A lawyer practicing in any field of law—family law, personal injury, etc.—must be cognizant of potential conflicts of interest. Conflicts of interest can arise in many cases, but one of the most common cases is where a current client has an interest that conflicts with another current client or a previous client.
For instance, a family law practice cannot represent both the husband and wife in a divorce trial. It might be kind of funny to watch the attorneys run from one desk to the other, objection to their own questions, and so forth. However, the judge would not allow this to happen because the husband and wife have competing interests in the outcome of the trial. This generally isn’t a serious issue, as there is a wealth of legal firms practicing in major law fields.
However, patent law is a much smaller world, patent lawyers tend to hyper specialize, and clients want attorneys who are really experienced in their particular technology. Those factors create a much greater opportunity for a patent lawyer to already be representing a client whose interests are counter to your own. For instance, if there’s potential overlap between claims in your patent application, and those of another inventor who has already retained a lawyer you’re considering, that’s a problem. Courts view this sort of conflict in the terms of a ‘finite pie’ in a given conceptual space. If two clients’ patent claims overlap in a competitive manner, known as a ‘subject matter conflict,’ a single lawyer or firm can’t represent both.
In what circumstances does a patent attorney face a potential conflict of interest when representing your patent case? Let’s look at the most common forms of conflict of interest and see what the law has to say.
If an attorney represented a previous client whose invention would anticipate a future client’s invention then a conflict of interest exists.
Anticipation occurs when all of the features of an invention are found in a previous invention. When a new client comes into an attorney’s office with a desire to patent an invention and the attorney has previously represented a client whose invention has all the features of the new client’s invention then the previous client has a conflict of interest with a new client. That is, only one person can patent that particular invention. Just like the husband and wife situation above, only one person can get the patent and the attorney cannot be running from table to table.
Let’s say the attorney in the situation above is too clever by half and tries to get one inventor in the scenario above to patent only part of the invention and the other inventor to patent another part of the invention. Now everyone gets a patent and everyone is happy. This is known as ‘claim shaving.’ This is where the attorney narrows the claims of one client in order to “make room” for the other and avoid a conflict of interest. Obviously, this creates a conflict of interest, and is a very serious breach of ethics and can result in the lawyer being sued for adverse representation.
The middle ground scenario avoided judicial review for a long time and patent attorneys were practically divided on how to handle it. Same two clients above, but now the inventions are slightly different. Let’s say they are beach balls. One has panels that are joined with a new plastic and the other has a new air valve. Both clients think they have invented “the beach ball” which neither has – they just made some improvements to an existing beach ball. Is it claim shaving to base a conflict of interest evaluation on what is the actual patentable invention in reality or does the attorney need to consider the hypothetical patentable invention in the inventor’s mind? This was the exact situation in Maling v. Finnegan and patent attorneys call this a ‘Maling conflict.’
The Supreme Judicial Court of Massachusetts said there is no claim shaving (and thus no conflict of interest) to encourage the inventor to patent the actual invention. Even if two inventors incorrectly think that they patented something larger, the measuring stick is the actual patentable invention, not the one in the inventor’s eye.
The same applies for competing products which don’t have overlapping claims. If an attorney has two clients that are applying for patents on dissimilar coffeemaker designs, this is not a conflict of interest. Even if the two products are competing for market share, conflict only arises if claims overlap.
The other instance in which a conflict of interest can arise is if a lawyer is obligated to disclose a prior client’s confidential information to a new client.
A potential confidentiality conflict arises if a patent lawyer has conflicting obligations to a previous client and a current client. Suppose that a lawyer has assisted an inventor with the drafting of a patent application that hasn’t yet been submitted. When working with a new client, the lawyer realizes that the previous client’s invention would be a prior art reference for the new client’s invention, under 35 U.S.C. 102.
According to established ethical guidelines, the lawyer would be obligated to not disclose information regarding the prior client’s work to the new client, even if this information could be tracked down in public domain sources. But if the new client were then to file an application with broad claims intersecting with those of the first client’s, the lawyer would be required to disclose the prior art reference in an information disclosure sheet. This is because, according to 37 C.F.R. 1.56, all prior art references with a material impact on the patentability of an invention must be disclosed.
This creates an ethical conflict—one code of ethics saying the prior art must be disclosed, the other saying it mustn’t. At this point, the attorney must ‘conflict out’ the new client—that is, cease representation of the new client and walk away.
All in all, true conflicts of interest are relatively rare. Where you’re most likely to run into a problem is if you contract with a large patent law firm which represents corporations with very large patent portfolios that the firm advocates on behalf of. Working with independent patent attorneys or small firms is likely sufficient to avoid running into this problem.