By David Hricik
I’d normally only put this on the ethics page, but Dennis is on vacation and this issue pops up a lot in patent practice.
Suppose you get a call from a third party about a matter you’re handling for a client. She tells you that she had written a blog post about a prior dispute she had had with your client, which your client had paid to settle. Per your request, she emails you a link to the blog post. You forward the link to a friend, saying nothing about it other than “this is interesting.”
Did you do anything wrong?
The information you forwarded was not privileged: it came from a third party, so that doctrine doesn’t apply. But, lawyers’ obligation of confidentiality extends far beyond privileged information, to protecting “confidential” information. Whether information is “confidential” turns on applicable law, and in some states it includes even information that was publicly available when the lawyer was representing the client. Generally, confidential information must be kept confidential if revealing it would be detrimental to the client, or former client, or the client had asked it not be revealed.
The California bar association has a proposed bar opinion that would make it clear that, while not privileged, even public information must be accorded protection as confidential information. The California bar has asked for comments, and you can do so here, and find the entire opinion.
Now think about patent practice. You learn about a piece of prior art while representing Client A. For whatever reason, it wasn’t pertinent to Client A’s application, so you didn’t disclose it. Patent issues. Matter ends.
Now you’re representing Client B in prosecution. You remember that piece of prior art, and if you disclose it in Client B’s case, it is more likely that Client B will get a patent that, let’s say, will aid it compete with former Client A. Can you? Must you?
There are a lot of ways this issue comes up in patent practice, and some states like this proposed California opinion take a counterintuitive view of what is confidential.
Be careful out there and be sure to think about whether the USPTO rules, or your state rules, would control on that question.
Regarding the patent hypothetical in this ethics post, consider also that the ABA states that: “On the other hand, simultaneous representation in unrelated matters of clients whose interests are only economically adverse, such as representation of competing economic enterprises in unrelated litigation, does not ordinarily constitute a conflict of interest and thus may not require consent of the respective clients.”
Also, that hypo states that client A is a former client – therefore, no duty of loyalty unless it’s substantially the same matter. The matter was not substantially the same here, and the art was not relevant to client A’s patent. So, no duty of loyalty issue.
Right, it’s not a substantially related matter — that’s why I made the hypo the way I did. But the duty of confidentiality, as interpreted by California and no doubt other states, would still find a violation if it would be detrimental to Client A or if Client A had said don’t disclose that prior art patent. So, there IS a limited duty of loyalty, if you want to call it that, which persists in this duty of confidentiality.
Yes, I know about the comment, and my hypo does implicate that, too, but it’s also not the issue this raises: detriment?
Thanks for your post David. The ABA Rule 1.6 seems to be much broader and goes beyond “detrimental” information. See e.g., Edward Feldman’s article, Be Careful What You Reveal, link to americanbar.org
Why does this feel like dancing through an oxymoron? At the moment the confidential becomes public, it’s just another fact one might know in due course. It’s not stalking to notice the flag waving, and salute.
That’s why I raised it: the rules are not intuitive. There’s a Texas (I think) case where a lawyer learns that a client had a DWI (or something) by looking at physical court records. Later he was adverse to that client in an unrelated matter. Court held he could not ethically use the information about the DWI.
Not intuitive stuff, this lawyer ethics!
Prior art is different than dirt on a client. The dirt on the client is something you found out while the client paid you. Moreover, I think your hypo goes to how particularized the prior art is to client B. If it was a statute you learned about then it is obviously part of your professional experience you must bring to bear. But, the right answer is probably that if you can help Client B with the claims without a conflict of interest, then the prior art is part of the environment and you have an obligation to tell Client B. (What if you helped Client A build a building and learned about a quake fault not on Client A’s land, but that would affect Client B’s building that is being built to compete with Client A. I think you have to tell them about the quake fault—if you can help with the building of Client B, then you can tell them about the quake fault.)
>Now you’re representing Client B in prosecution. You remember that >piece of prior art, and if you disclose it in Client B’s case, it is more likely >that Client B will get a patent that, let’s say, will aid it compete with >former Client A. Can you? Must you?
So again public is probably not the dispositive issue, but whether or not the fact is particularized to the former client or not.
(That needs a lot of editing.)
I think it’s essential to read the California bar’s proposed advisory opinion to understand the context here:
Proposed Formal Opinion Interim No. 13 0005 considers: What duties does a lawyer owe to current and former clients to refrain from disclosing potentially embarrassing or detrimental information about the client, including publicly available information the lawyer learned during the course of his representation or relating to the representation
It seems to me the “duty” is always going to depend on the details about the “embarassing” information and how those details affect/affected the attorneys relationship with the client. For instance, what “duty” is owed to the former client if the “embarassing information” is that the former client was fired because the former client never paid for the services rendered?
The opinion digest states: A lawyer may not disclose his client’s secrets, which include not only confidential information communicated by the client to the lawyer, but also publicly available information that the lawyer obtained during or related to the professional relationship which the client has requested to be kept secret or the disclosure of which might be embarrassing or detrimental to the client. Even after termination of the attorney-client relationship, the lawyer may not disclose potentially embarrassing or detrimental information about the former client if that information is related to or was acquired by virtue of the lawyer’s prior representation.
The communication of publically known and relevant prior art to the PTO would seem very unlikely to qualify as “embarassing or detrimental information about the former client”. It’s a possible scenario but exceedingly rare, I think.
Absent some other bona fide conflict of interest (<-key), a promise to a client to keep publically available information “secret” (whatever that term is supposed to mean in the context of the opinion digest) would seem likely to create bigger ethical issues for the attorney than the “disclosure” of such information in the course of competently representing another client.
I thought you were on vacation.
