Breadth Of PTO Ethics Opinion Could Alter How IP Firms Interact With Foreign Associates

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, Patent Ethics, PTO Ethics Rules, Unauthorized Practice of LawLeave a Comment

This post is the last of a three-part series reviewing how the USPTO interprets and applies its ethics rules to IP practitioners who represent patent and trademark clients through non-practitioner intermediaries. Where Are We Now: Evolution of PTO Ethics Opinions Thirty years ago, the PTO issued (in 1987 and 1988) ethics opinions regarding very discrete questions concerning two aspects of … Read More

IP Firm Tees Up Dismissal Of Subject Matter Conflict, Negligent Patent Prosecution Malpractice Case

Michael E. McCabe, Jr.Conflicts of Interest, District Court Litigation, Patent Ethics, Patent Malpractice, Patent Subject Matter ConflictsLeave a Comment

A recent patent malpractice action filed in federal court in New York against an IP firm raises once again the issue of subject matter conflicts between concurrent clients in prosecuting patent applications in a similar field of technology.  The issue of subject matter conflicts in concurrent patent representation continues to be an area of significant interest–and concern–for IP practitioners who … Read More

Mass. Court Nixes Conflict Claim Against Gillette Former In-House IP Attorney Who Provided Competitor With Infringement Opinions Regarding Ex-Client’s Patents

Michael E. McCabe, Jr.Conflicts of Interest, IP Ethics, Patent EthicsLeave a Comment

On May 5, 2016, a Massachusetts state court dismissed Gillette’s claims for breach of fiduciary duty against its former in-house IP counsel who left Gillette and went to work for a competitor, where he used allegedly privileged information gained during his prior employment and helped his new employer analyze and avoid infringement of Gillette’s patents—including patents over which he oversaw … Read More

IPO Hosting Webinar on Conflicts of Interest in Patent Prosecution

Michael E. McCabe, Jr.Conflicts of Interest, Continuing Legal Education, Patent EthicsLeave a Comment

On Wednesday, February 10, 2016, at 2:00 PM EST, I will be participating in a webinar hosted by IPO Chat Channel  on Conflicts of Interest in Patent Prosecution in light of the recent decision of the Massachusetts Supreme Court in Maling v. Finnegan, Henderson.  In Maling, a case of first impression, the court rejected the plaintiff’s argument that representing two … Read More