the patent office. This presentation will discuss the options for treading the line between these two conflicting duties while satisfying the patent attorney's ethical duties under state law and federal regulations to the client and the Patent Office.

Patent Drafting and Prosecution under Looming Patent Reform Legislation - J. Matthew Buchanan

The patent reform movement has taken a few strange twists over the last several years, winding its way through all three branches of the federal government. While some reforms have made their way into the caselaw (think eBay, MedImmune, and KSR), significant legislative and regulatory reforms have yet to be finalized. Nevertheless, the push for reform in these areas continues to enjoy broad support and promises to keep practitioners under a looming cloud for months - and possibly years - to come. Mr. Buchanan will explore several questions regarding the potential impact of looming reform on a patent prosecution practice: Can patent prosecutors modify their practice before reform becomes a reality to better serve their clients today? How? Are there new practice areas that can be developed? In addition to a discussion of these and other questions, Mr. Buchanan will briefly discuss the current status of and outlook for all major reform proposals.

Strategies, Tips and Disclaimers in Patent Drafting and Prosecution - Howard I. Sobelman

Howard will discuss various types of prosecution strategies, wherein different strategies may be more applicable depending on client budgets, licensing, and litigation goals. In addition to certain dos and don'ts with patent drafting, Howard will also discuss ways to ensure that an application disclosure includes broad descriptions and minimizes the likelihood that limitations will be read into the claims. Howard will then discuss and suggest language which may be inserted into a Reply to reserve your client's rights and to limit an Examiner's statements being used against your client at a later time.

Tips and Tricks for Expediting Examination of Your Client's Cases - Stephen M. Nipper

Let's face it, clients can be driven crazy by how long it takes these days to get a patent. While they are typically forced to wait their turn for examination, it doesn't have to be that way. In Tips and Tricks for Expediting Examination of Your Client's Cases, Mr. Nipper will discuss a number of different tips and tricks a savvy practitioner can use to expedite the examination of his/her pending cases.