ETHICS and Life Sciences IP: Inequitable Conduct, New PTO Ethical Rules, BPCIA Litigation and Special Concerns for the IPR Space

February 25, 2015 9:00am

Kevin E. Noonan Ph.D.
McDonnell Boehnen Hulbert & Berghoff LLP (Chicago, IL)

Barton W. Giddings
Stoel Rives LLP (Salt Lake City, UT)

Barbara A. Fiacco
Foley Hoag LLP

Donna M. Meuth
Associate General Counsel, Intellectual Property
Eisai Inc. (Andover, MA)

William R. Covey
Deputy General Counsel and Director of the Office of Enrollment and Discipline (OED)
United States Patent and Trademark Office (USPTO)

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

  • USPTO spotlight: What are OED’s expectations of attorneys in this space?
  • Understanding when to raise the inequitable conduct defense under the continually evolving Therasense standard
    • Rule 36 affirmations of inequitable conduct cases
    • Update on recent relevant inequitable conduct cases
    • Complying with the USPTO duty of disclosure: what to submit and how much?
  • Analysis of the PTO’s 2013 Rules of Professional Conduct
    • Overview of key provisions including conflicts, sanctions and experts
    • How do these work with the ABA model rules and state bar rules?
  • Avoiding ethical quagmires in the IPR / PGR space for life sciences companies
    • What conflict of interest rules apply with parallel litigation
    • Duty of candor and good faith owed by petitioner challenging the patent
    • Avoiding putting forth inconsistent information in different proceedings
    • Concerns for Supplemental Examination
  • Navigating the tricky conflicts and confidentiality issues inherent in BPCIA pre-litigation procedures
    • Protecting confidential information in the dossier exchange process
    • Applying traditional conflicts analysis and principles when agreeing to work for a client: Are ABA comments to the model rules instructional?