Post-Grant Proceedings Attorney in Washington, District of Columbia
Ethics Issues in Post-Grant Proceedings
Ethics Issues in Post-Grant Proceedings
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00:04
the patent office requires a party and
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an ipr pgr to
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serve the other party any relevant
00:10
information that is inconsistent with a
00:13
position taken by that party in
00:16
the ipr pgr so if you have uh for
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example a claim construction in the
00:22
litigation that’s different from what
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you’ve presented in the ipr pgr you have
00:26
an obligation to inform the patent
00:28
office about that and i haven’t seen the
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patent office take a particularly
00:32
draconian approach with dealing with
00:34
this
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but it certainly would put
00:37
a case in a bad light
00:39
when that’s pointed out another issue
00:41
that is problematic relates to the need
00:44
to disclose documents in a
00:46
re-examination
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you can have what i refer to as a hot
00:49
potato situation where the
00:51
re-examination may
00:53
be close to wrapping up and when it when
00:55
it’s completed you get a notice of
00:57
intent to issue a re-exam
00:59
certificate called a nerc and if you get
01:02
a nerc you’re not a labe you’re not able
01:04
to update the record so it’s really
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important that you continuously get the
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references into the record that come
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from co-pending litigation or from
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co-pending applications or co-pending
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re-examinations and if you have all
01:19
these complex proceedings going on
01:21
simultaneously
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one way you can handle that is by having
01:24
a certain day of the week or month where
01:27
you repeatedly review the record for the
01:29
other cases and update
01:31
with the filing of an information
01:33
disclosure statement
01:34
this also comes into play in iprs and
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pgrs when you have a motion to amend and
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in those circumstances you have the same
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obligation to submit references to the
01:42
patent office
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Washington, D.C. intellectual property lawyer Kevin Laurence talks about the ethical issues encountered in post-grant proceedings.
