Monday, January 18, 2016

Concerns about Commercial Conflicts Come to a Climax (IP Matters, Malpractice Allegations & More)



The one (which we last covered in September) has made several headlines over the past few weeks. The net results have been welcomed by many, while highlighting new conflicts management considerations, standards, and complexities for all.

 "Massachusetts Court Clears Patent Prosecutors of Malpractice Claims Arising From Representation of Clients in Same Technology Area" --
  • "The Massachusetts Supreme Judicial Court Wednesday affirmed a lower court’s dismissal of a legal malpractice suit finding that, 'simultaneous representation by a law firm in the prosecution of patents for two clients competing in the same technology area for similar inventions is not a per se violation,' of certain Massachusetts attorney professional conduct rules."
  • "The case was brought by Chris Maling, who hired patent prosecuting attorneys at Finnegan Henderson to prosecute a set of patent applications relating to screwless eyeglass hinges. According to Maling’s complaint, Finnegan was representing his competitor in the screwless eyeglass market, filing patent applications for that competitor. Maling claimed that he would not have hired Finnegan if he had known that the firm was representing the competitor in the same 'patent space.'"
  • "Maling further alleged that he was harmed when he asked the law firm to provide him with a legal opinion addressing similarities between Maling’s patents and the competitor’s patents, and the firm declined to do so."
Full opinion here

Additional background and the facts and history of this matter: "Law Firms Tell Mass. Supreme Court No Subject Matter Conflict In Patent Prosecution Unless Claims 'Identical' Or 'Mere Obvious Variants.'"

And additional analysis worth attention: "Finnegan's Malpractice Win Comes With Warning For IP Attys" --
  • "...welcome news for intellectual property attorneys who feared the court could bar firms from representing multiple clients in similar fields, but the ruling sends a message that all firms must be vigilant to avoid conflicts, experts say."
  • "'This is the first decision by any court in this area of the law' regarding conflicts in patent cases, Stewart said [Paul Stewart, Knobbe Martens Olson & Bear]. 'It was completely untested. Firms had been doing this consistently for years, but it was based on no law at all, just what seemed to make sense.'"
  • "While the court found that there was no conflict of interest in Finnegan's representation of the two eyeglass makers in this case, it stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion admonished firms to carefully police their cases to avoid conflicts, 'no matter how complex such a protocol might be.'"

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