By David Hricik
Proud to announce that the 3rd edition of Patent Ethics: Prosecution that I co-authored with Mercedes Meyer is now available here! This edition adds a massive amount of new material to deal with the new PTO ethics rules and the fast-moving, roller coaster world of ethical issues in patent practice!
From the description:
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.
Makes a perfect Christmas present, too! Buy one for every lawyer in your firm! Heck, buy two so they have one at home!
[…] On December 1, 2014 David Hricik announced the third edition of Patent Ethics: Prosecution […]
Great, I buy the first edition than the second edition comes out. I buy the second edition and now a third edition comes out. Should I wait for a fourth edition? 🙂
“Makes a perfect Christmas present, too! Buy one for every lawyer in your firm! Heck, buy two so they have one at home!”
Sure is gratifying to see ethical advertising and self-promotion!!
Having practiced patent prosecution (and litigation) for over 45 years, all I can say is times have changed. Fifteen years with no experience of the fraud squad days and the change from being a “patent attorney” to an “intellectual property attorney” has altered the perspective of “ethics.” Once the litigation hounds took over the practice, real candor disappeared. Even the examiners are no longer intellectually honest, but honing to reactionary politics, rejecting even the most meritorious of applications on specious grounds lacking even common sense.
I have no reason to believe that the author has not thoughtfully studied this matter, but it does seem a bit off kilter to me that someone who is not registered to practice before the USPTO is providing advice to persons who actively engage in such practice and, unless brain dead, recognize the myriad of factual situations that can arise which have ethical implications.
Professor Hricik’s co-author has been registered for 15 years. Is that sufficient?
Not if they say this: “which distills the authors’ own experience and expertise in patent prosecution into effective practice strategies.” That statement implies both are registered to practice in front of the PTO. Or at least they both have “expertise in patent prosecution”, which is hard to get unless you’re registered to practice in front of the PTO.
The book may be perfectly fine, though.
Believe me, I often ask: “How did I get here?” (to quote David Byrne.) I’ve actually been an expert for the PTO, represented lawyers at the PTO OED, and been an expert for lawyers at the OED, served at the CAFC, and so on. If only I’d taken more science.
“If only I’d taken more science.”
It’s never too late. Just find some local uni that’ll get you what you need for it. It’ll be time well spent.
Perhaps it may be as to that one individual if that individual has engaged in a practice where such issues are presented with frequency, but as to the other I subscribe to the view that a firm grounding in all facets of prosecution is quite important if one wants to provide truly value-added advice. While not a particularly good analogy, imagine attempting to provide value-added legal advice for a complex technology transaction (e.g., a research and development agreement, to be followed by an international, shared production agreement) in a high tech industry where the advisor is not intimately familiar with what the agreement actually entails at a “boots on the ground” level.
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