Conflicts of Interest in Patent Prosecution before USPTO

GHM’s expertise derives from many years of representing different clients, some of whom focus on the same, similar, or related business or technology areas. Under unusual circumstances during patent prosecution, this can result in a conflict of interest. This page describes some of the issues and ramifications surrounding conflicts of interest.

By signing an engagement agreement, a client waives, to the maximum extent permitted by law, all conflict of interest claims relating in whole or in part to GHM’s representation of multiple current or former clients. In granting this waiver, the client should consider the reasons why the client might be concerned about GHM’s representation of other clients who are seeking patents in the same, similar, or related business or technology areas. One reason is that, while GHM represents a client, GHM owes that client a duty of undivided loyalty and will not represent another party adversely to that client.

GHM does not believe that preparing and/or prosecuting patent applications (“patent prosecution”) is ordinarily adverse to any client, at least because it does not ordinarily involve an adverse party. Patent prosecution instead normally involves submissions by the applicant to the USPTO or a foreign patent office without the participation of any adverse party.

There are certain situations that can arise in patent prosecution, of which GHM would like clients to be aware. First, it is possible at some point that the USPTO or a foreign patent office might cite a patent or published patent application that GHM obtained or prepared on behalf of another client, as a basis to reject one or more of a current client's patent applications. Or, if a current client ever becomes involved in a patent lawsuit, it is possible the opposing party might try to use against the current client a patent or published patent application that GHM obtained or prepared for another client. Although GHM does not intend such a consequence, it is possible that a patent or published patent application that GHM obtained or prepared for another client might at some point necessitate narrowing the scope of the current client's patent claims, might prevent the current client from obtaining a patent, might be used to invalidate one or more claims in the current client's patent(s), or might be used as the basis of an infringement claim against the client. A client should understand, and by signing an engagement agreement agrees, that GHM cannot always identify such situations in advance, leaving open the possibility that a GHM attorney might prosecute a patent application for another client that, although GHM did not intend it, is later used in a way that is detrimental to a client.

As another example, the USPTO or a foreign patent office might cite one or more of a first client's issued patents or published patent applications as a basis to reject a patent application of a second client of GHM. In that situation, a GHM attorney representing the second client may need to discuss the first client's cited patent or published patent application in remarks submitted to the patent office on behalf of the second client, and those remarks may become public record. The issue the patent office normally would be considering in that situation, and which the attorney’s remarks would be addressing, is whether some aspect of the second client's pending patent claim(s) is disclosed (though not necessarily claimed) in the first client's patent or patent application. Such remarks by the attorney typically would not narrow or harm either clients' rights. By signing an engagement agreement, a client gives consent to attorneys at GHM to discuss the client’s patents or published patent applications in remarks submitted to the USPTO or foreign patent offices, when considered necessary to do so on behalf of other clients of GHM.

GHM is sensitive to the concerns that clients may have about the protection of their confidential information in light of GHM’s possible representation of their competitors or others working in the same, similar, or related business or technology areas. GHM will not use any of their clients' confidential or secret information on behalf of other clients and will limit their internal disclosure of their clients' confidential or secret information.

If a dispute arises between two or more of GHM's current clients, GHM will not represent any client in that dispute. If a current client of GHM proposes to enter into a business transaction with another current or former client, GHM will represent a current client adversely to another current or former client in that transaction only as permitted by the applicable law governing attorney conduct.

By signing an engagement agreement, a client also agrees and understands that it is possible for events to develop such that GHM deems its representation of two or more clients to be in conflict, where GHM did not previously view the representations to be in conflict (including situations to which the affected clients had given consent). If GHM concludes that a conflict has arisen such that GHM either must seek further consent or believes it advisable to do so, then GHM will either seek further permission to proceed or GHM will withdraw from representing one or both clients in the affected matters. Depending on the nature of the conflict, GHM might not be able to specify the reason for the withdrawal.

Note that some other lawyers might take a different view of some of the issues and situations discussed above. For instance, some lawyers might disagree regarding the point at which a conflict of interest can arise in patent prosecution. By signing an engagement agreement, a client acknowledges and understands GHM’s practices as described above. To the extent a client’s consent to such practices may be required, the client thereby provides such consent.

If a client has any concern about GHM’s practices, the client should raise that concern with GHM before signing an engagement agreement. GHM welcomes the opportunity to discuss any questions that a client may have or any special precautions a client may wish GHM to take in particular instances. If, for example, at the time of signing an engagement agreement, the client can identify any parties with whom they expect to be directly adverse in the near future (e.g., expected negotiations or litigation), the client should let GHM know immediately, so that GHM can evaluate any potential conflict issues that might arise.