incisivemedia's Ethics for IP Attorneys

This program has been approved in accordance with the requirements of the Continuing Legal Education Board. CLE Credit will be granted to attorneys.

Click here for the official event website and registration form. (Webinar)

Everyone associated with filing and prosecuting an application with the United States Patent and Trademark Office has a duty of candor and good faith. But what does that duty entail?

This Webinar explains the ethical obligations, required disclosures, pitfalls and dilemmas involved in obtaining, licensing and enforcing patents and trademarks. For applicants, in-house and outside counsel, and other IP professionals, it is an invaluable aid to handling any question that may arise.

Topics addressed include:

- Disclosure obligations when applicants become aware of prior art
- The duty to disclose test data that does not support patentability
- Ethical and diligence issues in IP licensing programs
- Duties created by the receipt of federal research grant money
- Questions that arise when maintaining trademark registrations in force

Attendees benefit from the expertise of a panel that features the combined 40-plus years of experience of two prominent outside counsel and the perspective of in-house counsel from LeCroy Corporation and Columbia University.

I. The duty of good faith and disclosure obligations placed on patent applicants.

- Issues raised when patent applicants become aware of non-English language prior art references.
- The duty to disclose unfavorable test data and experimental results to the Examiner, when such data does not support the patentability of a patent application.

II. The in-house counsel perspective on the duty of good faith during the patent application process.

- Cross-referencing prior art that is raised during the prosecution of patent applications of related subject matter.
- The duty to disclose prior art embodied in a company's existing products.

III. The in-house counsel perspective on ethical and diligence obligations that arise from IP licensing programs.

- Issues related to the election of the small entity status discount when inventions are licensed among varied licensees.
- Notice and commercialization obligations that arise from compliance with the receipt of federal research grant money.

IV. The duty of good faith owed during trademark application prosecution.

- The good faith owed during the process of procuring trademark registrations.
- Ethical issues involved in maintaining trademark registrations in force and challenging the trademark registrations of others.

V. Q&A

Laura Goldbard George, Partner
Stroock & Stroock & Lavan LLP

Matthew Siegal, Partner
Stroock & Stroock & Lavan LLP