New York City Bar Opinion on Receipt of Inadvertently Sent Documents

By David Hricik, Mercer Law School

In Opinion 2019-3 (May 16, 2019), the Association of the Bar of the City of New York, gave guidance on an issue on which most state ethics rules leave lawyers hanging. Under Model Rule 4.4(b), and similar state rules including the USPTO rules, a lawyer who receives a document related to the representation of a client, and knows or should know it was inadvertently sent, must notify the sender and then… the rule stops.

Obviously, the other side will (if the document has any significance) ask for the lawyer to return or delete it and, just as obviously, if the document has any significance the lawyer’s client will want the lawyer to not return it and, if it had been privileged, to argue it no longer is because it was inadvertently sent without due care.

This opinion provides a nice discussion of the background to various issues that arise with inadvertent receipt and some good historical background. As for specific guidance, my takeaways were as follows.

First, look to see if there is controlling law on what the lawyer can or must do.  A protective order, a standing order, a local rule, agreement of counsel, or prior decision of the court may control, for example.

Second, the opinion points out that if a lawyer knows, before reading the document, that it may have been inadvertently sent, it is unclear if the lawyer must examine it or can, instead, stop and notify the sender and thereby avoid knowing whether the document had any significance to the client’s objectives.  If the document has no significant bearing on the client’s objectives, the opinion states the lawyer may not have to let the client know of its receipt.  Of course, that course presents risks to the lawyer.

Third, if the document is significant and there is no clear obligation as to what to do, the lawyer should inform the client of receipt.  Then discussion is required because, as the opinion points out, use may entail risk. The client may not understand that disqualification, sanctions, or just an angry judge may result.

Fourth, if after consultation, the client “demands” the lawyer use the information, then the lawyer must assess the risk of doing so. For example, if the document contains opinion work product, using the information may be very risky since it is very difficult to waive protection over opinion work product.  But if there is risk, the lawyer must assess it and can withdraw if use subjects the lawyer to discipline or sanctions.  Without those risks, the client’s wishes should prevail, according to this opinion.

Finally, the opinion advised that a lawyer cannot choose not to use the information solely as a professional courtesy to the opposing party, or to personally benefit.

The question of what to do after a lawyer notifies the transmitting party of the mistake is one that the rules leave unanswered. This opinion provides a framework to analyze that issue, a fact-dependent problem at that!

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.

8 thoughts on “New York City Bar Opinion on Receipt of Inadvertently Sent Documents

  1. 2

    Well, um… there’s a slew of rules that could get the manager partner of the firm, a committee delegated with putting in reasonable procedures to avoid harm to client, and the departed practitioner’s former supervisor in trouble. So, while “the firm” may not have a duty, states have rules (in the 5.x series) and the USPTO does, too (37 CFR 11.105, or around there – I’m about to teach torts!).

    And of course, I’d love to be the plaintiff’s expert in the malpractice case against that firm. “All you had to do was Google and then use a 50 cent stamp.”

    1. 2.1

      That “all you had to do” begs the question of there BEING any “had” in the first instance.

      Again – the driver of ethical responsibility is duty.

      Given the plain facts, there is NO duty.

      Now, I am NOT saying that a whole bunch of “other” facts could not be thrown into various hypo’s that MAY induce various degrees of duty (in fact, I even added some previously).

      But on the straight up angle, a firm has no duty/no control/no nexus with whatever an individual practitioner does as far as that practitioners action/inaction with the Patent Office.

      1. 2.1.1

        Oops – missed a closing “bold” tag there – not meant to have the whole thing come across as shouting…

  2. 1

    Here is a related received document ethics question I have raised before that is about to become even more important. A PTO letter re the PTO registration status of a patent attorney formerly at that firm or corporate legal department is received indicating that patent attorney has not changed his PTO registered address [and/or now not paying the newly required annual fee] to maintain his or her registration to practice before the PTO status. I have heard of several cases in which such PTO papers were merely tossed with no attempt to contact the former employee.

    1. 1.1

      In such an instance, Paul, what (if any) duty is there for the law firm?

      As opposed to a court case, there is no duty that I can see that bridges to what I think that you want to place (or attach) an ethical obligation to.

      Ethics attaches related to duty. Without more facts not present, nowhere does a firm incur a duty for the interactions between a practitioner and the Office. That’s just not an expectation for the firm (either through the practitioner or the Office). Keeping the rolls current is fully (and only) the duty of the practitioner.

      Now I did say “without more facts.” There may be implications of duty (and thus incurred ethics) if a firm has a policy of paying dues (including this new Office dues).

      1. 1.1.1

        That of course is the question.

        I think that if you asked the PTO OED they may will say that the firms registered practitioners has a professional duty to the PTO to attempt to forward official PTO mail to a registered practitioner who still has their address at that firm, rather than just throw those papers into a waste basket? Since that is now far more likely to occur far more often with the annual fee payment obligation it ought to be clarified.
        What also needs clarifications are the legal consequences of a likely substantial increase in application and amendment papers filed by patent attorneys and agents who are no longer registered because they did not make their annual fee payment.

        1. 1.1.1.1

          The firms do not control what address a practitioner provides to the Office.

          The Office sending mail to a firm is an act unsolicited by the firm.

          You see a duty where none exists.

          As to ANY “application and amendment papers filed by patent attorneys and agents who are no longer registered” — that is easy, and has been plainly pointed out to you in discussion past: it’s called the unauthorized practice of law. ANY person having a registration number (or previously having a registration number) sure better know this.

          1. 1.1.1.1.1

            … of course, the most prudent response of a firm is to stamp the item “return to sender, addressee not at this location,” but clearly there is no duty for doing such.

            I routinely throw away misaddressed mail that comes to my home address. I have zero duty there to do anything with any mail (even “official mail”).

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