I prepared a patent assignment for two co-clients who now dispute it. Must I withdraw, can I share the terms with one's new lawyer, and what is in the file?

Plain-English summary

A and B hired the inquiring attorney to undertake a patentability/infringement search and pursue patent protection for an invention of A, with B responsible for paying all legal fees. A and B instructed the attorney to prepare an assignment transferring a one-half undivided interest in the invention and any resulting patent from A to B, and the attorney did so. A and B now dispute the validity of the assignment and have each retained independent counsel. The attorney asked (1) whether he or she may communicate information about the terms of the assignment to B's attorney, (2) what documents constitute the clients' file, and (3) to whom the attorney should send bills for services.

The opinion finds the attorney acted as intermediary in helping A and B pursue patent protection, and that because A and B now dispute the subject of the intermediation and have retained independent counsel, the attorney must withdraw under Rule 2.2, which requires withdrawal when a client requests it or a paragraph (a) condition is no longer satisfied. On the first query, the opinion cites the Comment to Rule 2.2 -- that the attorney-client privilege does not attach as between commonly represented clients, and that if litigation eventuates between them the privilege will not protect communications -- and concludes that, if asked, the attorney may communicate information concerning the subject of the intermediation to B's attorney.

On the second query, the opinion applies Rule 1.17(d), under which a withdrawing lawyer should surrender paper and property to which the client is entitled. Citing its Opinion 92-88, the opinion states the client is entitled to the contents of the file excluding the attorney's work product, and is not entitled to the lawyer's personal notes unrelated to legal analysis (such as time records, notes of conversations, and other record-keeping documents), nor to the attorney's advisory request, which is confidential under Rule 6 of the Rules of the Ethics Advisory Panel. On the third query, the opinion states the attorney should bill the clients for past services in accordance with the terms of the retainer agreement, as that was the parties' intent during the intermediation.

In practice

Under this opinion, the disputed assignment turns a completed intermediation into a Rule 2.2 withdrawal trigger, and the withdrawal carries three consequences the opinion spells out. Because privilege does not attach between co-clients, the lawyer may share the intermediation's subject with a co-client's new counsel if asked. The file the lawyer must surrender under Rule 1.17(d) is its substantive contents minus work product and the lawyer's own record-keeping notes, and minus the confidential advisory request. Billing follows the retainer agreement the parties set during the intermediation.

Common questions

Q: Does the lawyer have to withdraw once the co-clients dispute the assignment?

A: Yes. The opinion concludes the attorney, having acted as intermediary, must withdraw under Rule 2.2 because the clients dispute the subject of the intermediation and have retained independent counsel.

Q: Can the lawyer tell one co-client's new attorney the terms of the assignment?

A: Yes, if asked. The opinion relies on the Comment to Rule 2.2 that privilege does not attach between commonly represented clients, and concludes the attorney may communicate information concerning the subject of the intermediation.

Q: What must the lawyer turn over as the client file?

A: Under Rule 1.17(d) and Opinion 92-88, the contents of the file excluding the attorney's work product; the opinion says personal notes unrelated to legal analysis and the confidential advisory request need not be included.

Q: Who gets billed for the work done?

A: The opinion says the attorney should bill the clients for past services in accordance with the terms of the retainer agreement, reflecting the parties' intent during the intermediation.

Background and rules framework

The opinion interprets Rhode Island Rules of Professional Conduct 2.2 (lawyer as intermediary) and 1.17(d) (declining or terminating representation; surrender of papers), analogs of Model Rules 2.2 and 1.16(d). Rule 2.2(c) requires withdrawal when a client requests it or a paragraph (a) condition fails; Rule 1.17(d) requires a withdrawing lawyer to surrender paper and property to which the client is entitled. The opinion also cites its Opinion 92-88 and Rule 6 of the Rules of the Ethics Advisory Panel (advisory requests are confidential).

