Washington, D.C. intellectual property lawyer Kevin Laurence talks about the ethical issues encountered in post-grant proceedings. He explains that in an inter partes review (IPR) or post-grant review (PGR), the Patent Office requires each party to serve the opposing side with any information that is inconsistent with a position that party has taken in the proceeding. For example, if a party advances a claim construction in litigation that differs from the position taken in the IPR or PGR, there is a duty to disclose that inconsistency to the Patent Office.

While he hasn’t seen the Patent Office respond harshly to such discrepancies, he cautions that failing to make the disclosure can cast the case in a negative light once it’s pointed out. Transparency, he notes, is always the safer course.

He also highlights a related issue that arises in reexaminations — the need for continuous disclosure. He refers to this as a “hot potato” problem. A reexamination may be nearing completion, and once the Patent Office issues a Notice of Intent to Issue a Reexamination Certificate (NIRC), the record effectively closes. At that point, it’s too late to add new references. For that reason, he stresses the importance of regularly submitting relevant documents from co-pending litigations, applications, or other reexaminations to ensure the record remains complete.

In complex portfolios with multiple concurrent proceedings, his team manages this challenge by implementing a routine — for instance, designating a specific day each week or month to review all related case records and file updated Information Disclosure Statements (IDS) as needed.

He adds that this same obligation applies in IPRs and PGRs when filing a motion to amend. Any new references or materials that may affect the amended claims must also be disclosed to the Patent Office. Maintaining that level of diligence, he explains, is essential to preserving credibility and ensuring procedural compliance across all related matters.