Intellectual Property Audits: Conflicts and Ethical Issues

October 31, 2002

Introduction

Although companies may understand the importance of protecting their original ideas, many of them do not know how to do so most effectively.  Without an effective intellectual property management system, such companies may be squandering business opportunities and allowing competitors to misappropriate their intangible assets.  An intellectual property (IP) audit is a necessary first step for all companies interested in evaluating and maximizing their IP assets. 

This paper will (i) define; (ii) emphasize the importance of; and (iii) describe the necessary components of a thorough IP audit, and then will analyze several examples of ethical and conflict issues that may arise during an IP audit.  The ethical and conflict issues will be analyzed from the perspective of an IP attorney, under the presumption that the IP attorney is a patent attorney registered to practice before the United States Patent and Trademark Office (USPTO).  Because of  this presumption, the IP attorney will be subject to both the USPTO Code of Professional Responsibility (“USPTO Code”) which is codified as 37 C.F.R. Section 10 and the ABA Model Rules of Professional Conduct (“Model Rules”), some form of which has been adopted by almost every state.

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