Tech Transfer Central
Industry-Sponsored Research Management

Protect Your Patents from Inequitable Conduct Charges

Format: MP3, CD, or PDF Transcript
Originally presented: July 22, 2010

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No matter how careful you are in your patent prosecution, virtually every infringement case you encounter will involve an attempt by the infringer to claim inequitable conduct. And if you haven’t taken the appropriate steps to guard against these charges, your patent CAN BE RENDERED UNENFORCEABLE and worthless.

And under the current, often inconsistent application of the inequitable conduct doctrine, it’s not just inventors and patent lawyers who must disclose any information and references pertinent to the patent application – it’s tech transfer staff, licensing professionals, and “every other person substantively involved in the preparation or prosecution of the application.”

Recent application of the doctrine has been likened to “imposing the death penalty for relatively minor acts of misconduct.” Given the potential windfall for infringers and a complete lack of disincentives for raising the defense, inequitable conduct is now raised in nearly every case. Even the Federal Circuit Court of Appeals itself has noted the rampant use – or misuse – of the doctrine, stating recently that “the habit of charging inequitable conduct in almost every major patent case has become an absolute plague.”

That’s why we’ve produced this can’t-miss distance learning program:

Protect Your Patents from Inequitable Conduct Charges

During this 90-minute program, a leading attorney expert and a veteran university IP manager will provide the guidance you need to ensure your patent rights are not co-opted. You’ll come away with 

Jack M. Cook, leader of the Research Institutions-Industry Team at Quarles & Brady, and Stephanie Whitehorse, Intellectual Property Manager for the Wisconsin Alumni Research Foundation (WARF), will examine both pre-filing issues and post-filing procedures, and provide a detailed blueprint for adhering to ethical and equitable conduct rules. Here’s a look at some of the key areas they’ll cover:

  • Inventorship disputes (intra-institutional, inter-institutional, corporate
    collaboration)
  • Tension between publication and patenting
  • Potential public disclosures/consulting arrangements/potential offers for sale
  • Maintaining lab notebooks
  • Identifying all funding sources
  • Inventor declarations
  • IDS issues (known publications, foreign actions, US actions, “related” cases, etc.)
  • Antedating declarations (diligence, evidence thereof, etc.)
  • Priority claim baggage
  • Meeting the enablement and written description requirements

Presenters

Jack M. Cook is the Leader of the Research Institutions-Industry Team at  Quarles & Brady and focuses his legal practice on assisting clients with a broad  range  of intellectual property issues, with emphasis in U.S. and foreign patent prosecution and patent licensing. A large portion of Mr. Cook’s practice is dedicated to assisting technology transfer offices. His practice includes drafting, prosecuting, and licensing patent applications and patents in the electrical engineering, mechanical engineering, medical device, and medical imaging arts.

Stephanie Whitehorse manages intellectual property in the fields of biomedical engineering, medical physics, civil engineering, mechanical engineering, micro and nanotechnologies, materials and processing as well as electrical engineering, computer science and software. Works with the General Counsel, WARF staff and the university community to revise and implement WARF’s intellectual property procedures and policies. Ms. Whitehorse earned her B.S. Materials Science and Engineering (UW-Madison); is a registered Patent Agent and has engineering experience in product design consulting, mechanical design and materials selection.

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