Friday, July 01, 2005

Patent law: duty of disclosure to PTO vs. client confidentiality

In a law review article WHOSE RULES RULE? RESOLVING ETHICAL ONFLICTS DURING THE SIMULTANEOUS REPRESENTATION OF CLIENTS IN PATENT PROSECUTION, SIMONE A. ROSE and DEBRA R. JESSUP tackle issues arising from conflicting duties to disclose information to the PTO vs. duty to the client of confidentiality. [See 44 IDEA 283 (2004), first published in 12 Fed. Cir. B.J. 571 (2003)]

One hypo, not unrelated to the case Molins PLC v. Textron, Inc., was the following:

For example, you are prosecuting a patent for Client A, an
individual inventor who specializes in various types of electronic control systems, including machine tools. You are simultaneously prosecuting a patent for Client B, who is a manufacturer of machine tools used in the high speed machining of light alloys. Client B's application includes over 160 claims. While drafting Client A's application, you realize that Client A's application file includes an article on machine tool control that is not relevant to the patentability of Client A's invention, but is relevant to the patentability of Client B's invention. In other words, the article that is non-commonly available (published over twenty-five years ago), is non-material to Client A's application, but is highly material to the patentability of Client B's machine tool application. n5 Because the article was non-material to Client A, it was never disclosed to the
PTO as part of A's patent prosecution. Because the article is material to Client B, however, the PTO's duty of candor requires that you disclose the article to the PTO as part of Client B's patent application, despite the fact that it comes from Client A's confidential file. n6

We therefore address two specific questions. First, within the PTO
rules, which rule governs--Rule 10.57, which requires confidentiality, or Rule 56, which mandates disclosure of all material information relating to patentability, regardless of its source? Second, even if we accept the Manual of Patent
Examining Procedure's (MPEP) assertion that candor supercedes
confidentiality, n14 should the state professionalism rules preserving confidentiality override the PTO's conclusion to the contrary?

Of Molins itself,

Judge Nies' dissent in Molins, however, indirectly implies that the PTO duty of candor overrides state confidentiality rules, n198 while Judge Newman's concurrence expressly argues for preserving client confidentiality, even when faced with Rule 56's duty to disclose material information.

The authors of the law review --agree with Judge Newman's concurrence that preserving client confidentiality must supercede
the duty of candor in order to ensure full and frank disclosure from
clients during prosecution of patent portfolios--

The authors also state--Judge Newman distinguishes that
MPEP 2001.06 should not reach "the confidential patent application that an entirely unrelated client happened to entrust to the same lawyer," n203 but is instead limited to disclosing information from co-pending applications of the same client. Despite the fact that the duty of candor encourages full disclosure that
benefits both the PTO and the general public, an attorney's obligation to preserve a client's confidentiality is absolute under both state and PTO professionalism rules. n204

I have to take issue with the statement --an attorney's obligation to preserve a client's confidentiality is absolute under both state and PTO professionalism rules.-- The Supreme Court of New Jersey said quite the opposite in In re Seelig.

In his presentation at the WSPLA/OPLA joint conference on April 23, 2005, Professor David Hricik mentioned Molins, did not mention the Rose/Jessup paper, and suggested one option for a law firm to take was to let the client know in advance that the client will agree to allow the firm to disclose information to the PTO unless it is proprietary information.

In the above hypo, the information clearly was NOT proprietary and would be disclosed under this guideline.

The Rose/Jessup paper did cite:

David Hricik, The Risks and Responsibilities of Attorneys and
Firms Prosecuting Patents for Different Clients in Related Technologies, 8 Tex Intell. Prop. L.J. 331, 340 (2000).

but did not cite the later paper in 44 So. Tex. L. Rev. 205 (2003). It also did not cite Virginia Bar Association Legal Ethics Opinion 1774 (2003). When a journal (like IDEA) republishes an earlier article, there is a possibility that pertinent information that arises between the first and later publication will fall through the cracks. Thus, here the 2004 article failed to cite material information that arose in 2003. In a similar vein, much recent citation to Quillen and Webster's article in 2001 fails to cite pertinent papers that arose in 2002, 2003, and 2004. Law review writers frequently don't Shepardize.


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