Closing the loop of subject matter conflicts of interest in patent prosecution

Several steps you can take to make this process more efficient and streamlined

This article series is focusing on subject matter conflict of interest issues 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. The last article described 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. This final article will outline a practical timeline for inside counsel to use when considering competitors, potential competitors and subject matter conflicts of interest.

Contributing Author

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Sandra P. Thompson

Sandra P. Thompson, J.D., Ph.D., is a Shareholder in the Orange County office of Buchalter Nemer. Her practice focuses on intellectual property, specifically, patents and...

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