Ethics and the risk of conflicts of interest are issues that all law firms have to beware of and manage properly. When you use a law firm, you should always expect that your information is handled with confidentiality.
Today, many law firms represent multiple clients within the same technical field and sometimes their clients are competitors. In such cases, the law firms generally set up so-called “Chinese walls” (yes, this is the term used in the business), meaning that the teams who handle potentially competing clients’ cases cannot access each other’s files and are cautioned not to share information with each other.
This kind of parallel representation is generally acceptable for prosecution matters, e.g. for the handling of patent, trademark or design registration applications.
However, it is a completely different ball game when two competing clients come into conflict with each other.
The general rule is that a law firm can normally not side with one of its clients in a conflict, against another one of its clients, but will have to remain entirely outside the conflict. Moreover, a law firm cannot attack a right (trademark, patent, design trademark, patent, design registration) that it has established.
There are, however, limits to what law firms are prevented from doing when representing clients, as a recent EPI Disciplinary Committee decision points out.
In this decision, a disciplinary complaint was filed against a firm that had handled the national stage validation of a European patent, and then had represented an opponent in an EPO opposition against that very European patent.
The EPI Disciplinary Committee concluded that the validation is considered an administrative task and it does not provide the agent handling it with any confidential information. The patent file is already open, the official fee is known and the firm merely provides a translation and files this along with relevant documents to the relevant national patent office.
So the key is whether the law firm has received confidential information or otherwise handled the case substantively.
It would probably be a different story if the firm had tried to attack the national validation, becausethat would be attacking its own work while being aware of its potential weaknesses.
Finally, we note that this was a decision made by the EPI Disciplinary Committee. It would be interesting to see how national disciplinary committees would rule based on the same facts.
Ole Bokinge, Partner, European Patent Attorney
