Straddling the First-to-Invent/First-to-File Gap: Changing Company Protocols, Cautiously Approaching Amendments, and Strategies for Promoting Likelihood of Issuance

January 22, 2014 2:00pm

Mercedes K. Meyer Ph.D.
Drinker Biddle & Reath LLP (Washington, DC)

Andrew A. Paul
Senior Counsel, Legal Division
The Procter & Gamble Company

Adda C. Gogoris
Merchant & Gould, P.C.

• Tools for taking advantage of the race to file
– Streamlining the internal process of preparing the supporting materials
– Evaluating when to file a provisional or non-provisional application
– Determining what constitutes a full or sufficient disclosure—balancing act of breadth and detail of claims
– Gaining the advantage of secret prior art for eighteen months
• Maintaining a heightened vigilance for third party publications and preserving the ability to swear behind third party art
• Discussing the sufficiency and insufficiency of trade secret protection in lieu of patent filing
• Adapting to the shift towards derivation practice
– Defining differences between derivation and previous opposition proceedings
– What are the limitations and benefits of derivation proceedings
– Proving or disproving that a disclosure was actually derived from the inventor
– Why is maintenance of meticulous notebook-keeping still important?
• Analyzing the effect of subsequent amendments on pre-AIA submissions
• Utilizing the PTO’s Prioritized Examination Program (“Track 1”)
– Knowing the pre-requisites
– Avoiding procedural pitfalls
– Advising foreign clients on how to avoid losing priority
• Ethical considerations—the fate of “best mode”
– If best mode is required under section 112, but has been eliminated as a defense, do you disclose?
– Does the best mode constitute a trade secret?
– If foreign client does not disclose best mode, could it lose priority or, worse yet, subsequently be accused of inequitable conduct?
• Filings by non-inventors—analyzing AIA provisions designed to circumvent prior difficulties relating to errant, uncooperative, or missing inventors