Who are the clients when one corporation's in-house patent lawyer prosecutes a joint patent for two corporations and their employee-inventors?
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This page answers the general question as of 2012. Ask about yours and see what the current Connecticut Rules of Professional Conduct say for your facts, with citations.
Plain-English summary
Corporations C1 and C2 planned joint research and patent applications. C1's in-house patent lawyer would prepare and prosecute the applications, communicate with both companies and their inventors, and receive confidential information. Their business agreement proposed limiting the lawyer's work for C2 to the Patent and Trademark Office and stating that no attorney-client relationship with C2 was intended.
The Committee concluded that preparing and prosecuting the patent application is legal representation. Because the lawyer acts for the inventor-applicants and for both corporate assignees before the PTO, the lawyer has an attorney-client relationship with C1, C2, and their respective employee-inventors. The nature of the work and surrounding facts control, so the corporations' contractual disclaimer does not eliminate the relationship.
Rule 1.6 protects confidential information received from both corporations and their inventors. Connecticut may regulate confidentiality and other conduct without improperly displacing federal control over practice before the PTO. A common-interest or joint-defense agreement also does not remove the lawyer's duties to C2.
If the patent work remains ongoing, Rule 1.7 governs a proposed representation of C1 against C2 concerning the patent subject matter. If the patent work has ended, Rule 1.9 governs because C2 is a former client. On the facts presented, the Committee said the lawyer could not represent C1 in that dispute without C2's waiver to the extent the conflict is waivable. Rule 1.10 imputes the lawyer's disqualification to associated members of the corporate legal department.
The same analysis applies to a lawyer admitted in Connecticut or registered as authorized house counsel. A lawyer who is neither admitted nor registered may provide federally authorized services under Rule 5.5(d)(2), but Rule 8.5 subjects a lawyer providing legal services in Connecticut to Connecticut disciplinary authority and supplies the choice-of-law analysis.
In practice
Under this opinion, corporate agreements cannot redefine client identity when the in-house lawyer actually performs legal work for both joint-venture participants. That client relationship carries confidentiality, current-client conflict, former-client conflict, and imputation consequences.
Common questions
Q: Does a contract stating that C2 is not a client prevent an attorney-client relationship?
A: No. The Committee says the nature of the lawyer's activity and the surrounding facts determine the relationship.
Q: Is preparing and prosecuting the joint patent application legal representation?
A: Yes. The lawyer prepares a legal-technical application, argues patentability, and represents the applicants and assignees before the PTO.
Q: Whose confidential information must the in-house lawyer protect?
A: Rule 1.6 applies to information received from both corporations and their employee-inventors in connection with the patent work.
Q: May the lawyer later represent C1 against C2 over the same patent subject matter?
A: The opinion says that representation generally is prohibited. Rule 1.7 applies while the patent work continues, Rule 1.9 applies after it ends, and C2's waiver is required if the conflict is waivable.
Q: Does the conflict affect other lawyers in C1's legal department?
A: Yes. The Committee treats a corporate legal department like a law firm for Rule 1.10 imputation.
Q: Does a common-interest agreement eliminate the lawyer's duties to C2?
A: No. The opinion expressly says such an agreement does not vitiate those obligations.
Background and rules framework
Rules 1.6, 1.7, 1.9, and 1.10 govern confidentiality, current and former client conflicts, and imputation. Rule 1.13 recognizes representation of an organizational client. Rules 5.5 and 8.5 address authorized federal practice, house-counsel registration, disciplinary authority, and choice of law.
Citations and references
Connecticut Rules of Professional Conduct:
- Rules 1.6, 1.7, 1.8, 1.9, 1.10, 1.13, 5.5(d)(1), 5.5(d)(2), 8.5(a), and 8.5(b)
Federal regulations:
- 37 C.F.R. §§ 1.32(a)(2), 1.32(b)(4), 1.34, 1.56, 2.31, and 10.1
Cases:
- Sperry v. Florida ex rel. Florida Bar, 373 U.S. 379, 383, 402 (1963), patent prosecution as legal practice and the boundary between federal and state regulation
- In re Spalding Worldwide, Inc., 203 F.3d 800 (Fed. Cir. 2000), confidentiality of patent-prosecution communications
- Kroll v. Finnerty, 242 F.3d 1359 (Fed. Cir. 2001), shared PTO and state disciplinary authority
- In re Peterson, 163 B.R. 665 (D. Conn. 1994), Connecticut regulation of federally authorized bankruptcy practice
Other opinions cited:
- New Jersey Supreme Court Committee on Unauthorized Practice of Law Opinion 9 (1972), state regulation of patent-practitioner services
- Kansas Bar Association Legal Ethics Opinion 98-9 (1998), sharing the cost of an in-house lawyer
See also
- CT Informal Op. 21-02: Patent classification vendor
- NY State Bar Op. 1070: Joint clients and file access
- ABA Formal Op. 99-415: Former in-house lawyer conflicts
Source
- Landing page: Connecticut Bar Association Informal Ethics Opinions
- Original PDF: Informal Opinion 12-02
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