The Battle of the Duties: Navigating Confidential Documents and the U.S. Patent Office’s Duty of Disclosure
Steve Lendaris, Val Svystun
Patent attorneys practicing before the U.S. Patent and Trademark Office (“USPTO”) can find themselves in a situation where they must balance their client’s desire to maintain the confidentiality of certain documents with their professional duty to disclose information material to patentability to the USPTO. Information potentially material to patentability may include litigation documents, e.g., admissions during depositions, trade secrets, or even documents related to product testing. Although, attorneys can, in certain instances, redact the confidential information from documents prior to submission to the USPTO, this is not a viable option if the confidential information itself is potentially material to patentability. In such cases, attorneys should consider filing an information disclosure statement (“IDS”) under § 724 of the Manual of Patent Examining Procedure (“MPEP”), informally known as filing an “IDS under seal.”
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Strategic Considerations In Light Of The New “Skilled Searcher” Standard For IPR Estoppel
Inter partes review (“IPR”) proceedings have become a familiar avenue for challenging the validity of a patent since the America Invents Act (“AIA”) was passed. IPR proceedings allow a petitioner to challenge patent claims “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” One of the primary tradeoffs to filing an IPR is that, under 35 U.S.C. § 315(e)(2), the petitioner “or the real party in interest or privy of the petitioner,” is estopped from asserting, in either a district court action or International Trade Commission (“ITC”) proceeding, “any ground that the petitioner raised or reasonably could have raised during that inter partes review.”
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Rachael Lamkin Joins Baker Botts
We are pleased to announce that Rachael Lamkin has joined the Firm as a partner in our Intellectual Property Department in San Francisco. Lamkin founded Lamkin IP Defense in 2016 after more than a decade of conducting intellectual property litigation at the highest level and across forums, client sizes, and industry sectors. Her breadth of experience includes having previously served in-house as Senior Associate General Counsel for a family of companies including OtterBox, LifeProof and Blue Ocean, where she handled litigation on a global scale.
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Baker Botts Webinar: The U.S. Supreme Court's Impact on IP
July 19, 2023
The Supreme Court Term coming to an end in June has been another busy year for developments in intellectual property law. All told, the Supreme Court took up four IP addressing several important issues, including copyright’s fair use doctrine, the patent enablement requirement, trademark infringement claims challenging so-called expressive works, and the extraterritorial reach of the Lanham Act to provide civil remedies for the infringement of trademarks.
With the current Term nearing its conclusion, our panel including former Supreme Court and Federal Circuit clerks and in-house counsel will take a hard look at Supreme Court IP decisions. We will also examine other IP cases to watch in 2023, and the current composition of the Court.
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2023 Intellectual Property Chambers USA, The Legal 500 US, and IAM Patent 1000 Rankings
Our Intellectual Property lawyers and professionals have a deep commitment to exceptional client service. We are pleased to announce that the hard work and successes, on behalf of our clients, have been well recognized in Chambers USA, The Legal 500 US, and IAM Patent 1000 this year.
The Baker Botts IP practice was recognized by Chambers USA Nationwide for IP, IP: Appellate, International Trade Commission, and Life Sciences, in addition to rankings in California, New York, and Texas. The practice was also recognized in the following 2023 The Legal 500 categories: Patent Litigation, Patent Litigation: International Trade Commission, Patents: Licensing, Patents: Prosecution (including PTAB), Trademarks: Non-Contentious, Life Sciences, and Trade Secrets.
The Intellectual Property group also received 5 practice rankings which included 26 ranked lawyers in the 2023 IAM Patent 1000: The World’s Leading Patent Professionals in California, New York, Texas, Washington, D.C., and London.
With sincere appreciation, we want to thank you for supporting our lawyers and trusting the Baker Botts team with your legal matters.
June 2023 Intellectual Property Report Recap
In case you missed it, here is a video recap of our June 2023 Intellectual Property Report that looked at:
- NST Global v. Sig Sauer: Helpful Reminders About Claim Preambles and Claim Construction at the PTAB
- U.S. Supreme Court Affirmed Patent Enablement Requirement in Amgen
- AI as Inventor or Author - Developing Trends
- USPTO Proposes New Rulemaking to Reshape Post-Grant Proceedings at PTAB
- Texas May Soon Have One of the Strongest Data Privacy Laws in the U.S.
- Daily Journal Names Guy, Guske and Williams as 2023 "Top Intellectual Property Lawyers"
ABOUT BAKER BOTTS L.L.P.
Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit bakerbotts.com.