1. Prosecution Luncheon Patent January 2015

2. Patent Appeals Standard of Review Teva v. Sandoz (US Supreme Court) –Claim Construction Review Standard –Extrinsic Evidence- Factual conclusions underpinning claim construction rulings will be reviewed for “clear error” during an appeal –Intrinsic Evidence - Determinations regarding evidence “intrinsic to the patent” will be reviewed de novo during an appeal Prosecution Discussion Point –Should you consider not defining terms in the specification/prosecution so that the court will need to consider extrinsic evidence? (still probably “No”)

3. Overview Overall Theme- Scary Ethical Issues Conflict Checks –Subject Matter Conflicts –Inventor Conflicts & Representation Failure to Supervise Signature Requirements Priority Claim

4. Subject Matter Conflicts Massachusetts Supreme Court Will Address Subject Matter Conflicts –ANNOUNCEMENT: The Justices are soliciting amicus briefs. Whether, under Mass. R. Prof. C. 1.7, an actionable conflict of interest arose when, according to the allegations in the complaint, attorneys in different offices of the same law firm simultaneously represented the plaintiffs and a competitor in prosecuting patents on similar inventions, without informing the plaintiffs or obtaining their consent to the simultaneous representation.Mass. R. Prof. C. 1.7

5. Subject Matter Conflicts Gunn v. Minton (US Supreme Court) –State Law Malpractice Claims for Patents Do Not Arise US Patent Laws –No Exclusive Federal Jurisdiction

6. Mass Rule 1.7(a) prohibits a lawyer from representing a client if the representation of that client will be “directly adverse” to another client, unless: –(1) the lawyer reasonably believes the representation will not adversely affect the relationship with the other client; and –(2) each client consents after consultation. Subject Matter Conflicts

7. Indiana Rule 1.7. Conflict of Interest: Current Clients –(a) Except as provided in paragraph (b), a lawyer shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if:  (1) the representation of one client will be directly adverse to another client; or  (2) there is a significant risk that the representation of one or more clients will be materially limited by the lawyer's responsibilities to another client, a former client or a third person or by a personal interest of the lawyer.

8. Subject Matter Conflicts Mass. Rule 1.7(b) states a lawyer shall not represent a client if the representation of that client may be materially limited by the lawyer’s responsibilities to another client or to a third person, or by the lawyer’s own interests, unless: –(1) the lawyer reasonably believes the representation will not be adversely affected; and –(2) the client consents after consultation.

9. Subject Matter Conflicts Indiana Rule 1.7. Conflict of Interest: Current Clients –(b) Notwithstanding the existence of a concurrent conflict of interest under paragraph (a), a lawyer may represent a client if:  (1) the lawyer reasonably believes that the lawyer will be able to provide competent and diligent representation to each affected client;  (2) the representation is not prohibited by law;  (3) the representation does not involve the assertion of a claim by one client against another client represented by the lawyer in the same litigation or other proceeding before a tribunal; and  (4) each affected client gives informed consent, confirmed in writing.

10. Subject Matter Conflicts Mass. State Court Granted Dismissal –Competitors Does Make Them “Adverse” For the Purposes of Rule 1.7 –Both Parties Obtained a Patent –“In the absence of any allegation that [the law firm’s] independent professional judgment was impaired as a result of the dual representation or that it otherwise failed to do something that it would have done had it not been representing [its other client], it is difficult to see how there was a true conflict of interest as defined by Rule 1.7.” Mass. Supreme Court Pulled From Court of Appeals

11. Inventor Prosecution Conflicts Recent OED Case In the Matter of Radanovic –Note: Seasoned Patent Attorney (since 1967) –2009: Patent Attorney Filed Patent Application  Named Joint Inventors- McCoy and Patel –2011: McCoy Questions Whether Patel Contributed to the Invention –Jan. 17, 2013: Patent Attorney Pays Issue Fee

12. Inventor Prosecution Conflicts Recent OED Case In the Matter of Radanovic –Jan. 28, 2013: McCoy Claims Patel Made No Inventive Contribution  Patent Attorney Still Represents McCoy and Patel –Feb. 2013: Patent Attorney Hires 3 rd Party Patent Attorney to Investigate  Report (April 8, 2013) Concludes McCoy is Sole Inventor  Patel Never Provided 3 rd Party Patent Attorney Evidence of Contribution to Claimed Subject Matter

13. Inventor Prosecution Conflicts Recent OED Case In the Matter of Radanovic –Early 2013: Patent Attorney and McCoy Discuss How to Remove Patel as an Inventor on Patent  No Similar Conversation with Patel –Patent Attorney Attempted to Have Clients Agree to Binding Arbitration/Mediation as to Inventorship & Submit Certificate of Correction if Needed to Correct Inventorship  Patel Balks

14. Inventor Prosecution Conflicts Recent OED Case In the Matter of Radanovic –May 3, 2013: Patent Attorney (as instructed by McCoy)  Expressly Abandons Patent Application  Files a Continuation Solely Naming McCoy  Does Not Inform Patel –May 8, 2013: Patel Terminates Representation –Patent Attorney Continues to Represent McCoy Until September 2014

