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?
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