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Author Topic: Can in-house counsel have another client independent of the company?  (Read 488 times)

Micro Entity

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Say I am in-house patent counsel for Company A (in California), writing patent applications, talking to inventors, providing strategy to outside counsel, etc.

Company or Individual B comes to me asking for help with writing patent applications, filing, and/or responding to OAs.

QUESTIONS (in view of PTO ethics and California ethics if possible)

1. Assuming there are no conflicts between A and B, can I do work for both A and B at the same time?

I couldn't find any definite answers to this, the closest being this Virginia ethics opinion about providing services to two related companies: vsb.org/docs/LEO-1838_080807 [dot] pdf. Based on this, I would say "yes" as long as I get A's consent. And probably I can't/shouldn't do B's work while on A's premises.

2. Can I use A's outside counsel (firm) to handle filing and reporting to B (or me)?

Not so sure about this.

Would love to get your thoughts on both issues. Thank you!
« Last Edit: 09-18-17 at 06:40 pm by Micro Entity »
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Tobmapsatonmi

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I'm just going to toss out some stuff an hopefully get the conversation started.

If as you say the given is there is no way for conflicts to arise, then from a PTO or CA Bar standpoint I don't see how it could be unethical.  But I don't know CA law.  Are you an agent or a lawyer?  Is there something specific to "In-House Counsel" from the CA Bar?  Do you have to obtain a special designation or some such? 

I seem to recall if I moved to CA, as a non-CA lawyer I'd have to get some sort of limited recognition to even work only for an in-house employer.  My state doesn't require this (we have many guys not barred in-state working as lawyers for my organization).

Let's assume none of the above presents an issue.  Can your employer just get mad and fire you for moonlighting?  Mine can, and part of what I agreed to when I signed on was not to moonlight in the same capacity as my work here.  But I'm in a right-to-work state, which among other things means my employer can can me for anything except for reasons related to protected classes. 

But CA has more liberal laws, more favorable to employees, that is.  Maybe yours cannot fire you for moonlighting as long as your performance there remains acceptable and (as you already mention) you only moonlight on your own time.

In the end, this has little if anything to do with IP law, and is mainly an employment law question.  Unfortunately, I don't know of any good employment law blogs.

As for question 2, I think it rises/falls with question 1.  IF everything under Q1 is hunkey dorey, I don't know why the same OSC firm can't handle prosecution for both, as long as you and they are careful to keep the files separated (e.g., don't be sending you info on B to your microentity@companyA.com work address).  That isn't to say the firm itself might not find some conflict between B and one of the firm's other clients, though.
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UVAgal4

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I have no idea but it sounds like a lot more potential trouble than it is worth, with a lot of possible ethics issues, conflicting time requirements, and so forth.
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Micro Entity

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I'm just going to toss out some stuff an hopefully get the conversation started.

If as you say the given is there is no way for conflicts to arise, then from a PTO or CA Bar standpoint I don't see how it could be unethical.  But I don't know CA law.  Are you an agent or a lawyer?  Is there something specific to "In-House Counsel" from the CA Bar?  Do you have to obtain a special designation or some such? 

I seem to recall if I moved to CA, as a non-CA lawyer I'd have to get some sort of limited recognition to even work only for an in-house employer.  My state doesn't require this (we have many guys not barred in-state working as lawyers for my organization).

Let's assume none of the above presents an issue.  Can your employer just get mad and fire you for moonlighting?  Mine can, and part of what I agreed to when I signed on was not to moonlight in the same capacity as my work here.  But I'm in a right-to-work state, which among other things means my employer can can me for anything except for reasons related to protected classes. 

But CA has more liberal laws, more favorable to employees, that is.  Maybe yours cannot fire you for moonlighting as long as your performance there remains acceptable and (as you already mention) you only moonlight on your own time.

In the end, this has little if anything to do with IP law, and is mainly an employment law question.  Unfortunately, I don't know of any good employment law blogs.

As for question 2, I think it rises/falls with question 1.  IF everything under Q1 is hunkey dorey, I don't know why the same OSC firm can't handle prosecution for both, as long as you and they are careful to keep the files separated (e.g., don't be sending you info on B to your microentity@companyA.com work address).  That isn't to say the firm itself might not find some conflict between B and one of the firm's other clients, though.

I am an attorney, just interviewed for an in-house patent counsel position. I actually brought this potential issue up with them, and since the line of work is so similar, while there may not be any legal ethics issues, they will probably have an issue with me doing work for someone else when I could be doing work for the company. So it's basically what you said about the moonlighting in the same capacity, albeit there doesn't seem to be any official policy on it.

But, I guess, who's going to police me on what I personally do on my time off at home on a Saturday night?

Thanks for outlining the potential issues!

I have no idea but it sounds like a lot more potential trouble than it is worth, with a lot of possible ethics issues, conflicting time requirements, and so forth.

I do think my FT job should come precedent to other one-off clients...
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fewyearsin

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Micro Entity:
"But, I guess, who's going to police me on what I personally do on my time off at home on a Saturday night?"

Well, no one will be actively policing you, but if your name shows up on a filing, dated while you were working for your employer, without the employer's knowledge of your moonlighting, you're pretty screwed. Your conflicts may inure to your employer, whether or not they are aware of them, and similarly your employer's conflicts may inure to you, whether or not you are aware of them.

If the job is full-time as a lawyer, I wouldn't expect or try to moonlight.  If the job is part-time, it is eminently reasonable that you would need to supplement your work and income, but it is also essential that you clear the work with both your primary and your potential secondary employers.  "Better to beg forgiveness" is not a good strategy when you could lose not just your job, but your license, as well as facing a big malpractice claim from either or both employers if a conflict does arise and/or either feels like they are not getting your full attention.
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