Conference Report: UIC Law 12th Annual Ethics in the Practice of IP Law Seminar

In early June, the University of Illinois Chicago School of Law’s Center for Intellectual Property, Information, and Privacy Law organized and hosted its 12th Annual Ethics in the Practice of IP Law virtual seminar.  Over to Adam Ernette (IP Law Fellow) for a report of the session:  


"The Ethics in the Practice of IP Law seminar series is designed to address ethics and professionalism issues targeted at IP lawyers. These include ethical issues that arise in daily practice, insights to help them handle these issues and issues related to diversity and inclusion.

IPWatchdog founder Gene Quinn and John White, both well-known instructors of the Practicing Law Institute’s patent bar review course, provided a primer on ethics while practicing before the PTO. They also discussed common pitfalls and new developments to look out for, such as final changes to representation (effective June 25, 2021), PTO practitioner fees and CLE, and notification of address changes both on all active cases and to the OED.

Gene shared two anecdotes concerning the need to keep OED aware of a change of address. First, Gene noted there had been entire firms that have been suspended because the firm did not keep the OED apprised of its move.

On a more personal note, Gene highlighted his own experience with failing to file a change of address with the OED and only became aware of this omission when a colleague mentioned to him that he had seen Gene was suspended from practicing before the PTO. While the issue was fixed by paying a small fee, it is a good idea to avoid the embarrassment of being suspended from practicing even temporarily.

Gene and John then joined in on a panel discussion moderated by Alex Menchaca (McAndrews, Held & Malloy Ltd.). The panel addressed ethics issues arising in daily practice and best practices for preempting and addressing those issues. These issues included: (1) attorney advertising; (2) tips and tricks on client intake; (3) “conflict creep”; (4) a client’s conflict footprint compared to the amount of work given; and (5) tips on getting paid for the attorney’s work while project billing. The other panel members were Emil Ali (McCabe & Ali LLP), Richard Beem (Beem Patent Law Firm), and Eldora Ellison (Sterne Kessler Goldstein & Fox).

One question arose concerning the client intake process. Specifically, panelists appeared facially at odds with the type and extent of information they sought from prospective clients about the invention. While all panelists agreed it is good practice to avoid gathering confidential information, they also acknowledged it was possible to receive confidential information in the form of information related to the invention itself. The key, according to Gene, is to obtain enough information to know the lane you are in while not getting too much.

Despite these concerns at the client screening and intake stages, the panel highlighted the importance of keeping an eye out for potential conflicts throughout the representation. For example, an attorney may engage a client with the initial understanding the technology is related to browser functionality only to realize later on that it is instead related to search, which could raise a conflict between existing clients that was not previously recognized. The panel discussed methods for resolving these conflicts where possible, emphasizing transparency.

The Seminar also discussed implicit bias in the practice of IP. This panel, moderated by Esther Lim (Finnegan, Henderson, Farabow, Garrett & Dunner LLP), focused on methods and strategies for capturing and maintaining the diverse talent within the IP profession. In addition, the panel discussed the problems related to the slow creep of implicit bias in small moments. The general theme was that to best address implicit bias, the message must always be to celebrate our differences, never to stop pushing for education and understanding, and there are “other people in our community that we want to care about.”

The other panel's members were Terrica Carrington (Copyright Alliance), Michelle Brooks Martinez (eBay), Daniel Saeedi (Taft Stettinius & Hollister LLP), and Valencia Martin Wallace (U.S. Patent and Trademark Office)

The panel also discussed methods of improving diversity not only in the hiring of diverse attorneys but in their retention as well. Specifically, the panelists highlighted stories of successful integration of the Mansfield Rule into firm committees, mentoring programs, and breaking barriers to entry for lack of pertinent information through programs like the USPTO’s partnership with Girl Scouts USA to provide the IP patch.

Finally, the panel addressed Dr. Seuss Enterprises’s recent decision to stop printing six children’s books due to racist imagery and discussed competing methods for handling these issues. Ultimately, the preferred method is similar to Turner Classic Movies’ TCM’s Reframed: Classics in the Rearview Mirror programming or HBO Max’s contextualization of ‘Gone With the Wind.’

The program for the Seminar can be found here.

Future events hosted by UIC Law Center for Intellectual Property, Information & Privacy Law:

For more information, please contact Adam Ernette ("

Conference Report: UIC Law 12th Annual Ethics in the Practice of IP Law Seminar Conference Report: UIC Law 12th Annual Ethics in the Practice of IP Law Seminar Reviewed by Annsley Merelle Ward on Wednesday, July 14, 2021 Rating: 5

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