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IP Chat Channel – Ethics

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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Ethics in AIA Post-Grant Proceedings at the PTAB

Webinar Date: 11/10/2016

In its amendments to the Rules of Practice for Trials earlier this year, the PTAB stiffened the rules concerning the duty of candor for attorneys who practice before the Board and set forth the process and conditions under which it will impose sanctions. The PTAB runs a tight ship: in the handful of years that the PTAB has held IPR and CBM trials under the AIA, it has already sua sponte sanctioned several petitioners and patent owners or their counsel.

This webinar features a Lead Administrative Patent Judge of the PTAB who will review the ethical obligations of participants in AIA post-grant proceedings. Two experienced post-grant litigators will discuss several topics with the judge, including:

  • The rules regarding motions for sanctions by parties in an inter partes  (IPR) or covered business method (CBM) review;
  • Lessons from successful motions for sanctions versus unsuccessful motions;
  • Ethical problems that arise due to parallel proceedings at the PTAB and U.S. district courts, including issues regarding protective orders and inconsistent claim construction.

Speakers:

  • Hon. Thomas Giannetti, USPTO
  • Richard Giunta, Wolf Greenfield
  • Kevin Laurence, Renaissance IP



Conflicts of Interest in Patent Prosecution after Maling v. Finnegan

Webinar Date: 02/10/2016

The recent decision of the Massachusetts Supreme Court in Maling v. Finnegan – a case of first impression — rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion cautioned firms to carefully police their cases to avoid conflicts, “no matter how complex such a protocol might be … law firms run significant risks, financial and reputational, if they do not avail themselves of a robust conflict system adequate to the nature of their practice.”

Our panel includes the general counsel of a large diversified law firm that does patent prosecution; a law firm attorney who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters; and an in-house counsel with responsibility for IP for major business segment of a multinational. They will discuss best practices for law firms and clients in light of Maling, and consider hypotheticals where the answer about conflicts is tough to call.

Speakers:
Martin Kaminsky, Greenberg Traurig, LLP
Scott Markow, Stanley Black & Decker, Inc.
Michael McCabe, Funk & Bolton



Advance Conflict Waivers: How to Avoid Unpleasant Surprises

Webinar Date: 09/22/2015

CLE Ethic credits will be applied for

Law firms asking current clients for written permission to be averse to them in future matters is a custom of recent vintage, but now takes place frequently. Corporations large and small grant such waivers because they want to work with a specific law firm lawyer or because they don’t foresee a real threat of a conflict. But when push comes to shove, these waivers don’t do much to lessen bad feelings between client and law firm, and their enforceability is tested in court repeatedly. For instance, in one recent case, a magistrate judge in the Western District of Pennsylvania enjoined a law firm from representing a company that had launched an unfriendly takeover bid for another of the firm’s clients, despite the existence of an advance waiver between the law firm and the target company.

Our panel, consisting of a law school professor who specializes in ethics in IP practice, an in-house counsel at a major multinational, and a law firm litigator, will examine the status of such waivers under law and ethical rules, the various types of advance waivers, and how courts have evaluated the text of the waiver and the surrounding facts in a number of decisions. The panelists will also offer tips for how to negotiate and draft advance waivers that can best serve the needs of both client and law firm.

Prof. Lisa Dolak, University of Syracuse School of Law
Jennifer Johnson, DuPont
Daniel Tabak, Cohen & Gresser




Conflicts of Interest: Opinions of Counsel and Patent Litigation (including Disqualification)

Webinar Date: 04/23/2014

Patent practice offers many opportunities for conflicts of interest between corporate clients and their law firm attorneys. This webinar will examine conflict rules and scenarios in both opinion work and litigation. Our panel includes the deputy chief of IP at a major multinational company, a leading academic authority on IP and legal ethics and an experienced patent litigator. Their discussion will

  • quickly review the ABA Model Rules of Professional Conduct, implementation by states, and differences among regional circuits regarding disqualification;
  • discuss conflict scenarios involving opinion work, such as when a corporate client hires a law firm to opine that a patent is invalid, only to discover that the firm represents the patent owner;
  • assess varying scenarios involving conflicts in litigation, such as whether a law firm should ask a client for a waiver to represent a party opposing the client, and conflicts arising after information is shared during “meet-and-greet” sessions between a law firm and a potential client; and
  • examine where the line falls between clear-cut ethical lapses and client expectations of loyalty.

Speakers:

  • John Cheek, Caterpillar Inc.
  • Lisa Dolak, Syracuse University College of Law
  • Christopher Larus, Robins, Kaplan, Miller & Ciresi, LLP



New USPTO Rules of Conduct

Webinar Date: 06/06/2013

A major overhaul of the USPTO Rules of Professional Conduct went into effect on May 3rd. This change probably is welcome for most attorneys because the new USPTO
Rules seek to conform the ethical obligations for representing others before the USPTO to the ABA Model Rules of Professional Conduct, which have been adopted in some form by every state (except California) and the District of Columbia. Until this revision, the USPTO rules were based on an outdated ABA Model Code from 1980.

