IP: Hidden Traps: Introduction to Subject Matter Conflicts in Patent Prosecution

by Buchalter
Contact

Part 1 of a 6 Part Series

Clearly, client-driven litigation and malpractice complaints against patent practitioners are not decreasing any time soon. During the investigation surrounding the suit or complaint, the actions or inactions of the patent practitioner are reviewed in detail and the practitioner subject to scrutiny. One area that appears ripe for concern is the review and addressing of conflicts of interest.

Attorneys who have been practicing for more than a day are familiar with the process of conflicts of interest searches. A new client comes into the office or firm, the attorney or conflicts team searches a client database for the name of the person or entity. If a potential conflict surfaces, the conflict must be cleared, waived or the client sent elsewhere. As law firms merge and attorneys move from firm to firm, conflict of interest searches become important considerations. Are companies doing all they can to ensure that outside counsel is properly handling conflicts of interest?

The issue is not only ensuring that the prospective patent clients don’t present conflicts with one another, but also ensuring that their patent applications don’t present conflicts. A subject matter conflict search is equally as important as an entity/individual conflict search. This type of additional search is not related to the inventors, assignee or research team but is directly related to the patent application disclosure. Ignoring these searches can create mountains of problems down the road ranging from allegations of inequitable conduct to patent invalidity.

This article introduces the problem of subject matter conflicts of interest in patent prosecution work. The five articles that follow in this series will discuss relevant case law, recent and important issues and practical methods to minimize this particular conflict.

Patent applications contain the disclosure of an invention and the related embodiments and examples of that invention. The key to each patent application is the claims. When a patent application is filed with the United States Patent & Trademark Office or a foreign patent office, an examiner reviews it, searches the subject matter and may issue an Office Action outlining any procedural issues and presenting rejections based on nonstatutory subject matter (such as software), lack of novelty or nonobviousness. Lack of novelty and nonobviouness rejections are usually based on one or more other patent applications, issued patents, journal articles or other public disclosures. The attorney representing the inventor or assignee must then successfully argue around those references, amend the claims or both, in order to advance the application to allowance.

As an example, you represent a large company and handle all of their patent applications related to shelf-stable cream cheese. A current or prospective client sends a patent disclosure to the firm that includes a novel shelf-stable fresh soup. While one may be related to dairy products and the other to something that may not contain dairy, is the process or ingredients that make them both shelf-stable the same or similar? Do you review the disclosure to determine whether it overlaps with Large Client’s patent applications? If another attorney at the firm gets the new disclosure, do you have a review process in place to make sure that the new disclosure is checked against current patent applications being handled by the firm? If you file the application on the shelf-stable fresh soup, do you run the risk of having patent applications or patents from the Large Client cited against your new client’s application?

When I work with clients who have recently lost inventors to other companies/competitors, the question always comes up: What can we do about the fact that he/she is using our trade secret information to help our competitor? The answer to that question is not simple. A chemist doesn’t know where he/she first learned how to maximize the yield of a particular compound during synthesis – it just becomes part of the bulk of his/her knowledge. The same can be said for patent practitioners. If you spend a great deal of time preparing food additive patent applications for Large Client, do you turn that knowledge off when you draft a food additive patent application for a new client? Do you pull your punches and not include language used to describe those materials in general when drafting the second application?  Do you include references to Large Client’s patents and patent applications in the background of the new application? If you do that, how do you walk the tightrope of distinguishing the subject matter of the new application over Large Client’s patents without disparaging Large Client’s patents? If the new client is a solo inventor, do you work harder to get Large Client’s patent applications allowed? I contend that although you believe you can effectively represent both entities – you shouldn’t.

A better question to ask in this type of situation is whether a firm representing competitors in patent or other types of matters can diligently prosecute patents for each. The firm may jump through every hoop and keep everything above board when handling both clients, but there will always be “the appearance of impropriety” when looking back on the matters. If you didn’t submit a reference through an information disclosure statement for one client, did you honestly believe that the reference wasn’t relevant or did you fail to submit it based on an attempt to protect the patent of the other client? If your client asks you to seek reexamination of a competitor’s patent, are you able to do so or do you have to explain to your client that you or your firm is handling the other patent? Regardless of your belief at the time that everything was handled correctly, a former client can certainly make a case for inequitable conduct or malpractice, based on the mere appearance of impropriety.

In a rapidly changing economy, in-house counsel may consider moving all work to one firm to simplify communications and billing; however, this decision should be carefully considered and homework should be done. Given the stakes that surround key innovations in certain fields, companies must be diligent in asking about subject matter conflicts of interest. The next three articles in this series will address some of the relevant case law in this field of conflicts and how to practically deal with these developments.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Buchalter | Attorney Advertising

Written by:

Buchalter
Contact
more
less

Buchalter on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.