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
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.
Outline
- Rules governing conflicts
- PTO rules
- Model rules
- State ethics rules
- Fiduciary duties
- Identifying conflicts—when do they arise
- Adverse or potentially adverse representations to other current or former clients
- Representations substantially related to work for former clients
- Screening
- Monitor
- Blocking new client/matter that would raise conflict
- Prospective consent
- Detecting conflicts that arise later
- What to do when screens fail
- Cautionary tales
- Best practices
- Pre-conflict planning
- Risk management
- Resolving conflicts when they arise
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
David C. Hricik
Counsel
Taylor English Duma
Mr. Hricik represents clients in patent infringement suits and complex commercial litigation. He has served in... | Read More
Mr. Hricik represents clients in patent infringement suits and complex commercial litigation. He has served in leadership roles with the American Intellectual Property Law Association (AIPLA), the Intellectual Property section of the American Bar Association, and has authored the two leading treatises on ethical issues in patent practice, both now in their second editions. Mr. Hricik serves as counsel and as an expert in malpractice and other cases involving ethical issues in patent practice and has served as an expert for the Office of Enrollment and Discipline at the United States Patent & Trademark Office, as well as serving as an expert for practitioners accused of wrongdoing by the OED. He also serves as a Professor at the Mercer University School of Law.
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Amy E. Richardson
Partner
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
Ms. Richardson serves as Co-Chair of the Firm’s Legal Ethics and Malpractice Group. She focuses her practice on legal ethics and malpractice, complex civil litigation, and government enforcement actions. Ms. Richardson counsels and represents lawyers and law firms in disciplinary investigations and prosecutions and malpractice matters. Her disciplinary experience includes matters before the USPTO’s Office of Enrollment and Discipline (OED) and the Office of Professional Responsibility (OPR). She counsels and advises lawyers and law firms in partner admissions and departures, and law firm dissolutions. Ms. Richardson also handles complex civil cases in federal court, state court, and in arbitration proceedings throughout the U.S. She is experienced at handling matters through all stages of litigation. Ms. Richardson works closely with the firm’s telecommunications practice in cases involving the communications-technology industry. Ms. Richardson teaches ethics and professional responsibility at the Georgetown University Law Center and is the Ethics Chair for the North Carolina Bar Association’s Litigation Council.
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Sandra P. Thompson, Ph.D.
Atty
Finlayson Toffer Roosevelt & Lilly
Dr. Thompson has spent the last 19 years counseling domestic and international clients—from Fortune 50 companies... | Read More
Dr. Thompson has spent the last 19 years counseling domestic and international clients—from Fortune 50 companies to startups to universities—on patent, trademark, copyright, licensing and new media transactional and litigation matters. She drafts, files, prosecutes and licenses patent applications and trademark applications. Dr. Thompson also reviews and enforces clients’ internet and social media rights, including drafting, reviewing and updating privacy policies and terms of use, takedown procedures, domain name enforcement, and social media-related issues. She has a successful patent appeal and reexamination practice before the USPTO. Dr. Thompson represents clients in the fields of food and beverages, nutraceuticals, agriculture, green and renewable technology and chemistries, biofuels, medical devices and telemedicine, cleantech matters, semiconductors, electronics, chemicals and chemical intermediates, solar and solar-related technology, transportation technology, waste/sludge management and conversion, fibers, biotechnology, pharmaceuticals, computer hardware and software, and telecommunications.
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