Federal Circuit Rules on Broadening Reissues, Joint Inventorship, and Intervening Rights

Keeping up with the growing body of case law is a must for IP lawyers. Federal Circuit decisions can impact a company’s IP portfolio strategy on many levels and in significant or subtle ways. Some decisions are of particular importance and well worth a closer look.

Please join our panelists as they discuss:

In re Staats

• Considered whether an applicant can add broadened claims in a continuing reissue application filed outside section 251’s two-year limit

• Held that because Staats timely filed an original broadening reissue application within the two-year limit, he was not barred from seeking broadened continuation reissue claims even though they were directed to subject matter different from the original reissue application

Falana v. Kent State University

• Considered whether a researcher who creates a method of making a new class of chemical compounds should be named as a co-inventor of claims directed to the compounds themselves

• Held that discovery of the method is as much a contribution to the compounds as the discovery of the compounds themselves, requiring the creator of the method to be named as a co-inventor

Marine Polymer v. HemCon, Inc. (en banc)

• Considered whether a patentee’s arguments made during ex parte reexamination can give rise to intervening rights under 35 U.S.C. § 307(b) when the patent claims in question are not changed during the reexamination

• Held that intervening rights apply only to “amended or new” claims incorporated into a patent during reexamination

The analysis and discussion will be led by seasoned Federal Circuit practitioners Michael J. Flibbert and Kara F. Stoll. Mike has successfully represented clients in patent disputes before the Federal Circuit involving technologies such as pharmaceuticals, biotechnology, and chemistry. Kara has represented clients in over thirty appeals to the Federal Circuit, primarily focusing on consumer electronics, computer, software, and the medical device industries. As former court clerks, both Mike and Kara have gained experience at the Federal Circuit from multiple perspectives.

This webinar is the second in our 2012 Federal Circuit webinar series. We hope you are able to attend.

Speakers

Michael J. Flibbert

Kara F. Stoll

Time

1:00 - 2:00 p.m. EDT

Register

There is no charge to attend this program. Please register by April 16, 2012. Webinar access and dial-in information will be sent upon registration.