Patent prosecution conflicts
Does anyone talk about Pennie & Edmonds, Searle (Pfizer), and the University of Rochester on COX-2?
At Nipper's Invent Blog:
Legal Ethics Forum on “Patent Prosecution Conflicts.” Author David Hricik is looking for YOUR answers to questions like:
Lawyer in prosecuting application for Client A receives an office action rejecting a claim over a prior art reference. Lawyer looks, and that reference is owned by another Client, Client B….What sayeth you?
[In the variant Professor Hricik presented last year, there was a (publicly known) prior art reference in the file of client B which was relevant to the prosecution of the application of client A. That's a no-brainer (disclose) and I discussed it in Intellectual Property Today. In states like New Jersey, a lawyer has a duty to disclose publicly known material that is relevant, apart from any PTO duties. Of the above variant, typical prosecuting attornies DISTINGUISH references (which are presumed valid; see Donohue-II) rather than invalidate the reference. ]
At I/P Updates:
Thanks to Professor David Hricik at the Legal Ethics Forum for pointing to two different authorities that have so far held that it is per se unethical for a lawyer to provide a non-infringement or invalidity opinion about another client's patent. Va. Op. No. 1774 (Feb. 13, 2003); Andrew Corp. v. Beverly Mfg. Co., 2006 U.S. Dist. LEXIS 6360 (N.D. Ill. Feb. 16, 2006) (non-infringement). "Andrew is particularly worrisome (and wrong)," writes the Professor "because it concludes that an opinion given by a conflicted lawyer is 'incompetent' as a matter of law, and therefore inadmissible to defend against a charge of willful infringement.
In another post, Professor Hricik points to an opinion by a panel of the Federal Circuit that "held that the enforceability of a patent is determined by the 'would the information have been important to a reasonable examiner' standard, and not the (arguably) narrower standard established in 1992 in 37 CFR 1.56."
Professor David Hricik is a leading Intellectual Property Ethicist. He recently posted some questions about your thoughts on patent prosecution conflicts. Do these situations create conflicts of interest:
First example: In prosecuting application for Client A, lawyer receives an office action rejecting claims over a prior art reference that is owned by Client B. Is there a conflict? [your comments].
Second Example: Is it per se unethical for a lawyer to provide a non-infringement or invalidity opinion about another client's patent? [your comments].