Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[noobie]

I'm currently an agent at a big law.  I was wonderingif there would be any issues if I helped prosecute a PCT application in the US for a buddy who has a small high tech company (less than 10 people) in another country.  I would just merely do the paperwork without getting my firm involved and not receive any payment.  Would this constitute moonlighting and/or cause other ethical issues?

THanks in advance.

[bleedingpen]

It could get you fired.

[Sabachka]

Is there a personnel policy manual? If so, what does it say?

Why not ask your boss? What you do in your time is your business unless it creates a conflict with an existing client, reflects poorly on the firm's reputation, or compromises your ability to do your job. He or she may say yes.

[NJ Patent1]

Noobie:  Previous posts hit the first question:  Do you have an employment contract (unlikely) or does ur firm have a written policy of which you are aware and that is on point?  If the answer to both questions is no, so far so good.  The next question is, in what jurisdiction do you practice?  The rules of that jurisdiction should control (there is a potential conundrum here, but it is tangential to your post).  My guess is that RPC rules in most jurisdictions are similar to those in NY and NJ.  As a default position, every client of your biglaw employer is your client for conflict purposes.  Is there a non-waveable conflict?  IMO that's the first question. If yes, game over.  If no, then second question, is there a conflict but is it a waveable conflict?  If so, get a waiver from the firm's client.  See the problem developing? What will "the boss" say?  What happens if a patent owned by a client of the firm turns-up as prior art and you have to trash it?  Even if not a conflict per se, how would you feel if you found out that your attorney was trashing your (client's) patent?   A posible solution, explain the situation and ask if the firm will take the case pro bono.  Biglaw likes to tout their pro bono work.     

[NJ Patent1]

Noobie:  My apologies!!!  I overlooked that you are an agent, not an attorney.  You are not (but any supevising lawer is) subject to RPC of whatever jurisdiction you are in.  The Office rules rule you personally.  But in large part they mirror ABA model rules, so IMO my post above is largely, but not necessarily 100%, on point.  Sorry

[Isaac]

Ignoring any firm policy or ethics issues, if your moonlighting ends up conflicting you or the firm out of some work for somebody like Samsung, Siemens, or Coca-Cola in the future, your bosses are not going to be pleased with you.