Can a firm prepare an opinion attacking a patent held by one of its own current clients because another firm lawyer handles that client's patents in a different technology?

Plain-English summary

An associate was assigned to write a validity opinion for Client A seeking to invalidate a patent, then discovered the patent was held by Client B, another current client of the firm. He flagged a conflict and suggested obtaining both clients' consent. The supervising partner disagreed, reasoning that Client A would be harmed by withdrawal (the partner had already invested substantial time) and that no consent from Client B was needed because the firm's patent work for B was in a different technology. The committee was asked what steps were required to proceed.

The committee applies Rule 1.7: helping Client A invalidate a patent that current Client B holds places the firm directly adverse to Client B, because invalidation could be detrimental to B and damage the firm's relationship with B, even though the firm represents B on patents in a different technology. Per Comment 3, a lawyer ordinarily may not act as advocate against a current client even in a wholly unrelated matter. So the representation may continue only if the lawyers reasonably believe it will not adversely affect the representation of B and both clients consent after full disclosure.

Under Rule 1.10, the conflict is imputed to the entire firm: since the lawyer who handles B's patents could not himself prepare a validity statement attacking another of B's patents, no one in the firm may, absent the Rule 1.7 consent. Finally, the committee finds the supervising partner violated Rule 5.1(c)(1) by ordering and ratifying continued work without seeking consent, and notes Virginia deliberately did not adopt ABA Model Rule 5.2, so the associate has no safe harbor relieving him of responsibility for following a supervisor's direction.

Currency note

This opinion was issued in 2003. Virginia's conflict, imputation, and supervision rules may have changed since. Verify against current rules before relying on any specific requirement mentioned here.

In practice

The opinion holds that adversity to a current client triggers Rule 1.7 even where the firm's other work for that client is in an unrelated field, so a firm cannot attack a current client's patent for another client without both clients' informed consent; the conflict imputes firm-wide under Rule 1.10. It also holds the supervising partner responsible under Rule 5.1(c)(1) for ordering the work to proceed without consent, and notes that in Virginia an associate cannot rely on a supervisor's instruction to excuse a violation, because the state did not adopt Model Rule 5.2.

Common questions

Q: Can a firm attack a current client's patent for another client if the firm's work for that client is in a different technology?

A: No, not without consent. The committee concludes that invalidating a current client's patent is directly adverse under Rule 1.7 even where the firm's other work for that client is unrelated; both clients must consent after consultation.

Q: Does the conflict affect the whole firm or just the assigned lawyers?

A: The whole firm. Under Rule 1.10, because the lawyer handling the client's patents could not do the adverse work himself, no one in the firm may without the Rule 1.7 consent.

Q: Is the supervising partner responsible for pushing the work forward?

A: Yes. The committee finds the partner violated Rule 5.1(c)(1) by ordering and ratifying continued representation without seeking the clients' consent.

Q: Can the associate rely on the partner's instruction to avoid responsibility?

A: No. The committee notes Virginia did not adopt ABA Model Rule 5.2, so the associate has no safe harbor relieving him of ethical responsibility for the conduct.

Background and rules framework

The opinion interprets Rule 1.7 (Model Rule 1.7; direct adversity to a current client, Comment 3), Rule 1.10 (Model Rule 1.10; imputed disqualification, waivable as under Rule 1.7), and Rule 5.1 (Model Rule 5.1; responsibilities of partners and supervisory lawyers, including 5.1(c)(1)). It notes Virginia's deliberate omission of ABA Model Rule 5.2 (subordinate-lawyer safe harbor).

Citations and references

Rules of Professional Conduct:

• Model Rule 1.7 / Virginia Rule 1.7(a) and Comment 3 (direct adversity to a current client)
• Model Rule 1.10 / Virginia Rule 1.10 (imputed disqualification)
• Model Rule 5.1 / Virginia Rule 5.1(c)(1) (supervisory-lawyer responsibility); Virginia's non-adoption of Model Rule 5.2

See also

• VA LEO 1810: Guardian Ad Litem Conflict and Imputation Through a Former Partner
• ABA Formal Op. 497: Conflicts From Materially Adverse Interests
• ABA Formal Op. 05-436: Informed Consent to Future Conflicts

Source

• Landing page: https://vsb.org/Site/about/rules-regulations/leo-opinions.aspx
• Original PDF: https://www.vsb.org/common/Uploaded%20files/LEOs/1774.pdf

Original opinion text

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

Committee Opinion
February 13, 2003
LEGAL ETHICS OPINION 1774

FIRM WRITING PATENTS FOR ONE CLIENT
AND ALSO WRITING PATENTS FOR
COMPETITOR OF THE FIRST CLIENT.

