IP Chat Channel – Ethics
Webinars are listed in chronological order with the most recent at the top of the page.
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Ethics in AIA Post-Grant Proceedings at the PTABWebinar 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.
- Hon. Thomas Giannetti, USPTO
- Richard Giunta, Wolf Greenfield
- Kevin Laurence, Renaissance IP
Conflicts of Interest in Patent Prosecution after Maling v. FinneganWebinar 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.
Advance Conflict Waivers: How to Avoid Unpleasant SurprisesWebinar 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
Confidentiality and Candor in Practice Before the USPTOWebinar 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.
• Prof. David Hricik, Mercer University School of Law
• J. Timothy Meigs, BD Technologies
• Joseph R. Condo, Woodcock Washburn