Thursday, April 13, 2006

Patent prosecution conflicts

Three blogs have discussed conflicts issues presented by David Hricik; as a separate matter, one should take note of Joseph Hosteny's article on inequitable conduct that appears in the March 2006 issue of Intellectual Property Today ("The Patent Reform Act and Inequitable Conduct," at page 22; even if H.R. 2795 is pretty much dead.)
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."

At Patently-O:

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].


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