From Gray Areas to Guiding Principles: Ethics in IP and Patent Law

This presentation provides a concise overview of key regulatory and ethical considerations for practitioners interacting with the United States Patent and Trademark Office (USPTO). We will explore the USPTO's regulatory power, the crucial role of the Office of Enrollment and Discipline (OED), and the critical obligations of candor owed to the USPTO. We will delve into the complexities of inequitable conduct allegations, highlighting specific areas of concern arising in recent case law. Furthermore, we will address the implications of subject matter conflicts and touch upon other current hot topics impacting intellectual property practice. This session is designed to equip practitioners with the knowledge necessary to navigate the evolving landscape of USPTO regulations and maintain the highest ethical standards.

Topics covered include:

Intellectual Property Legal Ethics

Agenda:

USPTO’s Regulatory Power
- Overview of the USPTO’s authority and scope of regulation
- Relevant statutes and rules governing patent and trademark practice
- Impact of USPTO regulations on practitioners and applicants
Role of the OED

Mission and responsibilities of the Office of Enrollment and Discipline
OED’s oversight of registered patent attorneys and agents
Disciplinary procedures and consequences for misconduct

Obligations of Candor to the USPTO
- Duty of disclosure and good faith in dealings with the USPTO
- Requirements for information disclosure statements (IDS)
- Consequences of failing to fulfill calendar obligations
Allegations of Inequitable Conduct and Specific Areas of Concern in Recent Cases
- Definition and elements of inequitable conduct
- Analysis of recent case law highlighting problematic conduct
- Practical tips for avoiding allegations of inequitable conduct
Subject Matter Conflicts
- Understanding subject matter conflicts in patent prosecution
- Ethical considerations related to representing clients with conflicting interests
- Strategies for managing and resolving subject matter conflicts
Other Hot Topics in IP Practice
- Brief overview of emerging trends and challenges in IP law
- Discussion of potential implications for practitioners
- Resources for staying informed about developments in IP practice
Questions & Answers (as time permits)

Duration of this webinar: 60 minutes

Originally broadcast: April 08, 2025 11:00 AM PT

Webinar Highlights

This webinar is divided into section summaries, which you can scan for key points and then dive into the sections that interest you the most.

00:00 Introduction and Speaker Overview

Emil Ali, the speaker, is introduced as a partner at McCabe & Ali, LLP, specializing in IP and ethics matters. Emil outlines the agenda, focusing on USPTO regulatory power, candor obligations, conflicts of interest, and the use of AI. He emphasizes the importance of understanding the USPTO's jurisdiction and the rules governing practice before the office.

05:21 USPTO Regulatory Framework

Emil discusses the definition of practice before the USPTO, which includes presenting papers and giving advice related to filings. He explains the importance of understanding these nuances, especially for registered patent attorneys and those working with non-registered individuals. The USPTO has statutory authority to regulate conduct and discipline practitioners under 35 U.S.C. § 32(b). Emil highlights the concurrent jurisdiction of the USPTO and state bars in disciplining attorneys, referencing cases like Kroll v. Finnerty and Sperry v. Florida. He explains the applicability of ABA model rules and the importance of understanding the choice of law in disciplinary matters.

11:42 Candor and Disclosure Obligations

Emil elaborates on candor obligations, emphasizing the duty of disclosure under Rule 56 and Rule 5.55. He explains the significance of signing and filing documents with the USPTO, likening it to submitting evidence to a tribunal. Emil discusses the definition of a tribunal and the role of patent examiners and trademark examining attorneys as quasi-judicial officers. He stresses the importance of accuracy and honesty in submissions, citing the Andrew Schroeder case as an example of misconduct. Emil advises on record-keeping and the importance of verifying client information to avoid allegations of inequitable conduct.

20:00 Inequitable Conduct in Patent Law

Emil discusses the concept of inequitable conduct, highlighting its potential impact on related patents and the importance of intent and materiality. He provides examples, such as the Hatch-Waxman case, to illustrate how withheld information can lead to findings of inequitable conduct. Emil emphasizes the need for patent practitioners to be aware of client activities and maintain communication with various teams. He advises on the importance of building strong patents and the potential consequences of failing to disclose material information. Emil discusses the challenges of dealing with allegations of inequitable conduct and the importance of maintaining thorough documentation.

46:08 Conflicts of Interest

Emil explains the complexities of conflicts of interest, emphasizing the importance of informed consent and waivers. He discusses the types of conflicts, including direct adversity and material limitation, and provides examples from patent law. Emil highlights the case involving Shepherd Mullen to illustrate the consequences of undisclosed conflicts and the importance of informed consent. He advises on creating ethical screens and obtaining waivers to manage conflicts effectively. Emil stresses the importance of identifying clients and subject matter to avoid conflicts and ensure competent representation.

55:46 Ethical Considerations with AI

Emil discusses ethical considerations related to the use of AI, comparing it to the adoption of cloud-based technology. He highlights the importance of informed consent and the applicability of existing USPTO ethics rules to AI usage. Emil provides examples of AI applications in trademark and patent law, emphasizing the need for accuracy in submissions. He answers questions about the USPTO's regulatory power, the impact of AI on ethical considerations, and the distinction between advocacy and deception. Emil advises on handling subject matter conflicts and the investigation process by the OED.

Please note this AI-generated summary provides a general overview of the webinar but may not capture all details, nuances, or the exact words of the speaker. For complete accuracy, please refer to the original webinar recording.

Continuing Legal Education (CLE) Credits

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California CLE

Status: Approved

Credits: 1.00 Legal Ethics

Earn Credit Until: June 30, 2026

South Carolina CLE

Status: Approved

Credits: 1.00 Legal Ethics/Professional Responsibility

Difficulty: All Levels

Earn Credit Until: December 31, 2025

North Carolina CLE

Status: Approved

Credits: 1.00 Ethics

Earn Credit Until: February 28, 2026

Texas CLE

Status: Approved

Credits: 1.00 Legal Ethics/Professional Responsibility

Earn Credit Until: March 31, 2026

This presentation is approved for one hour of Legal Ethics CLE credit in California, one hour of Legal Ethics/Professional Responsibility CLE credit in South Carolina (all levels), and one hour of Ethics CLE credit in North Carolina. This course has been approved for Minimum Continuing Legal Education credit by the State Bar of Texas Committee on MCLE in the amount of 1.00 credit hours, of which 1.00 credit hours will apply to Legal Ethics/Professional Responsibility credit.

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Speaker

Emil J. Ali Partner
McCabe & Ali, LLP

Emil J. Ali is a partner at McCabe & Ali, LLP where he focuses his practice on helping lawyers understand their obligations under state and federal law. As a registered patent attorney, a significant focus of his practice involves advising lawyers and law firms on all aspects of the intersection of IP and ethics matters. Emil’s work includes counseling clients on lateral transitions, malpractice avoidance, expert opinion and testimony, and respondent’s defense work before various bars and courts. You can view his musings on IP ethics issues at www.ipethicslaw.com.

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