Conflicts in Patent Prosecution: Avoiding the Ethical Pitfalls

Minimizing Risks of Malpractice Liability and Ethics Sanctions

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, June 22, 2017
Recorded event now available

This CLE webinar will provide guidance to IP counsel on the conflicts issues that often arise in patent prosecutions. The panel will outline best practices to identify and address the risks—and to minimize conflicts that can lead to malpractice liability and ethical violations.


Counsel and law firms involved in patent prosecution must carefully evaluate client representations to avoid conflicts that could jeopardize clients’ rights, breach fiduciary duties, and violate PTO rules, Model Rules and state legal ethics rules. Conflicts arise when patent attorneys move between firms—or when they develop knowledge in particular areas and seek more clients in those areas.

Practitioners must take steps to avoid using knowledge from one client’s application when preparing an application for another. The Massachusetts Supreme Court provided guidance on the potential for subject matter conflicts when firms prosecute patents or provide counseling services for two clients in the same technology area [Maling v. Finnegan Henderson Farabow Garrett & Dunner L.L.P. (Mass. Dec. 23. 2015)].

Patent prosecutors must also identify and address risks related to subject matter, client confidentiality, and other difficult situations such as employers and investors with adverse interests.

Listen as our authoritative panel of IP counsel examines the conflicts issues that arise in patent prosecutions and outlines best practices for identifying, addressing and minimizing the potential risks and liability of such conflicts.


  1. Rules governing conflicts
    1. PTO rules
    2. Model rules
    3. State ethics rules
    4. Fiduciary duties
  2. Identifying conflicts—when do they arise
    1. Adverse or potentially adverse representations to other current or former clients
    2. Representations substantially related to work for former clients
  3. Screening
    1. Monitor
    2. Blocking new client/matter that would raise conflict
    3. Prospective consent
    4. Detecting conflicts that arise later
    5. What to do when screens fail
    6. Cautionary tales
  4. Best practices
    1. Pre-conflict planning
    2. Risk management
    3. Resolving conflicts when they arise


The panel will review these and other key issues:

  • What policies and practices should counsel have in place to identify potential conflicts in patent prosecutions?
  • What steps can patent prosecutors take to minimize the risk of subject matter conflicts?
  • How should patent counsel respond after identifying conflicts?


Philip Furgang, Partner
Furgang & Adwar, New York

Mr. Furgang represents clients across all areas of IP law, with a special focus on complex patent, trademark, copyright, and unfair competition matters, including litigation. He leverages his background in electrical, mechanical and civil engineering and extensive cross-disciplinary legal experience. A frequently invited speaker, Mr. Furgang lectures on IP law, litigation tactics and legal ethics and is the co-author of Patent Prosecution (Matthew Bender 2014).

Dr. Sandra P. Thompson, Of Counsel
Slater Hersey & Lieberman, Irvine, Calif.

Dr. Thompson counsels domestic and international clients on patent, trademark, copyright, licensing and new media transactional and litigation matters. She drafts, files, prosecutes and licenses patent applications and trademark applications. She also reviews and enforces clients’ new media rights, including drafting, reviewing and updating privacy policies and terms of use, takedown procedures, and social media-related issues. She has a successful patent appeal and reexamination practice before the U.S. Patent & Trademark Office.


CLE On-Demand - Streaming Video

Includes recorded streaming video of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Video $297.00

How does this work?

Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

Strafford will process CLE credit for one person on each recording.

Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email to place your order.

Recorded Webinar Download $297.00

How does this work?

Recorded Audio Download (MP3) $297.00

How does this work?


Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

I particularly enjoyed the speakers discussions of case examples taken from real life situations.

William Cassin

Mayer Brown

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray


I really appreciated the real world application and examples that were provided.

Leah Schoellkopf

Dodge & Cox

The seminar was convenient and affordable.

Keita Middleton

or call 1-800-926-7926

Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Irah H. Donner



Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



or call 1-800-926-7926

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.