IP: Strengthen patents with full disclosure of information

Training your legal department to handle disclosure can save costs on outside counsel

There are at least two main interests in developing a strong information disclosure system in-house:

  1. Strengthen patents against invalidity attacks
  2. Control costs with respect to the use of outside counsel

While there are different driving forces to each of the above, they dovetail at the same place: stronger and more enforceable patents.

Therefore, the likelihood of a successful petition for reexamination will decrease. In addition, these patents will be strengthened against attacks during litigation, such as a motion to invalidate the patent or a charge of inequitable conduct on behalf of the company, inventors or patent team.

An in-house team that is educated about the issues surrounding information disclosure in patent cases can handle a lot of the work, thus decreasing the need to direct the work to outside counsel. While it is important to keep outside patent counsel in the loop regarding what has been filed, much of the paperwork can be completed by an in-house attorney or paralegal. Ask your outside patent counsel to prepare training materials and/or provide in-house training for inventors and paralegals as part of the firm’s value-added services.

Contributing Author

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Sandra P. Thompson

Sandra P. Thompson, J.D., Ph.D., is a shareholder in the Orange County office of Buchalter Nemer. Her practice focuses on intellectual property, specifically, patents and...

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