Is it any surprise that Malcolm hews to the denigration side of “embarrassing about” instead of the strategic side of “detrimental about”….?
He is just obsessed with the wrong things.
Clearly (to those actually interested and concerned with clients in a business sense), “detrimental about” carries the sense of business detriment.
But that would mean that “g-g-grifting” is good, that in the words of Gordon Gecco, greed is good.
The liberal-weenie just does not have that understanding in himself.
I think we all could come up with examples where “public” but otherwise poorly dispersed information about a client that was learned in the course of representating that client should not be carelessly communicated by that attorney to a second client for that second client’s benefit.
But, as a general matter, I don’t think that the disclosure of relevant published prior art to the PTO is going to fall into that category of improper information sharing. Smart people hire patent attorneys because of their knowledge of the relevant art.
You are free to hew to whatever position on this topic that you like, of course. Go crrrrrrazzy!
MM’s comment is spot on here. Confidential is independent of embarrassing information. Each disclosure should be separately analyzed. Also, I’m not sure I follow how disclosing in patent B could improve issuance. You may have a duty to disclose that may reduce ability to attack the issued patent.
I agree this is all fact dependent. But my point is you better think about it, to quote, I think, Aretha Franklin.
… it is more likely that Client B will get a patent that, let’s say, will aid it compete with former Client A.
Isn’t that a problem regardless of the details about the reference, etc.? I thought my patent attorney can’t just drop me as a client and start working for my competitor. In particular, if my patent is still in force and is very much relevant to my business, and at the same time my former patent attorney is actively working on my competitor’s patents on the same technology area without my permission, then that sounds very ethically problematic to me.
It depends on the particular facts at issue. The attorney has separate duties of confidentiality and loyalty. The duty to maintain confidential information as confidential survives termination of representation. Absent some breach of that duty, the duty of loyalty does not survive termination, and that attorney need not be loyal to the original client (again assuming that there is no cross over of confidential information that could provide an advantage to the second client).
I dunno’ . . . I think you’d be on awfully thin ice trying to distinguish a duty of confidentiality from a duty of loyalty. How does one abrogate loyalty w/out abrogating confidentiality?
The pesky issue here is writing patent applications for new clients that could be used to compete with current or former clients. Most lawyers, out of a sense of efficiency, are going to at least consult their prior work-product. That’s part of what being an experienced lawyer is all about.
And when you throw in the collective work-product of the other 50 lawyers in the firm, I can guarantee you that many patent lawyers are stomping all over these ethical lines every day.
The key consideration here is current vs. former client with regards to the duty of loyalty. See also the ABA’s comment above in “5”.
If your are representing two clients where the same reference is potentially relevant, you already have a conflict of interest and should cease representation of the second client.
That’s such an obvious conflict of interest, wTF man. You should cese all representation of everybody.
Dan, everyone?
If your are representing two clients where the same reference is potentially relevant, you already have a conflict of interest and should cease representation of the second client.
Seems like it would depend mightily on the reference and exactly what the two clients are doing.
MM, true. But one should error on the side of staying free from conflicts.
If one discloses a piece of prior art in one prosecution for one client but fails to disclose the same piece of prior art a second prosecution for a different client where in both cases the art is potentially relevant because of the subject matter of the application, then one has acknowledged publicly that one was aware of this prior art, with the only remaining questions being materiality, timing and intent to justify failure to disclose the one that case.
But certainly the disclosure of the prior art in the second prosecution is going to potentially get the first client in a heap of trouble.
Ned: certainly the disclosure of the prior art in the second prosecution is going to potentially get the first client in a heap of trouble.
Here’s the very commonplace example I’m thinking of where the potential for any trouble whatsoever is pretty much non-existent: clients A and B are both developing treatments involving species within broad chemical genus Z to treat ailments. Client A is working solely on a treatment for colon cancer. Client B is working solely on a treatment for pancreatic inflammation. In both cases, a fundamental reference teaching the general utility of Z for treating diseases of internal organs is disclosed.
I don’t see an ethical problem with disclosure of the reference. Is there a conflict of interest for representation of both conflicts? The potential for conflict is there, I suppose, but if both clients are informed of the potential and neither client objects then the attorney would seem to be in good shape (presuming that the attorney is otherwise keeping his/her nose clean).
What could present a problem is if one client tried to control what knowledge regarding public prior art the attorney was allowed to “share”. Another dilemna could present itself if one client wanted to present an argument about the prior art that wasn’t reconcilable with an argument that the second client wanted to make about the same art. But is that latter kind of dilemna a kind that falls under the rules of conduct that the bar is concerned with?
Correction: Is there a conflict of interest for representation of both clients?
I’ve gotta side with MM here again. It depends. There’s no shortcut for the analysis.
Ned, I avoided those facts. The patent was not relevant in the first case. You’re dealing with an easier case than I presented (or, maybe a harder one!)
And if you post too much on this website, what should happen? You should recuse yourself from having clients, since you’re not spending enough time to properly advance those clients’ interests?
PatentBob, its not the clients who complain, but the managing partner.
Ned,
Do you write off your blogging time as “client advocacy?”
PatentBob,
Ned has all but admitted that his posts here are done in service of his clients.
And that very much is a problem – this is supposed to be commenting of a personal nature ONLY.
This becomes a quite evident problem in that Ned refuses to engage fully (and in any meaningfully inte11ctually honest manner) in those dialogues for which the logical conclusion does not serve what he perceives as his client’s interests.
He would rather (and does) dissemble and throw the conversation into the weeds, or merely simply disappears and never answers the counter points (repeatedly) put on the table for discussion.
Instead, we are all subjected through an ad infinitum ad nauseum Merry Go Round of Ned’s “side” or “version” of law in his inimical Internet shout down style of monologues.
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