CLE
Emil J. Ali
Emil J. Ali McCabe & Ali, LLP
Michael McCabe
Michael McCabe McCabe & Ali, LLP
Subject Matter Conflicts in Patent and Trademark Law How To Spot and Avoid Issues
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Premieres April 6, 1:00 PM ET/10:00 AM PT
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Subject Matter Conflicts in Patent and Trademark Law: How To Spot and Avoid Issues

This webinar will focus on specialized ethical issues facing IP lawyers, especially patent attorneys who are registered to practice in patent matters before the USPTO.

The presenters, registered patent attorneys who focus their practice on ethics for IP lawyers, will discuss topics including how to identify, analyze, and manage conflicts of interest unique to patent and trademark practice, with a particular emphasis on subject matter conflicts. The CLE will also discuss the applicability of the USPTO Rules of Professional Conduct, and their interplay with certain ABA Model Rules that cover conflicts.

Topics covered include:
Intellectual Property Legal Ethics
Agenda:
  • Intro and Basics of Conflicts

  • Why Do Conflicts Matter?
    • Sheppard, Mullin, Richter & Hampton, LLP v. J-M Manufacturing Company, Inc.

  • Major Types of Conflict
    • Current client conflicts
    • ABA M.R. 1.7(a)(1) / 37 CFR 11.107(a)(1)
    • ABA M.R. 1.7(a)(2) / 37 CFR 11.107(a)(2)
    • The bad news: Imputed liability ABA M.R.1.10 / 37 CFR 11.110
    • The good news: Potentially waivable ABA M.R. 1.7 (b) / 37 CFR 11.107(b)

  • Other Types of Current Client Conflicts
    • Business transaction with client
    • Third-party payment of client’s legal fees
    • Prospective limitations of liability to client
    • Prohibiting sexual relations with client unless pre-existing representation
    • ABA M.R. 1.8/ 37 CFR 11.108
    • The bad news: Imputed liability If one lawyer is conflicted, all lawyers in same firm conflicted (exception for sexual relations conflict) ABA M.R. 1.8(k) / 37 CFR 11.108(k)
    • The good news: Most other conflicts waivable ABA M.R. 1.8(a) / 37 CFR 11.108(a)

  • Former Client Conflicts
    • ABA M.R. 1.9 / 37 CFR 11.109

  • What Is a Subject Matter Conflict?
    • Maling v Finnegan, 473 Mass. 336 (2015).
    • Analogy to Curtis v. Radio Representatives, Inc. (D.D.C. 1988)
    • Sentinel Prods. Corp. v. Platt (D. Mass. 2002).
    • No malpractice due to lack of proof of damages
    • Potentially “actionable” by a Bar complaint — damages not required.
    • USPTO/OED expects IP firms to check for subject matter conflicts.
    • USPTO/OED expands rationale of Maling to trademark representation.
    • AXCESS INT’L V. BAKER BOTTS LLP 2016 Tex App. LEXIS 3081

  • Subject Matter Conflicts – Discipline
    • IN RE LINDEN (USPTO D2022-10)
    • 37 CFR § 11.104- Failing to inform or communicate with a client about important decisions.
    • 37 CFR § 11.107- Representing clients with directly adverse interest without consent.
    • 37 CFR § 11.109- Representing new client in substantially related matter adverse to former client.
    • 37 CFR § 11.116- Continuing representation that violates ethics rules.

  • Final Thoughts
    • Economic competition is not automatically a conflict of interest. ABA M.R. 1.7, cmt. 6.
    • Claiming around another client is likely a conflict.
    • When should a practitioner realize that an Examiner is likely to cite another patent or trademark (whether pending, published, or granted)?
    • Use client engagement agreement
    • Obtain consents to conflicts (if waivers are advance waivers, work with counsel to ensure they are compliant)
    • Talk to clients about clients/tech they consider to pose a “subject matter” conflict for them
    • Look to outside counsel guidelines
    • Adopt system for identifying patent and trademark subject

  • Q&A (As Time Permits)
Read More ›
Duration of this webinar: 60 minutes
When: Premieres in 21 days | April 6, 2026 10:00 AM PT
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Speakers
Emil J. Ali
Emil J. Ali Partner
McCabe & Ali, LLP

Emil J. Ali is a partner at McCabe & Ali, LLP where he focuses his practice on helping lawyers understand their obligations under state and federal law. As a registered patent attorney, a significant focus of his practice involves advising lawyers and law firms on all aspects of the intersection of IP and ethics matters. Emil’s work includes counseling clients on lateral transitions, malpractice avoidance, expert opinion and testimony, and respondent’s defense work before various bars and courts. You can view his musings on IP ethics issues at www.ipethicslaw.com.

