Serving Two Masters: the California and USPTO Rules of Professional Conduct

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It was my pleasure to present to intellectual property attorneys on legal ethics at our January 13, 2020, talk: “Serving Two Masters: the California and USPTO Rules of Professional Conduct.” I discussed some of the differences between the U.S. Patent and Trademark Office (USPTO) Rules and California Rules regarding conflicts of interests, including the additional written disclosures required under the California Rules. I also discussed several important decisions that touch upon intellectual property law and legal ethics, including Dr. Falk Pharma GMBH v. GeneriCo, 196 F.3d 917 (2019) out of the U.S. Court of Appeals, Federal Circuit. The case resulted in disqualification of a firm based on representation resulting from outside counsel guidelines that provided that the firm represented not only the client entity named in the litigation, but also its affiliates.

I also addressed the topic of subject matter conflicts in patent litigation, including Maling v.Finnegan, 42 N.E.3d 199 (Mass. 2015) in which a law firm avoid disqualification and the court rules that competing patents in the same space did not place clients directly adverse to each other, and did not, standing alone, constitute an actionable conflict of interest violating Rule 1.7.

Among more recent California cases, I discussed the importance of defining the identity of the client in the engagement, and the CSPC Dophen Corp. v. Hu decision in which the court found there was no basis for disqualification premised on an alleged former client conflict, where the current trade secret litigation and former patent prosecution matters were not substantially related, and where the client in the former engagement was the entity, not the individual.

Another important distinction I highlighted in the presentation was the obligation to report certain ethics violations under 37 C.F.R. section 11.803 of the USPTO Rules. In contrast, California has no similar obligation and declined to adopt the American Bar Association’s Model Rule 8.3. Finally, I discussed a recent discipline decision out of the USPTO, In re Achterhof, in which an attorney was suspended after marketing himself to clients by representing that he was able to assist them with patent applications, when he was not registered with the USPTO. The decision concluded that he had engaged in the unauthorized practice of law by taking on such work.

This 90 minute MCLE presentation will be available for viewing through the San Diego County Bar Association. I hope you enjoy it and let me know if you have any questions.

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