Subject Matter Conflicts of Interest in Patent Prosecution – Training Your Team

by Buchalter

This article series is focusing on subject matter conflict of interest issues that are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts of interest. This type of additional conflict search is not related to the inventors, assignee or research team, but is directly related to the patent application disclosure.

The first article introduced the topic and discussed generally why it is an important consideration. The second article reviewed in depth a recent case brought by a former client against a firm that involved this type of conflict, how it developed and the complications that exist in this area of conflicts. The next two articles followed by discussing how to work the problem from both the law firm side and the inside counsel side. This article is going to focus on practical steps to train your team, and by “your team”, we are referring to both your company’s team (legal, technology, sales, management) and your outside legal team.

As mentioned in earlier articles, you must train your company-side team to recognize and document competitors and potential competitors, along with ensuring that information gets to you. The first step to this process is to train key members of management and employees as to why this is important, and it isn’t just about subject matter conflicts of interest.

As inside counsel, you should have an active list of companies and individuals who are or could be competitors. Under the America Invents Act, the United States Patent & Trademark Office (USPTO) established a post-grant opposition procedure. The European Patent Office already has one in place. A list of companies and individuals allows you to set up intellectual property and technology watches that alert you when they file trademarks, patent applications and put out press releases. However, it is important to move quickly under the patent post-grant opposition procedure, because you have to make a decision to pursue, gather the information you will need, and file the petition within a few months of allowance.

The sales team should receive regular training so that if they are at a trade show or online, and see something that appears to be competitive or they receive a report from a customer, they understand the importance and process for documenting that instance. Former employees should be added to this system, because they may start a competing business or assist their current employers in developing competing products; and therefore, human resources should receive training as well. This type of training, in general, will make your entire team better at helping the business.

Your company-side team should also be trained regarding interactions with outside counsel. As has been discussed in depth in earlier articles, providing information to outside counsel without first checking with the internal legal team should be avoided and training as to why that is an issue should be provided. This training is also ideal, because it can also provide information as to who is the client (the company) and who is not (the employees, etc).

The next question is who is going to design and provide the company-side training. Initially, it is appropriate to reach out to outside counsel to provide this training. Outside patent counsel is probably better able to develop presentations and accompanying materials, because this information benefits all of their corporate clients. Once the general training materials are developed and utilized, the company may decide to develop additional training materials on their own that are better suited to its specific business. 

A complete and two-way training program also involves your company-side team training outside counsel. Ideally, technical and sales teams should review their work with outside counsel quarterly. If outside counsel adds new attorneys to their patent team, those attorneys should be asked to participate in this training as well. This information will inform outside counsel as to how your business operates, how your products or services are advertised, sold and protected. It will also help outside counsel spot issues that might be relevant to your company, such as new initiatives by the USPTO, labor and employment issues, and legal developments with competitors or similar businesses that may be suitable for future training.

The final question is: How often should training take place? For some groups at the company, such as human resources and management, training may be appropriate once or twice a year. Other groups, such as the technical groups and sales team, should receive regular quarterly training. Written resources should be provided online or as a company intellectual property manual that is provided during hiring and returned to the company, if the employee leaves.

The final article in this series will summarize the information provided in this series, along with outlining a practical timeline for inside counsel to use when considering competitors, potential competitors and subject matter conflicts of interest.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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