Conflicts of Interest in IP: Particularities of IP Practice Michael Erdle, Deeth Williams Wall LLP

IP – Specific Issues Who is the “client”? IP practice areas Business vs. legal conflicts Dealing with conflicts

Who is the “client”? Agency practice Corporations Foreign associate or their client Domestic law firm or their client Corporations Related parties (affiliates and subsidiaries) Shareholders, directors, officers Parties with related interests Owner and IP creator (e.g. inventor, author) Publishers, advertising agencies, designers, etc. Licensor and licensee

Prosecution Practice Searches Opinions Applications Prosecution Search discloses IP owned by another client Opinions Can you give an opinion (positive or negative) that refers to another client’s IP rights? Applications Using knowledge gained on other matters Prosecution Office action cites another client mark or patent – can you argue over or around it?

Commercial Practice Licensing Issues M&A Practice Negotiating terms for competing clients in unrelated matters M&A Practice Lawyer/firm may be involved only in one aspect of the deal – do other aspects of transaction create a conflict?

Litigation Practice Acting against current or former client Action related to current or prior retainer Patent or TM that firm prosecuted Transaction that firm advised on Unrelated matter Unrelated practice areas “Quasi-client” or related parties E.g. acting for company on a patent application and acting against inventor on wrongful dismissal

Business vs. Legal Conflicts Acting for competitors on unrelated matters Client may insist firm never act for a competitor Client may be more sensitive about some areas of practice or specific competitors

Business vs. Legal Conflicts When does general knowledge or technical expertise become a conflict? Competing technologies Industry knowledge

Dealing with Conflicts Retainer Agreements Limited retainers Joint retainers “Non-retainers”

Dealing with Conflicts Obligation to disclose potential conflicts to new clients Obligation to disclose new retainer to existing client Ability to disclose limited by confidentiality obligations

Dealing with Conflicts General waiver of business conflicts Acknowledge the firm may act for multiple clients in same field (direct and indirect competitors) Specific waivers of business/legal conflicts May act against client on specific matter Waivers subject to over-riding confidentiality obligations

Dealing with Conflicts Problems with internal wall / “cone of silence” Information shared before aware of conflict Inability to assign work to most qualified person Addresses duty of confidence, but not duty of loyalty Addresses legal conflict, but not business conflict