Conflicts in Patent Prosecution: Avoiding the Ethical Pitfalls

Minimizing Risks of Malpractice Liability and Ethics Sanctions

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

Conducted on Tuesday, December 4, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide 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.

On July 26, 2018, a district court judge disqualified plaintiff’s counsel in a patent infringement case, finding counsel had violated state professional conduct rules because “a reasonable lawyer should have known that there was a significant risk” of a conflict and “should have obtained written, informed consent from both parties.” [Altova GmbH v. Syncro Soft Srl (D. Mass. 2018)] The case serves as a reminder of the challenges in predicting conflicts and the importance of addressing such conflicts when they arise.

Patent prosecutors must also identify and address risks related to subject matter, client confidentiality, and other troublesome 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 critical 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?


Hricik, David
David C. Hricik

Taylor English Duma

Mr. Hricik represents clients in patent infringement suits and complex commercial litigation. He has served in...  |  Read More

Richardson, Amy
Amy E. Richardson

Harris Wiltshire & Grannis

Ms. Richardson serves as Co-Chair of the Firm’s Legal Ethics and Malpractice Group. She focuses her practice on...  |  Read More

Thompson, Sandra
Sandra P. Thompson, Ph.D.

Finlayson Toffer Roosevelt & Lilly

Dr. Thompson has spent the last 19 years counseling domestic and international clients—from Fortune 50 companies...  |  Read More

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