Drafting Patent Counsel Engagement and Disengagement Letters

Structuring Scope of Engagement, Confidentiality, Conflicts of Interest and Other Key Provisions

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


Conducted on Thursday, July 27, 2017
Recorded event now available


This CLE webinar will prepare patent counsel to structure engagement letters and disengagement letters. The panel will highlight the key terms of the engagement and disengagement letter and discuss negotiation strategies.

Description

Engagement letters are important and necessary to keep patent counsel out of trouble. According to the legal malpractice insurer CNA Financial Corp., in 65% of malpractice disputes reviewed, there was no engagement letter. Of the remaining 35%, only 15% involved a solid engagement letter that effectively limited the firm’s liability. Careful negotiation of the agreement is important to protect the parties’ interests.

Among the many issues that should be considered and addressed in engagement letters are: scope, patent services, fee agreement, right to purchase, right to assume responsibility for prosecution, exclusivity, waiver of conflict, severability, modification/waiver, and more. Further, in drafting the agreement, counsel must navigate complex ethical rules and opinions that govern acceptable and unacceptable provisions.

The disengagement letter is also critical. Termination of a relationship can happen for many reasons, but if the client thinks counsel represents them, then counsel does. Practitioners must ensure both the engagement letter and disengagement letter address the scope of the engagement, duties and compensation, confidentiality, and conflicts of interest, among other things.

Listen as our authoritative panel of patent attorneys examines the key provisions of an engagement letter and discusses the importance of a disengagement letter. The panel will offer guidance for structuring and negotiating engagement and disengagement letters.

Outline

  1. Key provisions in an engagement letter
    1. Scope
    2. Compensation
    3. Rights (both client and firm)
    4. Confidentiality
    5. Waiver of conflict
    6. Indemnification and insurance
    7. Other key provisions
  2. Disengagement letters
  3. Best practices for structuring engagement and disengagement letters

Benefits

The panel will review these and other key issues:

  • Key provisions to be included and negotiated in an engagement letter
  • Key provisions in a disengagement letter
  • Drafting client agreements to proactively avoid client complaints

Faculty

Dr. Angela Foster, Ph.D., Esq., Principal
Law Office of Angela Foster, North Brunswick, N.J.

A licensed attorney and scientist, Dr. Foster has over 20 years of combined legal and scientific experience in biotechnology, biochemistry, pharmaceutical and chemistry, as well as agricultural biotechnology and plant patents. She specializes in litigating, counseling, prosecuting and licensing IP matters and facilitating alternative dispute resolution for various complex litigation and transactional matters. Dr. Foster teaches patent law and licensing at Seton Hall Law School, and frequently publishes articles and lectures on various panels regarding IP law and alternative dispute resolution.

Michael E. McCabe, Jr., Founder
McCabe Law, Potomac, Md.

Mr. McCabe is a registered patent attorney with 20 years of experience representing foreign and domestic entities and individuals across a wide array of technologies in patent and trademark matters before the federal courts and the USPTO. He also represents practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters before the Office of Enrollment and Discipline of the USPTO and the state bars of Maryland, Virginia and the District of Columbia. Mr. McCabe is a former adjunct professor of law at George Mason University School of Law.

Dr. Andrew W. Williams, Ph.D., Esq., Partner
McDonnell Boehnen Hulbert & Berghoff, Chicago

Dr. Williams serves as Chair of the firm's PTAB Trials Practice Group as well as Chair of the firm’s ethics committee. He has over 15 years of experience in all areas of IP law, with particular emphasis on patent litigation, client counseling, and patent procurement in the areas of biochemistry, pharmaceuticals, and molecular diagnostics. Dr. Williams’ litigation experience includes jury and bench trials in federal district court; practice before the PTAB; and advocacy in private arbitration proceedings. Dr. Williams is a frequent speaker and author on a variety of intellectual property law topics, including issues related to client conflicts and professional responsibility.


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Patent Law Advisory Board

Charles S. Baker

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Locke Lord

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Manatt

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

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Senior IP Counsel

Intel

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Partner

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