{"id":3386,"date":"2010-11-18T20:28:11","date_gmt":"2010-11-19T02:28:11","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=3386"},"modified":"2010-11-18T20:28:11","modified_gmt":"2010-11-19T02:28:11","slug":"citation-of-material-after-payment-of-issue-fee","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=3386","title":{"rendered":"Citation of Material After Payment of Issue Fee"},"content":{"rendered":"

One of the issues that came up in the appeal of Flexiteek Americas, Inc. et al. v. Plasdeck, Inc. et al.<\/span>, 2009-1501 (Fed. Cir. Nov. 2, 2010)\u00a0\u00a0\u00a0was whether it was inequitable conduct for failure to cite to the US examiner\u00a0the revocation\u00a0of a related New Zealand patent.\u00a0\u00a0The status of the US application at the time\u00a0of the revocation of the New Zealand patent\u00a0was that the issue fee had been paid but that the patent had not yet issued.\u00a0 The person charged with inequitable conduct was president of a Swedish company.\u00a0 He\u00a0apparently had an opinion from Swedish counsel that there was no way to have the new\u00a0material considered since the issue fee had been paid.<\/p>\n

You can listen to the panel question the counsel for the\u00a0appellee-plantiff-patent owner\u00a0here: [Listen<\/a>].<\/p>\n

The panel followed up on rebuttal with the counsel for the appellant-defendant here: [Listen<\/a>].<\/p>\n

The entire oral argument is available here: [Listen<\/a>].<\/p>\n

I was somewhat surprised that the panel didn’t inquire about the option of petitioning to withdraw the\u00a0application from issuance in favor of an RCE in order to have the new\u00a0material considered.\u00a0 This would have\u00a0been one way to satisfy\u00a0the applicant’s continuing duty through issuance to have the new art “considered” where\u00a0“considered” is understood to mean\u00a0that the examiner signs his\/her initials to an IDS listing.<\/p>\n

Given the wealth of prosecution talent in the D.C. area, perhaps the Federal Circuit would benefit from a patent prosecutor-retiree with an office or office hours\u00a0at the Federal Circuit\u00a0who could advise\u00a0judges and clerks\u00a0on matters of patent procedure.\u00a0\u00a0Often during oral arguments, judges are heard asking the advocates\u00a0about matters of patent procedure.\u00a0 And often the advocates remark: \u00a0“I don’t know.\u00a0 I’m not a patent attorney.”\u00a0 It is unfair to expect judges\u00a0and their\u00a0young clerks to know all the procedures of patent prosecution.\u00a0 But, if the court is\u00a0going to\u00a0hand down\u00a0decisions like Dayco<\/span> and McKesson<\/span> that affect the entire patent bar and not just the parties in a case,\u00a0I don’t think it is unfair to ask that\u00a0it take steps to be as well-informed as possible about such procedures and the impact\u00a0such decisions will have.<\/p>\n

You can see the Federal Circuit’s Rule 36 opinion here: [Read<\/a>].<\/p>\n

You can view an opinion from the district court that gives more background here: [Read<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

One of the issues that came up in the appeal of Flexiteek Americas, Inc. et al. v. Plasdeck, Inc. et al., 2009-1501 (Fed. Cir. Nov. 2, 2010)\u00a0\u00a0\u00a0was whether it was inequitable conduct for failure to cite to the US examiner\u00a0the revocation\u00a0of a related New Zealand patent.\u00a0\u00a0The status of the US application at the time\u00a0of the […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/3386"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=3386"}],"version-history":[{"count":29,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/3386\/revisions"}],"predecessor-version":[{"id":3416,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/3386\/revisions\/3416"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=3386"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=3386"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=3386"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}