Patent Prosecution Luncheon

May 15, 2014

Conflict of Interest

• Baker Botts is being sued for malpractice by Axcess International - $50M

• Axcess hired Baker Botts to draft patent applications for RFID technology– Baker Botts also represented Savi Technology– Axcess International and Savi are competitors in

the RFID industry

Conflict of Interest

• Baker Botts did not tell Axcess that it represented Savi

• Axcess claims that Baker Botts’ either didn’t check for conflicts or should have realized the conflict sooner

• Axcess could have gotten broader claim coverage if it had different counsel

Conflict of Interest

• Baker Botts argues that it was not obligated to tell Axcess about its representation of Savi

• There can never be a conflict of interest in straight patent prosecution because it is not an adversarial process

Electronic Priority Document Exchange (PDX)

Participating Countries in PDX• United States (USPTO)• European Patent Office (EPO)• Japan (JPO)• Korea (KIPO)• World Intellectual Property Organization (WIPO)

• Finland• Denmark• Sweden• China

• International Bureau• Spain• United Kingdom• Australia

WIPO Digital Access Service (DAS)

Problems

• Issues with USPTO retrieving electronic versions of certified copies

• China has not been issuing certified copies of foreign applications after 16 months past filing

Do I file a bypass continuation application or national phase application?

• Foreign priority country is not part of the PDX– Recommended to file a regular US national

phase application (35 USC 371) Do not need certified copies of foreign priority

documents