May 2014 Patent Prosecution Luncheon

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May 2014 Patent Prosecution Luncheon

  1. 1. Patent Prosecution Luncheon May 15, 2014
  2. 2. Conflict of Interest • Baker Botts is being sued for malpractice by Axcess International - $50M • Axcess hired Baker Botts to draft patent applications for RFID technology – Baker Botts also represented Savi Technology – Axcess International and Savi are competitors in the RFID industry
  3. 3. Conflict of Interest • Baker Botts did not tell Axcess that it represented Savi • Axcess claims that Baker Botts’ either didn’t check for conflicts or should have realized the conflict sooner • Axcess could have gotten broader claim coverage if it had different counsel
  4. 4. Conflict of Interest • Baker Botts argues that it was not obligated to tell Axcess about its representation of Savi • There can never be a conflict of interest in straight patent prosecution because it is not an adversarial process
  5. 5. Electronic Priority Document Exchange (PDX) Participating Countries in PDX • United States (USPTO) • European Patent Office (EPO) • Japan (JPO) • Korea (KIPO) • World Intellectual Property Organization (WIPO) • Finland • Denmark • Sweden • China • International Bureau • Spain • United Kingdom • Australia WIPO Digital Access Service (DAS)
  6. 6. Problems • Issues with USPTO retrieving electronic versions of certified copies • China has not been issuing certified copies of foreign applications after 16 months past filing
  7. 7. Do I file a bypass continuation application or national phase application? • Foreign priority country is not part of the PDX – Recommended to file a regular US national phase application (35 USC 371)  Do not need certified copies of foreign priority documents

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