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Patent Ethics: Prosecution
Patent 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 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
• 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.
• 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.
680 pages, Paperback
Published November 20, 2014
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