Here’s the fact pattern:
Company A and Company B each have its own lawyers. They form an agreement whereby Company A is in charge of prosecution, subject to input from Company B. In a perfect world, the agreement says that Company A gets to pick the lawyers and they only represent Company A (or it says the lawyers represent both Company A and Company B, but it’s clear. Clarity is good).
Assume it says Company A’s lawyers only represent it, but to further a common interest privilege communications between Company A’s lawyers and Company B to prosecute the applications are privileged. Great. Should be fine — if the agreement makes it clear that Company A’s lawyers do not represent Company B, then if a dispute arises Company A can rely on its lawyers against Company B.
But, when it’s not clear: I’ve written about this issue a few times, and there are six or so cases where lawyers have been sued, disqualified, or a privilege has been lost. (Search for DePuy on patentlyo and you’ll find the last of these).
So, that brings me to Connecticut Informal Ethics Opinion 2012-02, here. It says that even if the agreement says “Company A’s lawyers don’t represent Company B, or its employees” in-house lawyer for Company A has an attorney client relationship with Company B and its employee-inventors. Company A’s lawyer can never be adverse to Company B in the same/related matter.
I see no reason why the logic of the opinion wouldn’t apply to outside counsel in the same position.
So, if you’re in Connecticut, be careful. It’s only an informal opinion but it’s wrong, in my humble opinion.
Well, there’s a big difference — a malpractice-creating, disqualifying difference — between a contractual obligation of confidentiality and an attorney client relationship. If you can’t obviate an attorney-client relationship, then you, your outside counsel, co-counsel, and who knows who else can’t represent your employer. (The Acacia case brought by Schlumberger shows a hybrid on this theme.)
It is like joint defense agreements: it’s shared information but everyone knows that each person also has their own interests.
I’m an in-house attorney and often find myself sorting through these kinds of issues when it comes to joint development issues. While it likely depends on the facts of the situation, such arrangements often lead to situations where an attorney possesses advice-related confidential information of another party that the other party would not have disclosed in an adversarial context or even in a typical commercial relationship where IP wasn’t being created. So, to the extent that an attorney possesses such advice-related confidential information of another party, it seems inappropriate to allow that attorney to represent her primary client on matters adverse to the other party on issues having relevance to that confidential information.
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