The Importance of Disclosing Multiple Embodiments

A recent decision of the U.S. Court of Appeals for the Federal Circuit illustrates the limits of what a patent owner may be able to pursue or obtain in a broadening reissue application. In re Float’N’Grill also reminds practitioners of the importance of disclosing variants of an invention as multiple embodiments in an original patent application, and of otherwise ensuring that the application cannot be construed as being limited to solely one embodiment.

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Patent practitioners have various disclosure requirements that may supersede the attorney-client privilege and work product immunity, which was recently illustrated in a recent inter partes review case at the USPTO. The facts of the case serve as a reminder that honest and fair dealing is essential when advocating for or against patentability.

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Several recent cases illustrate a continuing and evolving split among the different federal district courts as to whether a defense of inequitable conduct can successfully be based on “burying.”

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Congratulations to OBWB attorneys, Jonathan Osha, Carlyn Burton, and Jeffrey Bergman on their inclusion to the 2024 Best Lawyers® list.

Join us on September 15th for part 2 of our webinar on Artificial Intelligence & IP.

AI & Copyright

Speaker: Jonathan Osha

Host: Han-Mei Tso

Chinse Commentator: Jude Yi

We are looking forward to IPO's Annual Meeting in Boston.

On September 11th, OBWB partners Jonathan Osha and Carlyn Burton will participate in two panel sessions. John will present on “Decentralized Machine Learning: Why it Matters and How to Protect It” at 8:00 am. Carlyn will join the team facilitating the 1:00 pm workshop on “Using Key Performance Indicators (KPIs) to Leverage Your IP and Manage More Effectively”. OBWB is also sponsoring the September 11th D&I Networking Reception. #IPOAM23