Intellectual Property Litigation

Turmoil and Tribulations: A Look at Patent Eligibility and Ethics Issues Before the U.S. PTO

Synopsis

The presenters of this course address several areas where turmoil has arisen around § 101 patent eligibility issues in view of some recent Supreme Court Cases. They also look at ethics associated with confidentiality and privilege issues that rub up against the Duty of Candor to the U.S. Patent and Trademark Office.

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Outline

I. Turmoil in the Wake of the AIA
    A. Introductions
    B. The Life Sciences Arena
       1. Mayo v. Prometheus
       2. PTO Guidance
       3. Example Case Undergoing Prosecution Under the PTO Guidance
       4. Turmoil in the District Courts
       5. Where Does This Leave Life Sciences?
    C. The Alice Corp. Decision
        1. Where Are We?
        2. Business Methods: Technological Inventions
        3. Computer Implemented Business Methods
        4. The Hybrid Situation
    D. Section 101 Discussion
        1. Supreme Court Guidance?
        2. Claiming the National Product
    E. Ethics and the PTO
        1. A New Perspective
        2. Ex Parte Prosecution
        3. Molins v. Textron
        4. So Where Do We Stand in the Ethical Arena?
        5. Ethical Pointers
    F. Panel and Audience Discussion
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The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 16,000 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 45 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.
AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

 





Speakers / Authors:

Photo of Donna M. Meuth

Donna M. Meuth

Donna M. Meuth is Senior Patent Counsel in the Intellectual Property Department of Eisai Inc. in Andover, MA. Ms. Meuth has a diverse experience in Intellectual Property Law, including patent portfolio management, patent prosecution and litigation. Donna's technical focus is in the pharmaceutical, chemical and biotechnology arts. She has significant interference experience and litigation experience, in particular ANDA litigation for branded pharmaceuticals. 

Ms. Meuth has had leadership roles in many professional organizations, in particular the American Bar Association's (ABA) Intellectual Property Law (IPL) Section, where she is currently Chair of the Patent Legislation Committee and a member of the Editorial Board for Publications and Amicus Brief Committee. In addition, she is President-Elect of the Boston Patent Law Association, where she has been a member of the Board since 2008.

Ms. Meuth is a member of the Massachusetts and Virginia State Bars, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the First Circuit, and the Eastern District Court of Virginia, as well as a registered patent attorney of the U.S. Patent and Trademark Office.

Ms. Meuth received her J.D. from The National Law Center of the George Washington University Law School and her undergraduate degree in Chemistry with Honors from the College of the Holy Cross.

Photo of William F. Smith

William F. Smith

William F. Smith is Of Counsel for the law firm of Baker & Hostetler LLP. He is a former Administrative Patent Judge at the United States Patent and Trademark Office (USPTO). He focuses his practice on advising clients in complicated patent matters, including reexamination proceedings, appeals, interferences, post grant proceedings before the Patent Trial and Appeal Board and patent litigations.

Bill spent more than 30 years at the USPTO, with the last 19 years as an Administrative Patent Judge (APJ). While serving as an APJ, Bill was responsible for reaching final agency decisions in interferences and on ex parte appeals involving original and reissue applications and reexamination proceedings. The cases assigned to Bill involved diverse technologies, including biotechnology, pharmaceuticals, diagnostics, and medical devices. Bill has taught at the Patent Academy at the USPTO; developed and presented seminars on appeal practice, appeal conferences, and claim construction to patent managers and examiners; and frequently addresses bar and professional associations on intellectual property legal topics.

Mr. Smith received his J.D. from the University of Baltimore School of Law in 1976, and his B.Ch.E. from Georgia Institute of Technology in 1972.

Photo of David G. Wille

David G. Wille

David G. Wille is a partner in the law firm of Baker Botts LLP. He has a broad intellectual property and technology practice. While the majority of his practice focuses on intellectual property litigation and appellate work (including patent, trade secret, copyright and trademark litigation, as well as patent reexaminations and reviews), he has substantial experience in licensing relating to patents, trade secrets, software, trademarks and copyrights. He also handles secured transactions and mergers and acquisitions involving intellectual property.

Mr. Wille prepares and prosecutes patents involving a range of technologies and regularly provides legal advice on validity and infringement questions involving patents, copyrights, and trade secrets. He helps clients develop policies and procedures relating to the Internet, including website usage agreements, and he has handled a variety of Internet issues for several Fortune 500 companies.

Mr. Wille works with clients on matters involving a broad range of technologies, such as computer software, medical devices, business methods, microprocessors, food service equipment, consumer products, cranes, RFID Technology, encryption, antenna technology, vehicle surveillance systems, analog and digital optical communications, telephony, cellular telephony, data communications, cable television, television, liquid crystals, semiconductor fabrication and structures, semiconductor packaging, semiconductor fabrication equipment, semiconductor testing, thermoelectric materials structure and fabrication, analog and digital integrated circuits, image processing, digital signal processing, photoscanners, ink jet printers, computer architecture, food processing, train cars and subsystems, CAD/CAM applications, computer storage and video conferencing.

After graduating from law school, Mr. Wille served as a law clerk to the Honorable Jerry Smith of the United States Court of Appeals for the Fifth Circuit. Mr. Wille is currently an adjunct professor at The University of Texas School of Law, where he has taught Patent Law, Licensing and an Advanced Patent Law Seminar since 2000. Mr. Wille is the named inventor on four U.S. patents.

Mr. Wille received his J.D., magna cum laude, Order of the Coif, from the University of Michigan Law School, in 1992, his M.S. from the University of Wisconsin in 1989, and his B.S from the University of Wisconsin in 1988.

    

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Price (USD)

Standard Rate: $124.00
Subscribers: FREE
Pillsbury U Online: $124.00
Metro State Univ: $124.00

Details

Course Code : 772512

Release Date : 12/10/2014


Length : 1hr 8min
Recorded Date : 10/23/2014


Format Type : eLearning
Mobile Compatible


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