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ARTICLE · 12 JANUARY 2021

Prosecution Bars & The PTAB – An Evolving District Court View

Ropes & Gray LLP
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Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use that information while prosecuting patent applications in related technology.

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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Litigators Amending Claims?

Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology. Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field related to the patents at issue.

Many prosecution bars are now written to cover PTAB proceedings, such as IPRs (since amendment is possible). However, whether district court litigators will be permitted to participate in PTAB proceedings may depend on the particular district where the subject patent is being litigated.

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