New ABA Opinion of Particular Interest

A lawyer may be adverse to a former client, but not in the same matter in which she represented the client, or in one which is “substantially related” to the representation of the former client.  Generally, this requires determining whether it is reasonably likely that in the representation, the lawyer likely learned confidential information that likely can be used against the former client now.

One part of that analysis can require determining what information “counts.”  This varies by jurisdiction: some, for example, do not include information known to the new client, or “playbook” information (e.g., how a client approaches IPRs), and so on.  And, some do not count information if it has become “generally known.”

In the context of prosecution, for example, does the fact that an application has published mean it is “generally known” and so no longer counts?

The ABA just released an opinion on this point, ABA Formal Eth. Op. 479 (Dec. 15, 2017), here.   The abstract explains:

The “generally known” exception to the duty of former – client confidentiality is limited. It applies (1) only to the use, and not the disclosure or revelation, of former – client information; and (2) only if the information has become (a) widely recognized by members of the public in the relevant geographic area; or (b) widely recognized in the former client’s industry, profession, or trade. Information is not “generally known” simply because it has been discussed in open court, or is available in court records, in libraries, or in other public repositories of information.


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

2 thoughts on “New ABA Opinion of Particular Interest

  1. 1


    Does the USPTO published archives constitute “other public repositories of information” seeing as the very purpose of patents in the Quid Pro Quo is the exchange of “making public” for the limited time property rights in the bundle of a granted patent?

    Footnote 6: “The information must be within the basic understanding and knowledge of the public.” – notably, this is NOT the same as being known by the legal fiction known as Person Having Ordinary Skill In The Art.

    With some of the hubbub over on the main site (at least two recent articles on PHOSITA), perhaps obviousness should be UPDATED and changed from the PHOSITA standard to this more “real” standard of “publicly known” or “generally known.”

    Or not.

    One may consider that the mission of the Office is only “really” met when the knowledge achieves the standard of “popularly or widely known.”

    Can you imagine though the uproar if such a (more heavily restrictive) version of not allowing patents through came about?

    However, I do have to wonder if the caveat swallows the rule here, given that “(b) it is widely recognized in the former client’s industry, profession, or trade.” MAY be deemed to include ALL USPTO publications (whether or not client’s directly tell its workers to NOT view the USPTO publications – and yes, I have had clients – LARGE clients – that have such a policy!).

Comments are closed.