On Friday, August 30, 2018, the California Supreme Court ruled that a blanket advanced conflict waiver signed by two current clients, which purported to authorize lawyers from Sheppard Mullin to accept an unrelated representation of one client adverse to another, was void against public policy because the firm failed to obtain informed consent. Even though the engagement agreement was legally … Read More
Breadth Of PTO Ethics Opinion Could Alter How IP Firms Interact With Foreign Associates
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
Better Late Than Never: PTO Updates, Expands Ethics Advice On Client Intermediaries
This post is the second in a three-part series reviewing how the USPTO interprets and applies its ethics rules to U.S. patent and trademark practitioners who represent clients by working through non-practitioner client intermediaries. In re Mikhailova and USPTO’s Expanded Ethics Guidance Three decades after the OG Notices, the USPTO published a final order in the matter of In re … Read More
Are Your Firm’s Foreign Associate Practices Ethical?
It is commonplace for IP law firms in the United States to receive referrals for patent and trademark application filing, prosecution, and related services from sources other than the actual client. In one of the most common scenarios, patent and trademark services are directed to a U.S. IP law firm through an intermediary, such as a non-U.S. law firm or … Read More
Finnegan Henderson Committed Legal Malpractice By Favoring Marking Blade Inventor Over Corporate Patent Client: Lawsuit
Who is an IP firm’s patent prosecution client when the firm represents a limited liability company and one of its members is the sole inventor? Does the answer change if the LLC is never actually formed, and no one ever advises the law firm? Those are just two questions that appear to be at the center of a malpractice lawsuit … Read More
Greenberg Traurig Avoids Former Client’s DQ Motion By Consenting To Withdrawal
Greenberg Traurig has apparently decided that discretion is the better part of valor. The law firm has agreed voluntarily to withdraw as counsel from a litigation rather than face a disqualification motion in which it was charged with a conflict of interest for trying to invalidate patents it helped prosecute. We previously reported here that Greenberg Traurig had “switched sides” … Read More
New Lawsuit Accuses IP Counsel Of Attacking Same Patents It Prosecuted
It is Ethics 101 that a law firm cannot use its former client’s confidential information in a substantially related matter on behalf of a different client directly adverse to the former client, at least not without the former client’s informed consent. The reason for this common sense rule, which prohibits “side-switching,” is that a lawyer’s duty of confidentiality extends beyond … Read More
PTO Suspends PTAB Atty Who Filed Multiple TM Apps For Cannabis Client
The USPTO has suspended a PTO-employed attorney for thirty (30) days for practicing trademark law before the Office for private clients, in violation of federal conflicts of interest laws. See In re Tara K. Laux, Proc. No. D2016-39 (USPTO Dir. Mar. 9, 2017). According to a settlement agreement reached with the OED Director, attorney Tara Laux, who has worked at … Read More