Ethical Requirements Related to Patent Prosecution & Patent Litigation

Todd Juneau

Power of Attorney• Who is the client, the corporation? the

inventor? both?

• Model Rules (paraphrased): if they think you are their lawyer, you are their lawyer.

• Be clear; in writing.

• Engagement Letters, Disengagement Letters

• Patent Maintenance Fees

Representing Two or More Parties

• Community of Interest Doctrine

• Waiver of Conflict

• Opposing party is USPTO

• Let them know that you would need to withdraw if there is a divergence

Foreign Associates

• Outside contractor

• You pay FA fees or client pays FA fees?

• Prior relationships vs. Duty to Corporation

Patent Searches

• Outside Search Firms

• Quality of Search Reviewed

• Review of Search Results

• Invalidity Searches, Freedom to Operate

• Validity Opinions? Infringement Opinions?

Affirmative Duties

• Duty of Disclosure

• Duty of Candor

• Duty to Notify of Large Entity Status

Conflicts of Interest

• Patent Prosecution Conflicts

• Directly adverse

• Subject Matter - Pulling Punches

• Arguing against prior client’s position

• Improper Use of Trade Secrets?

Leahy-Smith AIA• Failure to Disclose the Best Mode can no

longer be used as a litigation defense when asserting a claim of patent invalidity

• But to obtain a patent, you must still disclose the Best Mode

• What about Patent Invalidity Proceedings at the USPTO?

• What if your client doesn’t want to tell you?

Hmmmm....

• http://farmprod.content.xtranormal.com/2011-11-04/publish/2474a52a-0726-11e1-a7a4-12313b12d0a2.mp4

Prior Art

• Generated from co-pending U.S. Examination Reports and PCT Reports

• Generated from Attorney Searches and Due Diligence Analyses’

• Client/Inventor Awareness of Competitors

Lapse of Application

• Revivable in U.S., Europe, Asia, Israel, etc.

• Unintentional or Unavoidable

• Time limits

Patent Maintenance Fees

• U.S. called “Maintenance fees”: due at years 3.5, 7.5, and 11.5

• International called “Annuities”, due each year

• Missed payment = expired patent = E&O

• Appearance of purposely missed deadline to the advantage of another client? Disgorgement of Fees of Both Clients

13