Attorney Services Endorsement
Expansion of Covered Professional Services
In consideration of the premium for which this Insurance is written it is hereby understood and agreed that the definition of Professional Services contained in section V of the Policy is deleted in its entirety and replaced as follows:
" Professional Services " means the following services provided by an Assured on behalf of the Named Assured to others for a fee, unless acting as a volunteer or in an official pro bono capacity:
expert witness, but only with respect to the Assured's intellectual property knowledge and experience;
conducting patent searches;
rendering opinions regarding patentability;
preparing patent applications;
filing patent applications;
prosecuting patent applications before the United States Patent and Trademark Office;
conducting Ex Parte proceedings before the Patent Trial and Appeal Board;
performing Patent Cooperation Treaty filings;
performing liaison services with other patent attorneys and/or agents registered to practice outside the United States of America, where the liaison services relate to obtaining or maintaining patent protection, and/or filing patent related documents, in the country or jurisdiction where the other patent attorney or agent is registered to practice;
negotiating, drafting, conducting due diligence or recording patent assignments, patent licensing agreements or patent purchase agreements;
performing patent maintenance filings;
performing Non-Patent IP Work ;
negotiating and drafting Intellectual Property Documents ;
forming and maintaining private, closely held businesses for the Assured's intellectual property clients for the express purpose of maintaining a patent filed, negotiated, drafted, or worked on by the Assured ;
representation in Inter Partes dispute proceedings before the Patent Trial and Appeal Board; and
Patent Practitioner Trainer .
For purposes of this Insurance , the the definition of " Professional Services " does not include the rendering of any services in any other trade, business or profession, including without limitation, the rendition of professional legal services to others in an attorney-client relationship, with the exception of those services specifically defined as Professional Services herein.
For the purposes of this endorsement Section V. Definitions is amended to include:
" Intellectual Property Documents " includes but is not limited to nondisclosure/confidentiality, sponsored research, indemnification, hold harmless, and insurance clauses or agreements with respect to intellectual property, consulting agreements, intellectual property and dispute resolution clauses including consulting, work for hire, securitization, escrow, Uniform Commercial Code financing statements, and bankruptcy, trust, plant entry, site visit, partnership, membership, fiduciary, license, joint research and development, and joint development agreements.
" Non-Patent IP Work " means performing trade secret, trademark, trade dress, and copyright work, conducting Inter Partes and Ex Parte proceedings before the Trademark Trial and Appeal Board, drafting and negotiating consent, licensing, concurrent use, and settlement agreements, conducting and/or analyzing clearance searches, preparing, filing and prosecuting trademark applications and copyright registrations, rendering trademark and copyright related legal opinions, performing trademark maintenance filings, recording trademark and copyright title documents, or substantially similar services.
Infringement Exclusion
In consideration of the premium for which this Insurance is written it is hereby understood and agreed that the following exclusion is added at the end of section IV. EXCLUSIONS of this Policy :
to any Claim asserted on the basis that an allegedly erroneous opinion rendered by the Assured regarding the scope, validity or enforceability of an existing or pending patent, trademark or copyright resulted in damage, injury or loss to the owner of such patent, trademark or copyright. This exclusion shall not, however, apply to claims based upon an opinion rendered by the Assured to aid a client of the Assured in determining whether to proceed with the prosecution/registration of any patent, trademark or copyright.
Assured's Acknowledgment and Warranty
By receipt of this endorsement the Assured hereby acknowledges and warrants either: (1) the Assured's professional services rendered since the retroactive date of this Policy fall entirely within the scope of the above definition of Patent Practitioner ; or (2) the Assured maintains separate coverage for any professional services rendered outside of the Professional Services listed in the above definition.
Attorney Services Endorsement (05/17)

