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Conflicts in Patent Prosecution: Avoiding the Ethical Pitfalls

Minimizing Risks of Malpractice Liability and Ethics Sanctions
Published by Strafford Publications, Inc.
Format: On-Demand or DVD
Originally presented: September 18, 2013

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Price: $297
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Please note: You will be taken to the Strafford website to complete your order.

This CLE webinar will provide guidance to 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.

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. Practitioners must take steps to minimize the risk of using knowledge from one client’s application when preparing an application for another.

Patent prosecutors must also identify and address risks related to subject matter, client confidentiality, and other difficult 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.

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 key questions:

  • 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?

Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Stephen T. Schreiner, Partner
Goodwin Procter, Washington, D.C.
He focuses on all aspects of intellectual property law including patent litigation, patent prosecution, counseling and due diligence related to electronics, signal processing, software, e-commerce, business methods, digital television, telecommunications, interactive media, the Internet and other areas. He is a member of the firm’s Litigation Department and its Patent Litigation Practice.

Dr. Sandra P. Thompson, Shareholder
Buchalter Nemer, Irvine, Calif.
She represents clients with respect to intellectual property issues and green technology/energy-related issues. She represents clients in the fields of semiconductors, electronics, chemicals and chemical intermediates, solar and solar-related technology, transportation technology, including the design and utility of parts and systems, and fuel cells. She co-chairs the firm’s IP Group.

Register Today!

Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.

Continuing Legal Education

Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.

order button
Please note: You will be taken to the Strafford
website to complete your order.