However, practitioners need to pay attention to some important differences between the ABA rules and the current USPTO Rules, as well as to some new potential ethical dilemmas created by the AIA. Our panel includes an in-house prosecution counsel for a major international energy company, a law firm patent prosecutor specializing in computer-related inventions, and an attorney in the USPTO’s Office of Enrollment & Discipline. They will consider:

  • the ethical quandary lawyers may face because of conflicts between the rules’ requirement for full disclosure to the USPTO and the obligation of confidentiality to clients
  • the ethics implications of the new Supplemental Examination proceeding created by the AIA
  • the AIA’s elimination of the best mode invalidity defense in litigation and the implications for practice before the USPTO
  • the duty of patent prosecutors to research the ownership of patents and patent applications to avoid client conflicts-of-interest
  • new requirements for financial record-keeping

Speakers:

  • Glenn Barrett, Exxon Mobil
  • Bradley Forrest, Schwegman Lundberg & Woessner
  • James Silbermann, USPTO



Ethics-Related Implications of the AIA

Webinar Date: 10/23/2012

IPO will apply for Ethics CLE for this webinar.

Last year’s major revamp of the patent laws opens up additional risks to practitioners. This webinar will analyze the key changes spurred by the AIA that open new ethical challenges, including:

• the ethical implications of supplemental examination, the new post-grant proceeding that gives patent owners the opportunity to cure flaws in a patent but puts specific individuals at risk;
• the elimination of the best mode defense;
• practice before the Patent Trial and Appeal Board; and
• the new statute of limitations for disciplinary actions.

Our panel includes a leading academic expert on ethical issues in IP, a senior patent lawyer and litigator from a general practice firm, and the founder of an IP boutique who was formerly the top in-house patent counsel for a large technology company.

Speakers:

  • Prof. Lisa Dolak, Syracuse University, School of Law
  • David McCombs, Haynes & Boone
  • Howard Skaist, Berkeley Law & Technology Group




Attorney-Client Privilege in Patent Prosecution and Litigation

Webinar Date: 07/28/2011

Controversies about attorney-client privilege can arise throughout the life of a patent, from the preparation of the application through later enforcement. For instance, one IP boutique recently had to defend itself from charges of malpractice involving the prosecution of a patent for a group of assignees. The judge ruled that the firm had engaged in sufficient activity with regard to that assignee to result in an attorney-client relationship and fiduciary duty, giving rise to a conflict of interest in a subsequent matter.

The first part of the webinar will highlight possible pitfalls involving privilege in such joint development agreements, as well as in proceedings before the USPTO and immediately after a patent is granted. The discussion will then move to privilege issues in patent litigation, including recent cases involving spoliation, new rules regarding “clawback” and expert witnesses, and controversies that can arise in joint defense groups.

Our panel includes an academic expert in ethics & IP, a law firm attorney specializing in professional responsibility, and a manager of US IP litigation at a major technology company.

Speakers:

David Hricik, Mercer University School of Law
Peter Jarvis, Hinshaw & Culbertson
Frank Nuzzi, Siemens




Conflicts of Interest in Patent Prosecution and Litigation

Webinar Date: 02/17/2011

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The unpleasant consequences of conflicts of interest in patent prosecution and litigation are a constant fact of life in the IP community. At present, at least two IP law firms are being sued for conflicts of interest regarding patent prosecution, where potential subject matter conflicts may be slow to become visible. On the litigation front, in the bitter conflict regarding the rights to Bratz dolls, an entire sideshow has centered on the disqualification of MGA’s lead counsel by Mattel.

Our panel of experts includes a law professor, the founder of a law firm, and an in-house counsel. They will discuss obvious conflicts, analyze many more ambiguous situations, and will lay out best practices on how to avoid trouble.

Speakers:

Professor Lisa Dolak, Syracuse University
Frank Nuzzi, Siemens Corp.
Howard Skaist, Berkeley Law & Technology Group




Inequitable Conduct: The Federal Circuit Hearing in Therasense

Webinar Date: 11/12/2010

In deciding to hear the Therasense case en banc last spring, the Federal Circuit explicitly signaled its willingness to fundamentally redefine the framework and standards for deciding whether a patent holder committed inequitable conduct before the PTO in procuring its patent, therefore losing all right to enforce it. The Court asked whether the framework balancing materiality and intent should be replaced or modified, and whether and what kind of fraud standard should be used to infer intent.

This webinar will discuss the content and direction of the oral argument which is scheduled to take place at Federal Circuit on Nov 9. Our panel of experts will analyze the discussion and the options open to the Court.

Speakers:

Hon. Paul Michel
Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
Jeffrey Kushan, Sidley Austin LLP




Confidentiality and Candor in Practice Before the USPTO

Webinar Date: 12/16/2009

Federal Circuit inequitable conduct cases create difficult practical issues for firms and individual lawyers. This webinar addresses obligations concerning submission of art from related cases, conflicts between the duty of candor and the duty of confidentiality that can arise when applications for two clients are closely related, the recent panel decisions ostensibly eliminating the need for evidence of intent to deceive, and other issues.

Speakers:

Prof. David Hricik, Mercer University School of Law
J. Timothy Meigs, BD Technologies
Joseph R. Condo, Woodcock Washburn