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[Yak]

I am a little confused on what would constitute a conflict of interest related to patent prosecution. 

Say for instance, Client A has an invention for Invention X comprising features ABCD which is useful for performing function Z.  Lawyer represents Client A and prepares and files a patent application for Invention X.

Some time later, Client B approaches Lawyer with Invention Y comprising features ABEF which is also useful for performing function Z.  Lawyer does not feel that Invention X would necessarily prevent allowance of Invention Y.

Would preparing and prosecuting an application for Client B raise any potential conflicts?  If so, how would Lawyer address these issues?

[JimIvey]

That's a tough issue.  Since both are applicable to Z, it's possible that their technologies might converge and you might find yourself writing a threatening letter to yourself with veiled threats of patent litigation. 

I've had my work for one client cited against another client (and have cited my prior work for other clients in IDSes).  I don't think that's the test.  Once you've written an application for ABCD, that can be cited for any technology that includes A, B, C, or D.

On the other side of the fuzzy line here is the possibility that you might find yourself tempted to write a claim for one client in such a manner that avoids or ensures infringement by another client.  Your inside knowledge of one client should never affect your work for another client.  So, if you have to determine whether to have a dependent claim for Client B to cover ABEF+CD, you really shouldn't be in that position.  Even trashing one client's approach in the Background section should make you feel a bit uncomfortable, though you often have to do that for improvement innovations for a given client, trashing (politely) their earlier work.

Lastly, even if there's no conflict now, what happens when Client A says the following?  "Hey, we have a totally new approach that we've been working on.  We're dropping the ABCD approach and have this great new approach based on ABEF."  I've seen these sea changes in a client's technology and have at least once been worried that it was approaching the work of another client (but it turned out not to be true).  Of course, some of those sea changes are completely unpredictable and you just have to deal with it.  However, the closer the technology between clients, the more likely a change in direction of one or both will give rise to a conflict you'd have to deal with.

Sorry I couldn't draw a brighter line.  I hope that helps.

Regards.

[Yak]

Thanks Jim.  Your examples help.  I guess every situation is different.

I'm having a tough time even trying to determine exactly when a potential prosecution conflict would actually arise to the level of conflict.   

Is there anything the practitioner needs to do related to informing Client A or Client B about a potential conflict? 

[Isaac]

I've had my work for one client cited against another client (and have cited my prior work for other clients in IDSes).

One awkward situation that can come up is having information provided to you in confidence by one client that should be filed in an IDS for the other client.

[ChrisWhewell]

I am a little confused on what would constitute a conflict of interest related to patent prosecution. 

Say for instance, Client A has an invention for Invention X comprising features ABCD which is useful for performing function Z.  Lawyer represents Client A and prepares and files a patent application for Invention X.

Some time later, Client B approaches Lawyer with Invention Y comprising features ABEF which is also useful for performing function Z.  Lawyer does not feel that Invention X would necessarily prevent allowance of Invention Y.

Would preparing and prosecuting an application for Client B raise any potential conflicts?  If so, how would Lawyer address these issues?

I prefer to err on the safe side and would likely refer B to someone else, since A,B 's inventions appear to compete in achieving the same result.

One alternative would be to approach A and inform them of B and your desire to take them on.  If I were A I'd probably not consent but if A does consent, and you're able to get B's consent also, you might be ok - but check the canons of practice before making any final decision.  They contain a section on conflicts.

[JimIvey]

Thanks Jim.  Your examples help.  I guess every situation is different.

Yep.  Very much so.

I'm having a tough time even trying to determine exactly when a potential prosecution conflict would actually arise to the level of conflict.   

While I don't agree with this particular view, I've heard it argued that -- since all prosecution short of interference and inter-partes re-examination is ex-parte -- there are no directly adverse interests and therefor no risk of conflicts.  I don't believe that is correct, but it gives some comfort in being more reasonable.

Is there anything the practitioner needs to do related to informing Client A or Client B about a potential conflict? 

Well, one way to resolve the above question is to just ask for mutual, informed, written consent from both parties.  I've had clients that I thought could be direct competitors tell me that they're in significantly different technology spaces -- e.g., vertically related, not horizontally.  In fact, that discussion helps me understand their technology and market better, improving my work.

Regards.

[Yak]

I'm having a tough time even trying to determine exactly when a potential prosecution conflict would actually arise to the level of conflict.   

While I don't agree with this particular view, I've heard it argued that -- since all prosecution short of interference and inter-partes re-examination is ex-parte -- there are no directly adverse interests and therefor no risk of conflicts.  I don't believe that is correct, but it gives some comfort in being more reasonable.

Interesting, so you feel that the conflict is present once Client B approaches you regarding Invention Y?  I found an old thread on a legal ethics forum from back in '06 started by David Hricik (an apparent patent ethics guru).  It looked liked some of this forum's contributors posted. There didn't really seem to be any clear line, but many of the posters felt that the mere prosecution wasn't per se conflict; due to the, as you pointed out, ex parte nature of prosecution.  It seemed the line gets fuzzier when a reference is used against the application which Lawyer also prosecuted.
 

Is there anything the practitioner needs to do related to informing Client A or Client B about a potential conflict? 

Well, one way to resolve the above question is to just ask for mutual, informed, written consent from both parties.  I've had clients that I thought could be direct competitors tell me that they're in significantly different technology spaces -- e.g., vertically related, not horizontally.  In fact, that discussion helps me understand their technology and market better, improving my work.

How much information can you provide to either Client A or Client B so that are fully "informed" without divulging confidential information you have about either Invention X or Y?  Is the informed consent based more on the fact that the two inventions are in the same tech area and could potentially be competing products either to potential licensees or to consumers? 

Is Lawyer's knowledge about marketing and commercialization efforts made by Client A regarding Invention X which would be public disclosure and potentially relevant information in prosecuting Invention Y have any impact on Lawyer's duty to disclose to PTO?  Or information regarding the pending (non-pub) application?

[JimIvey]

How much information can you provide to either Client A or Client B so that are fully "informed" without divulging confidential information you have about either Invention X or Y? 

My standard agreement letter makes it clear that I am allowed to publicly disclose that the client is a client of mine.  In other words, I'm allowed (in most relationships) to at least identify my clients as such.

So, when talking with Client B about potential new work, I can say, "Have you heard of Client A?  Do you know of their work?  How is that related to your work?"  My clients tend to know of one another -- small startups but well informed of their industry.

From there, I might decide that I won't go any further.  Or, if it seems completely different (it usually is), I don't see a conflict.  Sometimes, it's close enough that I can ask similar questions of Client A and then inquire as to whether mutual consent is possible.

In practice, it's really not a problem.

Regards.