Patent Ethics: Prosecution
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Patent Ethics: Prosecution (2015 Edition), by David Hricik and Mercedes Meyer, is an essential guide to the ethical issues arising in the course of the patent prosecution process. By providing relevant rules and case law, it allows practitioners to identify ethical problems before they arise and to address them most effectively when they do. Patent Ethics: Prosecution is one of two volumes on patent ethics -- the second focuses on litigation -- and is the first of its kind to combine the United State Patent and Trademark Office (PTO) rules with commentary by the authors, which distills the authors' own experience and expertise in patent prosecution into effective practice strategies.
The 2015 Edition is particularly relevant considering the significant ramifications with the United States Patent & Trademark Office (USPTO) repealing its existing rules, the USPTO Code of Professional Responsibility, and replacing them with the new USPTO Rules of Professional Conduct. Furthermore, the 2015 Edition also comprehensively discusses ethical issues of major concern for patent law practitioners such as:
• The increase in malpractice claims based upon patent prosecution as well as recent significant verdicts of $30 million and $70 million.
• The USPTO's Office of Enrollment and Discipline's vigorous enforcement efforts, continued persistence in asserting a broad view of its jurisdiction, and resulting increase in the volume of case law and other authorities.
• The troublesome issue of best mode and the America Invents Act.
• The various ethical issues surrounding patent agents.
The 2015 Edition features new analysis of current client conflicts in patent practice, including when prosecution and opinion work become "adverse" to a client, the conflicts of interest created by the AIA's approach to the best mode, and duty of candor post-Therasense. It also includes an updated PTO Code completely annotated with OED decisions on each provision.
• "Patent Ethics: Prosecution is a necessary reference for the practice of patent prosecution.
• Hricik and Meyer stand alone as experts in the field of patent ethics. No group or person has written more on the topic or explored these issues in greater depth.
• A clear and concise guide to the impossibly difficult problems faced by practitioners every day.
• Patent Ethics: Prosecution should be in every patent law firm's library."
--Sean Burke, Editor-in-Chief, Journal of Patent & Trademark Office Society
"This is a book that includes specific guidance for both patent attorneys and patent agents. It should be within the reach of every patent prosecutor...I suspect that this book will quickly become the leading authority on patent prosecution ethics." --Patently-O
"Provides practical advice on best practices, along with exemplary language for use in written communications with clients and potential clients, and should be a welcome addition to the bookshelf of many patent prosecutors...A thorough, comprehensive, and up-to-date treatise on this important and timely topic." --The IP Law Book Review
"PATENT ETHICS does an excellent job of identifying the many potential "ethical" pitfalls confronting these practitioners, in a manner that is comprehensive, up-to-date and practical, filling an important niche that to my knowledge is not addressed in any other book." --The IP Law Book Review
Table of Contents
Chapter 1 A Brief Overview of the Disciplinary Authorities at the United States Patent and Trademark Office
Chapter 2 Registration and the Unauthorized Practice of Law
Chapter 3 Choice of Law
Chapter 4 Who Is the Patent Prosecution Client, and When Does a Patent Prosecution End?
Chapter 5 Fees and Expenses
Chapter 6 The Duty of Confidentiality
Chapter 7 Competency in Patent Prosecution
Chapter 8 Prosecution Before and After The America Invents Act
Chapter 9 Inequitable Conduct
Chapter 10 Adversity and Material Limitations in Patent Practice:
Litigation, Opinions, and Prosecution
Chapter 11 Duties to Former Client Conflicts
Chapter 12 Withdrawal and Termination
Chapter 13 Consent and Prospective Consent
Chapter 14 Combining Prosecution with Other Forms of Representations