Conflicts in Patent Prosecution: Avoiding the Ethical Pitfalls

Minimizing Risks of Malpractice Liability and Ethics Sanctions

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


Conducted on Thursday, August 26, 2021

Recorded event now available

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Course Materials

This CLE course will guide IP counsel on the unique conflict issues that often arise in patent prosecution. The panel will outline best practices to identify and address the risks and minimize conflicts that can lead to malpractice liability and ethical violations.

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 the USPTO Rules of Professional Conduct and accompanying state legal ethics rules. Conflicts may arise when patent attorneys move between firms or develop knowledge in particular areas and seek more clients in those areas. Moreover, patent prosecutors face unique subject matter conflicts.

In 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.

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Outline

  1. Rules governing conflicts
    1. USPTO rule
    2. State ethics rules
    3. Fiduciary duties
  2. Identifying conflict: when do they arise
    1. Adverse or potentially adverse representations to other current or former clients
    2. Representations substantially related to work for previous 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
  5. Case updates

Benefits

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?

Faculty

Ali, Emil
Emil J. Ali

Partner
McCabe & Ali

Mr. Ali provides legal representation of professionals across many regulated industries to limit, defend and deflect...  |  Read More

Kepler, Tracy
Tracy Kepler

Risk Control Consulting Director, Global Specialty, Lawyers Professional Liability
CNA Insurance

Ms. Kepler designs and develops content and distribution of risk control initiatives relevant to the practice of law....  |  Read More

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Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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