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Heather Repicky quoted extensively on amicus brief drafted on behalf of BPLA

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09.01.2015

Heather B. Repicky, a partner the firm’s Intellectual Property Litigation group, was quoted by Law360 and The Recorder regarding an amicus brief she drafted on behalf of the Boston Patent Law Association (BPLA). The articles discuss a Massachusetts case that could upset the conflict of interest rules that cover patent prosecution. The case, which goes before the Massachusetts Supreme Judicial Court on September 8, involves the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner and a former client, Christopher Maling, who is suing for malpractice. Maling says Finnegan represented him before the U.S. Patent and Trademark Office for six years without disclosing it also was working with a larger competitor on a similar patent. Finnegan obtained patents for both clients, however Maling says his was rendered useless by the competitor's patent, and that Finnegan should have warned him before he invested "several million dollars" developing his invention. Under a rule proposed by Maling, law firms would be forced to choose a single client for patent prosecution in a given technological field.

The Massachusetts Supreme Judicial Court issued a request for amicus briefs last fall on whether simultaneously prosecuting patents on "similar inventions," without first obtaining client consent, violates state ethics rules. Heather, writing on behalf of the Boston Patent Law Association (BPLA) as counsel for amicus curiae, cautioned that a rule restricting firms to one client per technology field could choke off access to specialized counsel. "There are only so many patent attorneys with, for example, Ph.D's in molecular biology," she noted. She points out that savvy patent clients could potentially monopolize the marketplace for lawyers who do have specific technological expertise by strategically sending small amounts of prosecution work to each firm.

Heather acknowledges in a footnote of the amicus brief that the BPLA has its own potential conflict as some of its 900 members practice at Finnegan Henderson. However, she writes that the brief represents "the consensus view of the BPLA," and no party or its counsel took part in the brief.

To read The Recorder article, click here.

To read the Law360 article, click here.

To read the BPLA amicus brief, click here.

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