patent law ethics

Analyzing Potential Conflicts in Patent Prosecution

In a prior post, we discussed a Massachusetts case concerning conflicts of interest in patent prosecution.  As we noted before, while these issues are of increasing importance as patent prosecution becomes more focused and specialized, absent from the decision was an analytical framework by which to evaluate and analyze potential conflicts in patent prosecution. 

 

The published literature suggests two alternative frameworks to analyze potential prosecution conflicts:  claim-based and information-based.  In this post, we elaborate on how these frameworks should be employed, and identify the questions patent attorneys need to consider when evaluating potential conflicts. 

Maling Decision Highlights Ethical Booby Traps in Patent Prosecution

Patent practice, like many other forms of legal practice, is becoming more and more specialized, and the same counsel often has multiple clients operating in the same space and even creating inventions expected to compete.  This increasingly focused expertise of patent attorneys raises significant ethical issues.  

A recent decision of the Supreme Judicial Court of Massachusetts, Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner LLP, 473 Mass. 336, 42 N.E.3d 199 (2015), considered a malpractice claim brought by an aggrieved client alleging conflicts of interest by the defendant firm during patent prosecution (the process of obtaining patents from the Patent Office).   A review of the Maling case yields several takeaways in terms of the issues faced by patent counsel when called upon to represent conflicting patent applications.