Michael McCabe
Michael McCabe Managing Partner
McCabe & Ali, LLP

Michael McCabe. is the Managing Partner of McCabe Ali LLP, with offices in Washington, D.C. and Los Angeles. Michael has practiced IP law for over 32 years and is a registered patent attorney. Michael’s practice focuses on the intersection of IP and ethics. He has represented hundreds of patent, trademark and intellectual property practitioners in federal ethics investigations, sanctions issues, disciplinary trials, and other professional misconduct matters before the USPTO and various state bars. Michael regularly consults with lawyers and law firm management on risk management, ethics compliance, and internal investigations. He also serves as a consulting or testifying expert witness on professional conduct and malpractice issues before state and federal tribunals. Michael is the immediate past Chair of the ABA IP Section’s Professional Issues Division and a faculty member of the Virginia State Bar mandatory Ethics and Professionalism Course for new bar members. Read More ›

Continuing Legal Education (CLE) Credits

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Alabama CLE

Status: Approved

Credits: 1.00 Ethics

Alaska CLE

Status: Approved

Credits: 1.00 Ethics

California CLE

Status: Approved

Credits: 1.00 Legal Ethics

Hawaii CLE

Status: Approved

Credits: 1.00 Ethics

Illinois CLE

Status: Approved

Credits: 1.00 Professional Responsibility

Louisiana CLE

Status: Approved

Credits: 1.00 Legal Ethics

Maine CLE

Status: Approved

Credits: 1.00 Ethics and Professionalism

Missouri CLE

Status: Approved

Credits: 1.20 Ethics

Nebraska CLE

Status: Approved

Credits: 1.00 Professional Responsibility

Nevada CLE

Status: Approved

Credits: 1.00 Ethics and Professional Conduct

New Jersey CLE

Status: Approved

Credits: 1.20 Ethics/Professionalism

North Carolina CLE

Status: Approved

Credits: 1.00 Ethics

Ohio CLE

Status: Approved

Credits: 1.00 Attorney Professional Conduct

Pennsylvania CLE

Status: Approved

Credits: 1.00 Ethics, Professionalism, or Substance Abuse

Rhode Island CLE

Status: Approved

Credits: 1.00 Legal Ethics

South Carolina CLE

Status: Approved

Credits: 1.00 Legal Ethics/Professional Responsibility

Difficulty: All Levels

Texas CLE

Status: Approved

Credits: 1.00 Legal Ethics/Professional Responsibility

Utah CLE

Status: Approved

Credits: 1.00 Ethics

Vermont CLE

Status: Approved

Credits: 1.00 Ethics

West Virginia CLE

Status: Approved

Credits: 1.20 Legal Ethics, etc.


This presentation is approved for one hour of Ethics CLE credit in Alabama, one hour of Ethics CLE credit in Alaska, one hour of Legal Ethics CLE credit in California, one hour of Ethics CLE credit in Hawaii, one hour of Professional Responsibility CLE credit in Illinois, one hour of Legal Ethics CLE credit in Louisiana, one hour of Ethics and Professionalism CLE credit in Maine, one hour of Ethics CLE credit in Missouri, one hour of Professional Responsibility CLE credit in Nebraska, one hour of Ethics and Professional Conduct CLE credit in Nevada, one hour of Ethics CLE credit in North Carolina, one hour of Attorney Professional Conduct CLE credit in Ohio, one hour of Ethics, Professionalism, or Substance Abuse CLE credit in Pennsylvania, one hour of Legal Ethics CLE credit in Rhode Island, one hour of Legal Ethics/Professional Responsibility CLE credit in South Carolina (all levels), one hour of Ethics CLE credit in Utah, one hour of Ethics CLE credit in Vermont, and one hour of Legal Ethics, etc. CLE credit in West Virginia. This program has been approved by the Board on Continuing Legal Education of the Supreme Court of New Jersey for 1.20 hours of total CLE credit. Of these, 1.20 qualify as total hours of credit for Ethics/Professionalism. This course has been approved for Minimum Continuing Legal Education credit by the State Bar of Texas Committee on MCLE in the amount of 1.00 credit hours, of which 1.00 credit hours will apply to Legal Ethics/Professional Responsibility credit.

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