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.