The IPethics and INsights blog provides another update worth noting: "Massachusetts Supreme Court To Tackle Thorny Issue Of Subject Matter Conflicts In Patent Prosecution" --
- "This action arose from a civil malpractice lawsuit filed in April 2012 in federal court by a sole inventor and his assignee against an IP law firm and several of its attorneys. The complaint alleged that the inventor hired the IP firm to file and prosecute a patent application on an allegedly new eyeglass hinge invention. The complaint further alleged that during the same time it was representing the inventor, the law firm also was representing another client in a similar invention, albeit using different attorneys working from a different office."
- "The complaint alleged that the invention disclosed in the other client’s patent was 'similar in many important respects' to plaintiff’s invention. The complaint further alleged that the law firm had a conflict of interest which 'should have been disclosed before and during” the representation and that, due to the purported conflict, the law firm was unable to “fully and without restraint represent' the inventor and his assignee. The complaint still further alleged that plaintiff was unable to market his product as a result of the 'similarities' between the other client’s invention and plaintiff’s invention."
- "Whether two inventions handled simultaneously by the same law firm are 'similar' enough to raise an ethical conflict of interest is an issue of considerable importance to the intellectual property bar and clients of IP services. To be sure, Baker Botts recently found itself facing a malpractice award of $41 million due to a patent subject matter conflict of interest (the firm escaped liability after the court determined the claim was barred by limitations)."
- "Managing conflicts is integral to the new business intake and lateral onboarding processes at every law firm. Over the years, firms have honed procedures and adopted software to search and identify potential adversity to avoid malpractice risks by resolving conflicts or turning down matters or lateral hires. Increasingly, however, clearing conflicts requires much more than simply identifying legal conflicts."
- "To manage these business, positional, subject matter and playbook conflicts successfully requires firms to keep abreast of industry trends, update procedures, collect and manage new information and leverage new technology to streamline compliance."