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.