Information Disclosure in Patent Prosecution: IDS Filings, Key Considerations, Strategies for Disclosure
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on disclosing relevant information in patent prosecution and post-issuance patent proceedings such as supplemental examination. The panel will discuss the considerations for the elements of the information disclosure statements, including the information disclosure statements (IDS) pleading, Form PTO/SB/08a and 08b, and addressing the timing of the filing. The panel will also examine the considerations for PTAs, continuing applications, and national phase applications. The panel will offer best practices for information disclosure in patent prosecution.
Outline
- IDS filings: a brief overview
- Considerations for elements of the IDS filing
- Form PTO/SB/08a
- Form PTO/SB/08b
- Timing
- Other considerations
- PTAs
- Continuing applications
- National phase applications
- Best practices for disclosure
Benefits
The panel will review these and other key issues:
- What considerations for Form PTO/SB/08a or Form PTO/SB/08b should patent counsel keep in mind?
- What should be disclosed related to a continuing application?
- What role do IDSs play in a supplemental examination?
- What strategies should counsel employ when determining whether and when to disclose?
Faculty
Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the... | Read More
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.
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Thomas L. Irving
Partner
The Marbury Law Group
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
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John M. Mulcahy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience... | Read More
Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience includes examining expert witnesses at deposition and trial; preparing Markman, summary judgment, and various post-trial motions; and participating in settlement negotiations. He also has extensive experience in the strategic use of reexaminations in litigation and has filed numerous successful requests. He has successfully argued before the PTAB, and has filed and prosecuted numerous applications.
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Michelle E. O'Brien
Partner, Head of Life Sciences
The Marbury Law Group
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in... | Read More
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.
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