The Impact of the Recent U.S. Supreme Court Decisions and Proposed New U.S. Patent and Trademark Office Rules and Patent Reform Legislation on Patent Acquisition, Exploitation, Enforcement and Defense Strategies

摘要

Sweeping changes in the U.S. patent laws and the U.S. Patent and Trademark Office ("USPTO") proposed new rules affecting virtually all aspects of patent practice necessitate evaluation and adjustment of patent acquisition, exploitation, enforcement and defense strategies. Recent Supreme Court and Federal Circuit decisions on the obviousness determination and patent validity (KSR), and on willful infringement, the duty to obtain opinion of counsel and the scope of waiver of attorney-client privilege and attorney work product (Seagate) will be explained. The USPTO's proposed new rules on continuation practice, examination of claims, and identification of related applications, as well as highlights of the proposed patent reform legislation will also be addressed. Considerations and strategies for drafting and prosecuting patent applications, for patent portfolio licensing and due diligence, and for enforcing and defending patent infringement suits in light of these changes in the patent laws and rules will be explored.