Anticipate This!™ | Patent and Trademark Law Blog

Conflicts & Liability in Patent Practice.

Posted in General Commentary by Jake Ward on December 10, 2007

The Toledo Patent Law Association (TPLA) hosted a CLE event on Friday, December 7th, titled Conflicts of Interest in Patent Prosecution and Litigation.  The CLE was presented by Professor David Hricik of the Mercer University School of Law in Macon, Georgia.  Professor Hricik is also the present Chair of the Professionalism & Ethics Committee of the AIPLA.

The CLE event was well attended and was positively received by the attendees.  Among the topics reviewed were patent litigation conflicts, opinion conflicts, prosecution conflicts, and strategies for potentially avoiding the same (beyond the interesting solution of merely having one client and one case).  Some interesting scenarios involving “pulling punches” and “claim shaving” were discussed.   Recent case law related to the aforementioned conflict situations was also reviewed.

Among the various hypothetical scenarios put forth by Professor Hricik, one we thought particularly intriguing from a patent prosecution standpoint follows:

PTO rejects claim for Client A over a reference owned by Client B; Client A sues because you were “objective ” when you should have attacked harder . . . .

One can see where a conflict might arise in such as situation beyond mere allegations of “pulling punches”.  For example, Client B that owns the cited reference may equally be upset over any “disparaging” remarks or comments made to overcome the reference for Client A.  Some firms have apparently decided to run conflict checks on references cited in Office Actions from the USPTO, due to this very issue.  Do the honorable readers of the AT! have any thoughts? 

A copy of CLE presentation has graciously been provided for online review by Professor Hricik, and may be found here.

JW Note:  The TPLA has promised more interesting CLE events to come, so stay tuned if you are a practitioner located in the Midwest (or if you have the urge to travel to beautiful Toledo, Ohio for CLE)!

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