(For readers wanting more information about the disciplinary procedures in Australia, see our recent article So You Wish to Register a Complaint?)
Naming names?We have avoided naming any of the parties involved in this case. This is not to conceal the identities of the attorneys against whom the complaint was made, or their firm. They are named in the Tribunal’s decision, which is available for all to read from the link below.
The Tribunal determined that no further orders of disciplinary action should be made. In doing so, it took account of the fact that the powers to discipline a practitioner are intended to protect the community, rather than as a punishment. There are, of course, inevitably punitive consequences to any adverse finding, for example damage to reputation, regardless of the extent of disciplinary action.
It is not our place to question the Tribunal on this finding, and there does not appear to be any reason to do so. Naming the parties in a blog which tends to rank highly in web searches directed to Australian patent law and practice might result in unintended adverse – and therefore punitive – consequences for those parties. We have therefore elected not to name names here, and trust that readers will understand and respect this decision.
- while it is common (probably unavoidable) that attorneys and firms in a market of Australia’s relatively small size may act for multiple clients which may be commercial competitors, there is no general agreement in the profession as to precisely how and when a situation of conflict arises with regard to such clients;
- the duty to avoid conflicts is fiduciary in nature, i.e. it arises from the duty of the attorney to give undivided loyalty to the client, and always to advise and act in the client’s best interests;
- a conflict therefore inevitably arises when two clients have conflicting interests, for example if advice given to one client may impact adversely on another, or if an attorney is aware of confidential information relating to one client which would influence the advice given to the other client;
- the duty to avoid conflicts is not limited to individual attorneys, but extends to a firm, even if there is no explicit information-exchange between different attorneys acting for the clients in question; and
- on a practical level, if a client decides that an attorney has a conflict, and asks for their files to be transferred to another firm, it is very likely that a great deal of trouble, expense and distress may be avoided by simply complying with the request, rather than arguing the point!
The Tribunal also concluded that the senior attorney (and presumably the junior attorney also) would now have a fuller understanding of the duty, and that of the firm, ‘to avoid situations of conflict, or possible conflict of interest and the duty to resolve any such situation.’
The Tribunal’s decision – which is available on the web site of the Professional Standards Board [PDF, 2.4MB] – should be compulsory reading for all Australian registered and trainee patent and trade marks attorneys. It will also be useful to providers of legal and other professional services, in order to clarify the issues around conflicts of interest.
FIRST SIDE OF THE STORY – CLIENT AOne way to understand what happened in this case is to put yourself in the shoes of the party identified by the Tribunal as Client A.
In 2004, you engage a firm of patent attorneys (let us call them Firm C) to assist you in protecting a new invention you have devised. You work in particular with two of their attorneys – a senior partner S and a soon-to-be-qualified assistant / junior attorney J. They prepare and file a complete standard Australian patent application in 2004, and in 2005 you also proceed with applications in the United States and Canada.
Things go well commercially with your product, and by early 2007 you have a US patent granted, and your Australian application is accepted.
At around this time you discover that Company B is selling a product which competes directly with your invention. A representative of Company B informs you that its product is covered by a patent application filed through Firm C. i.e. that ‘Company B’ is, in fact Client B! You are not at all happy about this.
You are even less happy when you speak to the junior attorney (J) at Firm C, hoping that you will be able to take action to prevent the ongoing sale of Client B’s product, and are informed that, in the attorney’s opinion, the competing product is different and does not infringe the claims of your patent application.
The attorney then advises you in writing that another attorney at Firm C has prepared and filed a provisional application for Client B, but cannot give you any more details because the provisional application is not published.
On a more positive note, attorney J informs you that there is still time to file a divisional application based on your accepted Australian patent application with broader claims that may (if valid) capture the product sold by Client B. However, your attorney advises that while the firm can assist with the preparation, filing and prosecution of this application, if claims were granted which would be infringed by Client B then the firm would be unable to act in relation to the infringement issues, due to the conflict.
SECOND SIDE OF THE STORY – CLIENT BNow put yourself in the shoes of Client B. You will not find yourself to be any happier!
You devise your first invention, and started working with Firm C in 2001. You end up abandoning your first Australian patent application after receiving an adverse examination report. But by this time you have made some changes, and in 2006 a new provisional application is filed. You have had some interest in the United States, and you are hopeful that your improved invention will prove to be patentable.
Subsequently, you discover that Firm C is also acting for your competitor Client A, which claims to have a patent which you may be infringing.
You speak with your attorney at Firm C, who informs you that a potential conflict situation has arisen as a result of another attorney at the firm acting for Client A. Your attorney informs you that the firm is working with Client A to resolve the issue, but that if this cannot be achieved then the firm would be unable to act in relation to the conflicting matters.
Nonetheless, your attorney assures you that regardless of the outcome, the firm will attend to filing of a complete standard patent application in relation to your improved invention before the provisional expires, to ensure that your rights are not endangered.
THIRD SIDE OF THE STORY – FIRM CNow consider the position of Firm C, placing yourself still in the shoes of either Client A or Client B.
In light of the above events, Firm C – and more particularly the senior attorney (S) who had been acting for Client A since 2001 – maintains that there was no conflict.
In particular, the position of Firm C is that no conflict exists until such time as an actual legal dispute arises between Client A and Client B. And since the firm’s opinion, up to this stage, is that neither client’s product infringes any patent claims of the other client, the conclusion reached by the senior members of the firm is that there is no conflict.