You have presented a hypothetical situation in which an associate attorney (“Associate”) in a
law firm is assigned a case in which he is asked to write a validity opinion for Client A regarding
a patent that Client A is attempting to invalidate. While reviewing this assignment, Associate
discovers that the patent in question is held by B, another current client of the firm (“Client B”).
Associate brings the issue to his Supervising Partner, suggesting to Supervising Partner that there
is a conflict and that in order to proceed with this project, they need to obtain consent from both
clients. Supervising Partner disagrees, reasoning that Client A would be adversely affected if
Associate did not proceed with the analysis, since Supervising Partner had put in a substantial
amount of time on the project before Associate discovered Client B’s involvement, and the
patents that the firm wrote for Client B were in a different technology than that of the patent
Client A is challenging.
Under the facts you have presented, you have asked the committee to opine as to what steps are
necessary for the attorneys involved in this situation to take in order to be able to write the
validity opinion which Client A requested, assuming the opinion involves Technology X and the
firm represents Client B regarding patents in Technology Y.
The appropriate and controlling disciplinary rules relative to your inquiry are Rule 1.7, which
governs conflicts of interest between existing clients, Rule 1.10, the imputed disqualification rule
and Rule 5.1, which addresses the responsibilities of a partner or supervising attorney to his/her
firm and those other attorneys over whom he/she has supervisory authority.
Rule 1.7 provides:
(a)

A lawyer shall not represent a client if the representation of that
client will be directly adverse to another existing client, unless:
(1) the lawyer reasonably believes the representation will not
adversely affect the relationship with the other client; and
(2) each client consents after consultation.

Applying this provision to the facts you presented, the Committee finds that there is a conflict
which, absent consent from both clients, precludes Associate and Supervising Partner from
providing further representation and proceeding to prepare the validity opinion for Client A, in
light of the discovery that Client B holds the patent in question. Even though another attorney in
the firm represents Client B on patents involving different technology than that involved in the
patent in question, nevertheless, assisting Client A to invalidate a patent which Client B holds
places the attorneys involved in a position directly adverse to an existing client. Invalidating a
patent which Client B holds could be detrimental to Client B and could adversely affect the
relationship between Client B and the firm. Rule 1.7 (a) directs that representation of Client A

Committee Opinion
February 13, 2003
can only continue if the attorneys reasonably believe that the representation will not adversely
affect the representation of Client B and both clients consent after consultation. Comment 3 to
Rule 1.7 is instructive:
[3] As a general proposition, loyalty to a client prohibits
undertaking representation directly adverse to that client without
that client's consent. Paragraph (a) expresses that general rule.
Thus, a lawyer ordinarily may not act as advocate against a person
the lawyer represents in some other matter, even if it is wholly
unrelated.
It is the Committee’s opinion, therefore, that consent must be obtained from both clients after
full disclosure in order to continue representation and work for Client A.
Under Rule 1.10, none of the attorneys in a firm “shall knowingly represent a client when any
one of them practicing alone would be prohibited from doing so” by Rule 1.7. Disqualification
under Rule 1.10 may be waived as provided by Rule 1.7. Thus one must consider the fact
situation presented from the point of view of the attorney handling Client B’s patents. Could he,
if alone, represent Client A and prepare a validity statement challenging another patent of Client
B? If not, then neither Associate nor Supervising Partner can do so without the consent required
by Rule 1.7. It is the opinion of the Committee, based on the facts herein, that the attorney
representing Client B would not be able to represent Client A in these matters and therefore
everyone else in the firm is disqualified unless consent is obtained from both clients.
Finally, the Committee is concerned about the application of Rule 5.1(c) to this set of facts.
Rule 5.1(c) states:
(c)

A lawyer shall be responsible for another lawyer’s violation of the
Rules of Professional Conduct if:
(1)
(2)

the lawyer orders or, with knowledge of the specific conduct,
ratifies the conduct involved; or
the lawyer is a partner in the law firm in which the other lawyer
practices, or has direct supervisory authority over the other lawyer,
and knows of the conduct at a time when its consequences can be
avoided or mitigated but fails to take reasonable remedial action.

This Rule makes partners and supervisory attorneys in a firm equally responsible for ethical
violations which attorneys under their supervision commit. 1 Based on the facts presented,
1The committee notes that the Virginia State Bar consciously refrained from adopting

Rule 5.2 of the ABA Model Rules as that provision contains language relieving an associate of
ethical responsibility in certain instances where a supervising attorney has directed the conduct in
question.

Committee Opinion
February 13, 2003
Supervising Partner would find himself in violation of Rule 5.1(c)(1). Associate presented the
conflict issue to Supervising Partner who, according to the facts, did not disagree that there was a
conflict, but rather determined that the clients simply would not be contacted to obtain consent
because Client A would be detrimentally affected by the attorneys terminating representation at
this point since Supervising Partner had already expended a substantial amount of time on the
project and the matter has been with the firm for some time prior to it being assigned to
Associate. As for Client B, Supervising Attorney takes the position that because the firm
represents Client B with regard to patents in a technology other than that involved in the patent
Client A is challenging, there is no need to inform Client B of the representation of Client A
and/or obtain Client B’s consent to that representation. Supervising Partner has therefore ordered
and ratified the inappropriate conduct in contravention of Rule 5.1(c)(1). The conflict exists
without question and the only way that representation of either client can continue is to disclose
the representation and conflict to both clients and obtain their consent. Supervising Partner,
based on the facts presented, breached his responsibility of ethical supervision, as outlined by
Rule 5.1, in his response to Associate’s concerns regarding this conflict of interest .
This opinion is advisory only, based only on the facts you presented and not binding on any
court or tribunal.
Committee Opinion
February 13, 2003