Oblon, Spivak’s Scott McKeown Quoted in Law360 on the USPTO’s Supplemental Exam Rules

February 7, 2012 – In The News
Law360, San Diego (February 07, 2012)

Oblon, Spivak's Scott McKeown is quoted in the recent Law360 article about the USPTO's supplemental examination rules. Mr. McKeown commented that even though supplemental exams are the only way to obtain immunity from a future inequitable conduct defense, they are not going to be used as often in light of the Federal Circuit’s May en banc decision in Therasense Inc. v. Becton Dickinson & Co., which adopted a more stringent standard for accused infringers to prove inequitable conduct claims. “The Federal Circuit beat legislators to the punch,” he said. “Under the Therasense ruling, the standard is ‘but for this information, the patent wouldn’t have issued,’ which is a much tougher standard, and as a result, inequitable conduct claims are being shaken out.” “With the added protection that Therasense gives plaintiffs, I can’t see too many people going back to the USPTO when they can go to court, where the same standard for inequitable conduct applies,” he said.

Mr. McKeown said supplemental exams simply are not as needed as they were a couple of years ago and that patent owners may take advantage of other legal avenues, such as ex parte re-exam or reissue proceedings.

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