Indeed, so confident are they of this position that they are undeterred even upon receiving a letter from a firm of solicitors representing Client A. The letter contends and requests that:
- it is apparent that Firm C has been acting for a number of years for both Client A and its primary competitor Client B;
- as a result, Firm C now finds itself in an ‘insoluble conflict of interest position’ and can no longer continue to act for either client;
- the firm must now therefore transfer all of Client A’s files to a nominated alternative firm of patent attorneys; and
- the firm must further provide a written undertaking that it will not disclose any of Client A’s confidential information to Client B, including the reason that Firm C can no longer act for Client B.
Subsequent to these events, Client A lodges a formal complaint with the Professional Standards Board against the attorneys S and J, which leads to both being charged with unsatisfactory professional conduct.
WHAT DO YOU THINK?The above scenario raises two questions. The first is whether Firm C had a conflict of interest at any time. The second is – if so – at what stage did that conflict arise?
Assuming there was a conflict, there appear to be a number of possibilities as to when this arose:
- when Firm C’s attorneys S and J first took on Client A in 2004;
- when attorneys S and J filed a patent application for Client A in 2004;
- when Firm C filed a new provisional application for Client B in 2006;
- when Client A first informed attorney J about the encounter with Client B in 2007;
- when attorney J provided Client A with the initial advice that Client B’s product did not infringe Client A’s patent claims;
- when attorney J advised Client A of the existence of Client B’s provisional application;
- when attorney J advised Client A of the possibility of filing a divisional application in an effort to capture Client B’s product;
- when Firm C proceeded with filing a complete standard patent application for Client B, despite the ongoing concerns of Client A; or
- when attorney S rejected the accusations of conflict raised in the letter from Client A’s solicitors.
WHAT THE TRIBUNAL DECIDEDThe Tribunal pointed out (at ) that the duty of an attorney to avoid and resolve a conflict, or a possible conflict, is grounded in fiduciary law, which requires the fiduciary (in this case the attorney) to give his or her undivided loyalty to the client. The Code of Conduct also expressly states that an attorney must act in the best interests of the client.
An attorney is therefore required to avoid situations in which the duty to act in the best interests (including loyalty and confidentiality) of one client will conflict with that same duty to another client. These interests include commercial interests as well as legal interests. This duty has been held to require the attorney to be alert, at all times, to the possibility of a conflict arising. The duty extends beyond the individual attorney(s), to the whole firm. Thus, without the fully-informed consent of both clients, the fact that different attorneys act for each of the conflicting clients is irrelevant, even though they may never share any information about relevant matters. (Tribunal decision, -.)
The Professional Standards Board contended that a potential conflict arose when Firm C took on client A, and that this became an actual conflict when Client A’s patent application was filed, with the potential to encompass Client B’s products. However, this conflict – if it existed – was resolved when Client A was forced to narrow its claims in view of objections raised by the US patent examiner, and so the Tribunal made no finding on this point.
In the opinion of the Tribunal (at ), a conflict unquestionably arose when attorney J advised Client A, on 24 August 2007, of the possibility of filing a divisional application which may encompass Client B’s product. This advice was plainly detrimental to Client B’s interests. This conflict remained when attorney S – as managing partner – responded to Client A’s solicitors on 11 September 2007, expressly denying the conflict and refusing to take action to resolve it (at ).
For this failure to act so as to resolve the conflict, the Tribunal (at ) found attorney S guilty of unsatisfactory professional conduct.
The Tribunal was more lenient with attorney J, considering (at -) that a number of factors weighted against a guilty finding:
- attorney J was not yet qualified when commencing work with Client A, was unaware of Client B, and was not at that time under a duty to avoid a conflict;
- the attorney supervising J at the time was, however, in a position to be aware of the potential conflict;
- after attorney J became qualified and registered as a patent attorney, there was never any reason to believe or to become aware that the work undertaken for Client A may be contrary to the interests of another client;
- attorney J took steps to identify the nature of the potential conflict as soon as it became apparent; and
- while attorney J acted against the interests of Client B in providing advice to Client A regarding a possible divisional filing, the purpose of this letter (as distinct from its dubious content) was to attempt to resolve the conflict.
COMMENTSSome readers will no doubt be surprised that any responsible professional would allow the situation described above to arise in the first place. Of course, such a judgement is easy to make when the facts are set out neatly and in isolation, with the full benefit of hindsight.
Fortunately, many Australian patent attorneys would not get themselves into this position. Ideally, an attorney or firm does not take on a client if the potential for conflict is unacceptable. The possibility of acting for two direct competitors in a limited market is something that should be identified early, and avoided.
No initial conflict checking procedure is perfect, because it inevitably depends to some extent upon subjective evaluations, and imperfect information and recollection. It cannot be done entirely on the basis of electronic records, because the possible range of legal and commercial issues which could arise are complex and cannot be fully and consistently recorded.
In this case, there was clearly a second chance to identify and resolve the potential conflict before it eventuated, when Clients A and B became aware of one another, and informed Firm C in 2006.
Even so, there is a lack of agreement amongst patent and trade marks attorneys in Australia as to exactly how conflicts should be identified and resolved. The Professional Standards Board provided evidence of one senior member of the profession who testified to his opinion that Firm C was clearly in a conflict situation at least from the time that Client A discovered, and complained about, the firm’s acting for Client B in August 2007. However, two other senior members of the profession provided completely contrary evidence on behalf of attorney S.
The Tribunal agreed with the Board’s expert (at ). This is therefore something which must now be taken into account by those members of the profession who would have sided with attorney S.
As a final note, attorney J was perhaps fortunate to have received relatively lenient treatment. Clearly the example set by at least one very senior member of Firm C would have made it difficult for J to appreciate the correct course of action in the circumstances. Nonetheless, any qualified and registered attorney is entitled to act independently on behalf of clients, and inexperience is not, in itself, a defence to charges of unsatisfactory conduct.