Navigating Ethical Issues in Patent Prosecution
$175
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, along with a comparative analysis of prosecutorial requirements and best practices before and after the America Invents Act.
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- •When is an attorney required to point out that another client’s unpublished patents may invalidate a given patent application?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 responsibility for paying annuities and maintenance fees be determined—by the applicant or outside counsel?
- •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 or applicant is qualified to receive micro entity status?
- •How has the America Invents Act impacted “deceptive intent” in connection with retroactive grants of foreign filing licenses?
- •How has the America Invents Act impacted “deceptive intent” in connection with initiation of reissue applications?
- •What does the America Invents Act hold in terms of premature internal sales at a 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 factors are used to value securities accepted 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 on U.S. patents and patent applications and oversees patent portfolio management and development in the U.S. and abroad. She also advises on biotechnology-related bioethics issues, including tissue banking and stem cells.
She protects clients across a wide range of technologies, including antibodies, enzymes, viral vectors, genomics, vaccines, stem cell research, gene therapy, cancer therapeutics and diagnostics, protein chemistry, biofuels, cosmetics, and industrial enzymes.
Mercedes Meyer co-authored Patent Ethics – Prosecution (2009) with David Hricik for Oxford University Press and frequently speaks and provides expert opinions on ethics issues arising from patent prosecution.
Course Length
Approx. 1.0 hours
Pricing
$175 per user