Direct competition clause: What’s the ethical protocol on clients with competing products?
Ethical issues can appear to be less obvious in a patent prosecution matter than for example a family law or criminal law matter. There are, however, several ethical issues that a patent attorney will consider, on an ongoing basis, when representing a client for a first or subsequent invention. Working for two different clients on a related invention or subject matter, is a very specific example of a such a potential ethical issue (cue the direct competition clause).
In a fictitious scenario, an existing client with an invention in a very specific area of a subset of art has disclosed their idea to an attorney and that firm begins working on their application. During this time, another client contacts the same attorney and begins to describe their invention. Very quickly the attorney realizes that this sounds very similar to another application that is in progress. Conducting a thorough conflict check is one of the very first steps that a patent attorney should implement when a new client or invention is being considered for a patent application. The conflict might be the fact that the two clients are direct or potential competitors or that the claims they want to make are identical or obvious variations of one another.
Why might this be a conflict of interest?
Attorneys and agents have disclosing obligations to a patent office. Also, attorneys and agents have a duty to act in the best interests of a client. Both these obligations would be encroached upon if the first application was in progress or filed and then the second client came along with the same invention. The disclosure of the first client’s invention would need to be disclosed to the patent office during the second clients prosecution process and the attorneys ability to expand on or give suggestions to the second client would be limited because of the knowledge from the first clients invention. It flows that the attorney would not be able to fully commit to the second client’s invention without actively withholding strategic or other patent related advice. Having said this, according to direct competition clause, the mere similarity of an invention would not necessarily create a conflict; the inventions would need to be very similar to each other or obvious variations of each other so that the patent office might find a clash between them.