The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Patent Prosecution Estoppel from PTAB Proceedings" on March 29, 2018 from 2:00 to 3:00 pm ET. Jeff Hohenshell of Medtronic, Inc., Stephen Kunin of Oblon, and Scott McKeown of Ropes & Gray LLP will discuss why patent prosecutors should be worried about estoppel arising from PTAB proceedings. Such concern was made clear in the latest version of the USPTO's Manual of Patent Examining Procedure, which states that, "[PTAB] trial proceedings yield information that may be considered material to pending related patent applications . . . . [An] example of such material information is any assertion that is made during litigation and/or trial proceeding which is contradictory to assertions made to the examiner." This sweeping requirement for additional disclosure signals a big change that can create issues for those prosecuting patent applications. The panel will discuss:
• The USPTO program run every two weeks that creates links between filed petitions for AIA trials and the related applications, which is not accessible to the public or to the attorney of record.
• How standard operating procedure for patent prosecutors must now change. The MPEP states that the prosecutor is in danger of violating his or her duty of disclosure if anything in the PTAB record known to be material to the patentability of any claim in an application is not submitted to the USPTO. What are the patent prosecutor's responsibilities and how should they be fulfilled?
• Some commenters have questioned whether the PTAB has authority to issue its estoppel rule, 37 CFR § 42.73(d)(3)(i). Should this have any impact on prosecutors' behavior?
The registration fee for the webinar is $135 (government and academic rates are available upon request). Those interested in registering for the webinar can do so here.
Comments