Patent Prosecution Bars: My New Article

My new article (well, I finished it months ago) is now available online at St. Mary’s Journal on Legal Malpractice & Ethics.  It’s called Is Litigation Counsel Who Also Engages in Competitive Decision-Making Wrong for the Part?, and is available here.

The abstract:

In-house counsel wear different hats, and are often involved in business decisions regarding products, marketing, and other strategic issues. It was in this context that courts began to adopt protective orders that precluded in-house counsel who provided their clients advice with “competitive decision-making” from having access to information from a competitor disclosed in discovery. Prosecution bars present numerous issues for courts and counsel. It may be that because of prosecution counsel’s knowledge of the technology that her service as trial counsel would lead to cost savings and other benefits to her client. However, due to the myriad problems that arise from having litigation counsel also engage in other activities, she may be wrong for the part. Only through careful analysis of the policies involved, and careful drafting of any protective orders can courts, clients, and counsel be sure of their casting decisions.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

2 thoughts on “Patent Prosecution Bars: My New Article

  1. 2

    I don’t know why that happened in that particular case, but in the abstract I suspect that it’s expertise that the client wants, and avoiding duplication of costs.

    But I agree that there’s a lot of things that can go wrong.

  2. 1

    Prof. Hricik,

    I read your article and the Deutsche case, perhaps not closely enough. In the CAFC case, what escapes me is why Island would want Mr. Mercado (who, from the Internet appears to be quite distinguished) to both prosecute numerous filed patent applications and litigate patents in the same families with similar subject matter. I don’t see much upside in combining the two roles nor in giving one’s prosecutors access to additional invention-related information not heretofore known to them. Too many pitfalls.

    Could you elucidate?

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