Changing Ethical Obligations and Privilege Considerations Arising From Recent Federal Circuit Decisions
In decisions such as Praxair, Aventis, Nilssen, and McKesson, the Federal Circuit affirmed district court decisions finding patents unenforceable due to inequitable conduct. In several of these cases, the Federal Circuit panel was divided, demonstrating that the court has not articulated an easily applicable set of rules for ethical behavior before the U.S. Patent and Trademark Office (USPTO).
Compounding this confusion, the Office of Enrollment and Discipline (OED) has recently revised the rules concerning practice before the USPTO. Some of the interpretations of the rules presented by the OED’s director have been quite controversial and impose substantial burdens on practitioners. Every professional with a USPTO registration number should be aware of these developments.
Further, over the past year, the Federal Circuit has issued a number of decisions regarding liability for induced infringement that have demonstrated the value of proper opinions of counsel. The ethical considerations involved in obtaining necessary opinions and maintaining the attorney-client privilege in the corporate context can be quite complex.
Presenters:
- George C. Best, Partner and member of Foley’s Intellectual Property Litigation and Appellate Practices
- Gerald F. (Jerry) Swiss, Partner and Chair of Chemical & Pharmaceutical Practice and member of Biotechnology & Pharmaceutical and International Practices
- Elin Hartrum, Senior Patent Counsel with CV Therapeutics, Inc.
This discussion focused on the ethical rules and practical considerations presented by these developments.
For questions about this program, please contact Zulaikha Rahim at [email protected].