15. Inventor Prosecution Conflicts Recent OED Case In the Matter of Radanovic Violations –37 CFR 10.66(b)- a practitioner shall not continue multiple employment if the exercise of the practitioner's independent professional judgment in behalf of the client will be or is likely to be adversely affected by the practitioner's representation of another client, or if it would be likely to involve the practitioner in representing differing interests

16. Inventor Prosecution Conflicts Recent OED Case In the Matter of Radanovic Violations –37 CFR 11.107(a)- a practitioner shall not represent a client if the representation of one client will be directly adverse to another, or where there is a significant risk that the representation of a client will be materially limited by the practitioners' responsibilities to another –37 CFR 11.109(a)- a practitioner who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing

17. Inventor Prosecution Conflicts Recent OED Case In the Matter of Radanovic Result: Settlement- Public Reprimand –In mitigation, the OED Director has taken into consideration that Respondent has been a member of the patent bar for almost 50 years, has no disciplinary history, and had no dishonest or selfish motive.

18. Failure to Supervise Staff & Signature S-Signature- Review –37 CFR 1.4 Spells Out the Signature Requirement –Clearly the patent attorney must sign the documents and not the secretary or staff. MPEP 502 –The “must insert his or her own signature” requirement is met by the signer directly typing his or her own signature using a keyboard. The requirement does not permit one person (e.g., a secretary) to type in the signature of a second person (e.g., a practitioner) even if the second person directs the first person to do so.

19. Failure to Supervise Staff & Signature In the Matter of Druce ( Experienced Patent Attorney) Non-Lawyer Assistant (Without Attorney’s Knowledge) –Fabricated email confirmation messages and submitted the fabricated emails to the Office –Affixed USPTO receipt stamps to postcards and submitted the doctored postcard receipts to the Office; –Fabricated a United States Postal Service Express Mail label that falsely represented a patent application had been mailed to the Office on a certain date; and –Fabricated certificates of mailing that falsely represented that papers had been mailed to the Office weeks and/or months earlier than they actually had been sent.

20. Failure to Supervise Staff & Signature Non-Lawyer Assistant (Without Attorney’s Knowledge) –Signed Patent Attorney's signature to papers filed with the Office in many patent applications –Electronically "cut and pasted" a digital version of Patent Attorney's signature and affixed it to papers filed with the Office –Prepared petitions signed Patent Attorney's name to the petitions and/or affixed a digital version of Patent Attorney's signature to the petitions; and filed the petitions in the Office Patent Attorney knew that the non-lawyer assistant had signed Respondent's name to application papers submitted to the Office in many patent applications that Patent Attorney was responsible for prosecuting on behalf of clients

21. Failure to Supervise Staff & Signature In the Matter of Druce ( Experienced Patent Attorney) Results: (Settlement)- Done Practicing Before USPTO –Already not practicing because did not Return OED Survey –24 Month Suspension –Reinstatement Contingent Upon Notifying Clients –Even Reinstated- 24 Month Probation Mitigation: –Cooperated with OED –Alleged Lack of Knowledge

22. Changing Priority Claim In the Matter of Hultquist (experienced Patent Attorney) Provisional Filed Jan. 16, 2007 1 Year Deadline Jan. 16, 2008 Filed PCT & Utility Jan. 18, 2008 Patent Attorney Mistakenly Concludes Provisional Directed to Prior Version of the Invention Patent Attorney Files Without Claiming Priority to the Provisional Patent Attorney Never Consulted Client or Explained Adverse Consequences Office Action All Claims Rejected Oct. 31, 2012 Malpractice Suit? ?

23. Changing Priority Claim In the Matter of Hultquist Results: (Settlement) –Public Reprimand –Failure to Communicate with Client 11.104 Communication. –(a) A practitioner shall: –(2) Reasonably consult with the client about the means by which the client’s objectives are to be accomplished; –(3) Keep the client reasonably informed about the status of the matter; –(b) A practitioner shall explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation.

24. SAWS Update USPTO Notice About Sensitive Application Warning System (SAWS) –The Sensitive Application Warning System (SAWS) program is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued by the Agency. By bringing an additional quality assurance check to a very small number of pending patent applications, the USPTO helps ensure that those applications that could potentially be of special interest, are properly issued or properly denied. An application flagged for such a quality assurance check undergoes the same types of examination procedures as any other patent application, and is held to the same substantive patentability standards.

25. SAWS Update USPTO Notice About Sensitive Application Warning System (SAWS) –Finally, to ensure that this important quality assurance program continues to operate at maximal efficiency, the Agency is currently reviewing the program and will work to ensure that the program does not subject applications to unnecessary delays. –This quality assurance program applies to all pending patent applications that disclose potential SAWS subject matter, which typically represent a very small percentage of all pending applications in an average month, usually around 0.04%.  http://www.uspto.gov/patents/init_events/Sen sitive-Application-Warning-System.jsp http://www.uspto.gov/patents/init_events/Sen sitive-Application-Warning-System.jsp

26. Prosecution Luncheon Patent January 2015