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

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Program Materials

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
Philip Furgang

Furgang & Adwar

Mr. Furgang represents clients across all areas of IP law, with a special focus on complex patent, trademark,...  |  Read More

Thompson, Sandra
Dr. Sandra P. Thompson

Of Counsel
Slater Hersey & Lieberman

Dr. Thompson counsels domestic and international clients on patent, trademark, copyright, licensing and new media...  |  Read More

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