Public Confidential Information: California Weighs In, Asks for Comments

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.

Brilliant New Book on Ethics in Prosecution 2015 Edition Out Now!

By David Hricik

Proud to announce that the 3rd edition of Patent Ethics: Prosecution that I co-authored with Mercedes Meyer is now available here!  This edition adds a massive amount of new material to deal with the new PTO ethics rules and the fast-moving, roller coaster world of ethical issues in patent practice!

From the description:

Patent Ethics: Prosecution (2015 Edition), by David Hricik and Mercedes Meyer, is an essential guide to the ethical issues arising in the course of the patent prosecution process. By providing relevant rules and case law, it allows practitioners to identify ethical problems before they arise and to address them most effectively when they do. Patent Ethics: Prosecution is one of two volumes on patent ethics — the second focuses on litigation — and is the first of its kind to combine the United State Patent and Trademark Office (PTO) rules with commentary by the authors, which distills the authors’ own experience and expertise in patent prosecution into effective practice strategies.

The 2015 Edition is particularly relevant considering the significant ramifications with the United States Patent & Trademark Office (USPTO) repealing its existing rules, the USPTO Code of Professional Responsibility, and replacing them with the new USPTO Rules of Professional Conduct. Furthermore, the 2015 Edition also comprehensively discusses ethical issues of major concern for patent law practitioners such as:
•   The increase in malpractice claims based upon patent prosecution as well as recent significant verdicts of $30 million and $70 million.

•   The USPTO’s Office of Enrollment and Discipline’s vigorous enforcement efforts, continued persistence in asserting a broad view of its jurisdiction, and resulting increase in the volume of case law and other authorities.

•   The troublesome issue of best mode and the America Invents Act.

•   The various ethical issues surrounding patent agents.

The 2015 Edition features new analysis of current client conflicts in patent practice, including when prosecution and opinion work become “adverse” to a client, the conflicts of interest created by the AIA’s approach to the best mode, and duty of candor post-Therasense. It also includes an updated PTO Code completely annotated with OED decisions on each provision.

Makes a perfect Christmas present, too!  Buy one for every lawyer in your firm!  Heck, buy two so they have one at home!

Attorney Versus Agent

PatentLawPic1123As a continuation of the previous posts on patent attorney demographics, I looked at the status of registered US patent practitioners.  As the chart above demonstrates, more recently registered practitioners are less likely to be registered as patent attorneys. 

It is not surprising that a high percentage of recently registered practitioners are agents.  Many current patent agents will eventually become patent attorneys.  In addition, some practitioners never update their status even after becoming attorneys. However, I suspect that those factors do not explain the entire trend.

For those who do not know, an individual can become a patent agent upon passing the patent practitioner registration examination (patent bar exam).  To become a patent attorney, the individual must also be licensed to practice law in at least one US state.

  • Thanks to my research assistant Lawrence Higgins (2L) for helping obtain some of this data.

In re Gleave: Reference with Unknown Utility Still Anticipates

In re Gleave (Fed. Cir. 2009)

In 2008, the BPAI affirmed the examiner’s rejection of Gleave’s claims as anticipated. The claims focus on an antisense oligodeoxynucleotide designed to bind two different types of insulin-dependent growth factor binding protein (IGFBP). The prior art included a document that listed the genetic sequence of the complementary sense strands but did not identify any utility of the sequence.

On appeal, the Federal Circuit affirmed the anticipation rejection – basing its decision on the rule that anticipatory prior art does need to be functional, useful, or show actual reduction to practice. Rather, to be anticipatory, the prior art must enable the skilled artisan to make the claimed invention.

In the 1973 Wiggins case, the CCPA ruled that the “mere naming of a compound in a reference, without more, cannot constitute a[n anticipatory] description of the compound.” The Federal Circuit here distinguished Wiggins – noting that in Gleave’s case, the sequence listing was sufficient to allow a skilled artisan to “at once envision each member of this limited class.”


Dear Patently-O: How Do You React to the Following Letter

Dear Mr. Crouch:

I am a solo physician and inventor. I am wondering if you can point me in the generally right direction to resolve this issue.

I went to a large, well-respected, nationally-known firm to file a patent application for an invention. The invention is not that complicated. It’s mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.

My attorney knew from the start that I am a solo inventor and under a tight budget. The final fees were astronomical. I paid them at the time because the lawyer had obviously worked hard and I had agreed to pay the hourly rate she had quoted. However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.

To give you a comparison, based on a word count, my patent application was literally twice as long as Dean Kamen’s patent for an early Segway device in 1994. My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).

My current plan is to go back to this attorney and have a frank discussion with her, and to ask for a partial refund. If she refuses, I plan to go to the state bar and file a complaint.

Is this the right way to go about this? Are there any precedents for recovering fees in this sort of situation in a way that won’t tie me up in further legal fees?

Many thanks,

____ ____ M.D. (anonymized at the author’s request)