Conflicts in Patent Prosecution: Avoiding the Ethical Pitfalls

Description

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.

In Feb. 2019, the Federal Circuit granted motions to disqualify defense counsel after finding the firm had an ongoing attorney-client relationship with the plaintiff companies. The court concluded the firm's representation of the defendant presented concurrent conflicts of interest based on the terms of the fee agreement. [Dr. Falk Pharma GMBH and Salix Pharma. v. Generico (Fed. Cir. 2019)] The case serves as a reminder of the challenges in predicting conflicts and the importance of addressing such conflicts when they arise.

In addition to these contractual conflicts of interest, patent prosecutors must also identify and address risks related to the 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 issues of the conflicts that arise in patent prosecutions and outlines best practices for identifying, addressing, and minimizing the potential risks and liability of such conflicts of interest.