Conflicts of Interest — Subject Matter Conflicts — Can IP Attorneys Simultaneously Represent Two Clients That Are Prosecuting Patents for Similar Inventions? -

Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 473 Mass. 336, 42 N.E.3d 199 (2015) -

Risk Management Issue: What constitutes an adequate conflicts check where two clients may be pursuing intellectual property in similar inventions (sometimes referred to as a "subject matter conflict")?

The Case: The Massachusetts Supreme Court considered claims by an inventor against his attorneys for legal malpractice and breach of fiduciary duty for simultaneously representing a competing company in prosecuting a patent for a similar invention without informing him or obtaining his consent to the concurrent representation.

Plaintiff Chris Marling retained lawyers in the Boston, office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to represent him in obtaining a patent for a new screwless eyeglass frame. After the Firm obtained the patent, Marling learned that lawyers in the firm's Washington, D.C. office had simultaneously represented a competitor, Masunaga Optical Manufacturing Co., Ltd., in the prosecution of a patent in connection with screwless eyeglass technology.