Patent Attorney Conflicts Issue Decided by MASS Supreme Court

The supreme court of Massachusetts decided in December of 2015 that just because a firm represented two competitors in patent preparation and prosecution in the same technological area before the USPTO, that that alone does not arise to a conflict of interest. The case is called CHRIS E. MALING vs. FINNEGAN, HENDERSON, FARABOW, GARRETT&DUNNER, LLP, & others and can be found by doing a search for “Maling” here.

As stated by the court on page 9:
“Maling advocates for a broad interpretation of rule 1.7 that would render all subject matter conflicts actionable, per se violations. We disagree. We conclude that although subject matter conflicts in patent prosecutions often may present a number of potential legal, ethical, and practical problems for lawyers and their clients, they do not, standing alone, constitute an actionable conflict of interest that violates rule 1.7.”

Also, at page 14: “Maling’s conclusory allegations as to the high degree of similarity between his device and the Masunaga device are contradicted by his acknowledgment elsewhere in the complaint that patents issued for both his applications and the Masunaga applications. Although Maling alleges that the Masunaga and Maling applications are “similar . . . in many important respects,” he does not allege that the claims are identical or obvious variants of each other such that the claims in one application would necessarily preclude claims contained in the other.”

The underlined part above is the important take away as to what might constitute an actionable conflict, that is a conflict may exist when preparing or prosecuting patent applications for different clients when the “claims are identical or obvious variants of each other such that the claims in one application would necessarily preclude claims contained in the other”.