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: 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

When: Premieres in 12 days | April 08, 2025 11:00 AM PT

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Continuing Legal Education (CLE) Credits

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California CLE

Status: Approved

Credits: 1.00 Legal Ethics

North Carolina CLE

Status: Approved

Credits: 1.00 Ethics

Texas CLE

Status: Approved

Credits: 1.00 Legal Ethics/Professional Responsibility

This presentation is approved for one hour of Legal Ethics CLE credit in California, 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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At this time, Justia only offers CLE courses officially accredited in certain states. Lawyers may generate a generic attendance certificate to self-submit credit in their own jurisdiction, but Justia does not guarantee that lawyers will receive their desired CLE credit through the self-submission or reciprocity process.

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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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