Citations and references

Rules of Professional Conduct:

• MR 2.2 / RI RPC 2.2 (lawyer as intermediary; withdrawal under 2.2(c))
• MR 1.16 / RI RPC 1.17(d) (surrender of papers and property on withdrawal, as cited in the opinion)

Other opinions cited:

• RI EAP Opinion 92-88 (Issued March 15, 1993): client entitled to file contents excluding work product

Other authorities cited:

• Rule 6 of the Rules of the Ethics Advisory Panel (advisory requests are confidential)

See also

• RI EAP Opinion 93-58: a lawyer for a corporation and both shareholders under 2.2, 1.13, and 1.7

Source

• Landing page: https://www.courts.ri.gov/attorney-resources/Pages/Ethics-Advisory-Panel-default.aspx
• Original PDF: https://www.courts.ri.gov/Opinions/EAP%2093-76.pdf

Original opinion text

Reproduced from the official source for research purposes. The linked source is authoritative.

(FINAL)
ETHICS ADVISORY PANEL
OPINION #93-76, REQUEST #417
Issued October 5, 1993

A and B hired the inquiring attorney to undertake a patentability/infringement search and to pursue patent protection for an invention of A. The inquiring attorney was advised that B would be responsible for paying all legal fees. A and B instructed the inquiring attorney to prepare an assignment transferring a one-half (1/2) undivided interest in the invention and any resulting patent from A to B. The inquiring attorney prepared the assignment. A and B are now disputing the validity of the assignment and both have retained independent counsel. The inquiring attorney asks: (1.) may he/she communicate information concerning the terms of the assignment to B's attorney; (2.) what documents constitute the clients' file; and (3.) to whom should the inquiring attorney send his/her bills for legal services.

As an initial matter, the Panel notes that in this case the inquiring attorney acted as intermediary in helping A and B pursue patent protection. From the facts presented, it is apparent that A and B are disputing the subject of intermediation and have retained independent counsel. As a result, it is the Panel's opinion that the inquiring attorney must withdraw from the representation pursuant to Rule 2.2. That Rule states as follows:

(a) A lawyer may act as intermediary between clients if:

(1) the lawyer consults with each client concerning the implications of the common representation, including the advantages and risks involved, and the effect on the attorney/client privileges, and obtains each client's consents to the common representation;

(2) the lawyer reasonably believes that the matter can be resolved on terms compatible with the clients' best interests, that each client will be able to make adequately informed decisions in the matter and that there is little risk of material prejudice to the interests of any of the clients if the contemplated resolution is unsuccessful; and

(3) the lawyer reasonably believes that the common representation can be undertaken impartially and without improper effect on other responsibilities the lawyer has to any of the clients.

(c) A lawyer shall withdraw as intermediary if any of the clients so requests, or if any of the conditions stated in paragraph (a) is no longer satisfied. Upon withdrawal, the lawyer shall not continue to represent any of the clients in the matter that was the subject of the intermediation.

With respect to whether the inquiring attorney may communicate information regarding the terms of the assignment to B's attorney, the Panel notes that the Comment to Rule 2.2 provides that as between commonly represented clients, the attorney/client privilege does not attach. The Comment further explains that if litigation eventuates between the clients, the privilege will not protect communications. Accordingly, the Panel concludes that if asked, the inquiring attorney may communicate information concerning the subject of the intermediation to B's attorney.

Rule 1.17(d) addresses the inquiring attorney's second query with respect to what documents constitute the clients' file. The Rule states, in part, that upon withdrawal a lawyer should surrender paper and property to which the client is entitled. This Panel has opined "that the client is entitled to the contents of the file excluding the attorney's work product." See, Opinion #92-88 (Issued March 15, 1993). The Panel does not believe the client is entitled to the lawyer's own personal notes that are unrelated to legal analysis such as time records, notes of conversations with the client and other record keeping documents. Nor does the Panel believe that the inquiring attorney's advisory request must be included in the clients' file. Pursuant to Rule 6 of the Rules of the Ethics Advisory Panel, advisory requests are confidential.

As to the inquiring attorney's third query, the Panel believes that the inquiring attorney should bill the clients for past services in accordance with the terms of the retainer agreement as that was the intent and desire of the parties during the period of the intermediation.