Patent practice management has many unique requirements and challenges. One, in particular, is that negative information known to those who are substantively involved in the prosecution of a patent application must be disclosed to the patent examiner during patent prosecution. This is accomplished by preparing and filing an Information Disclosure Statement (IDS).
The rule is easy enough to articulate, but little surrounding the Duty of Candor mandated by Rule 56 is easy. What is the structure of “materiality”? Should disclosure be focused only on the most relevant prior art references? Should everything that is even tangentially related be disclosed to the Office? Does the Office and the Federal Circuit follow the same rules consistently? What disclosure is required before the Patent Trial and Appeal Board (PTAB)? How do you manage the duty to disclose, and choose what to disclose, when actions in foreign patent offices start arriving late in the U.S. prosecution? Are there best practices to work with applicants, and how to avoid error?
Join Gene Quinn, President and CEO of IPWatchdog, Inc, on Thursday, April 4, 2019, at 12 pm (noon) EDT, for an informative discussion on the all-important topic of information disclosure practices and requirements. Joining Gene will be Jeffrey Waters, Partner Cantor Colburn, and Michael Rau, Director IP Technical Services at Clarivate Analytics.