Inventor Interviews: Covering potential conflicts of interest
An inventor seeking a patent attorney needs to be aware of what conflicts of interest are and how a patent attorney will screen for any potential conflict of interest at the beginning of an inventor interview. In fact, the patent attorney will typically screen for a potential conflict of interest before even scheduling an appointment for the inventor interview.
A patent attorney cannot accept the inventor as a client if doing so would result in a conflict of interest between the patent attorney's duties to a current client and to the inventor. Some types of conflicts of interest can be waived by the clients -- but that is beyond the scope of this article. This article will also not address potential or actual conflicts of interest between a former client of the patent attorney and a potential client.
In screening for potential conflicts of interest, the patent attorney will have at least three goals, which should be communicated to the potential client, the inventor. These three goals include: 1) Not forming an attorney/client relationship with the inventor until the patent attorney has determined that there is no potential or actual conflict of interest that would be created by accepting the inventor as a client: 2) Not receiving any confidential information from the inventor until the patent attorney has determined that there is no actual or potential conflict of interest; and 3) Obtaining from the inventor, the information necessary to determine whether an actual or potential conflict of interest would be created by the patent attorney accepting the inventor as a client. This article will discuss two types conflicts of interest and how a patent attorney screens for each type before or at the beginning of the inventor interview.
One type of conflict of interest is based primarily on the relationship between a current client and a potential client. For example, suppose the inventor conceived of an invention while working for Company A. The inventor now works for Company B. Now suppose the patent attorney represents Company A as a current client. There is at least a potential conflict of interest that would prevent the patent attorney from representing the inventor. Perhaps the inventor is under some legal obligation to assign the invention to Company A. If that is an issue, the attorney cannot represent both Company A and the inventor.
The above is an example of a conflict of interest that is based on the relationship between a current client of the patent attorney and a potential client of the attorney -- the inventor. To identify this type of conflict, the patent attorney will ask the inventor questions about current and previous employers and about the identity of others who might have some interest in or knowledge about the invention. Therefore, the inventor should be prepared to answer questions about these subjects. The inventor should initially, just answer questions posed by the patent attorney without volunteering any confidential information.
Patent attorneys also deal with what are sometimes called "subject matter" conflicts of interest. In this type of conflict, the attorney may have a current client that the inventor does not know, has never met, and has no relationship with. But the current client may have an invention that is too similar to the invention that the inventor has. For example, suppose the patent attorney represents a current client who has invented and is obtaining a patent for a talking toaster. Suppose the inventor has invented a talking microwave oven.
In representing the current client before the U.S. Patent Office, the patent attorney has a duty to disclose to the Patent Office "all information known to [to the patent attorney that is] material to patentability***." 37 CFR Section 1.56. The patent attorney has this duty because he is representing the current client before the U.S. Patent Office. Therefore, if the inventor, who is the potential client, tells the patent attorney about his invention, but wants the patent attorney to keep the information secret, the patent attorney might still have no choice but to reveal the talking microwave oven to the Patent Office, because it may be material to the patentability of the talking toaster. That is, the patent attorney may have a duty to take some action on behalf of the current client, that is contrary to the interests or wishes of the potential new client, the inventor. This situation could actually give rise to a variety of trouble scenarios -- some of which may be discussed in a later posting. The patent attorney could not accept the inventor as a new client.
Therefore, the patent attorney should avoid hearing about any details of the inventor's invention until the patent attorney determines whether there is a subject matter conflict. This can be done by the patent attorney first asking very generally what the inventor wants to do, for example, possibly file a patent application. The patent attorney may then ask the inventor to state in very general terms the type of invention he wants patented. Is it a mechanical invention? Is it a computer-related invention? Then the questions get progressively more detailed. If it is a computer-related invention, is a robotic invention? If at some point, the patent attorney determines that there is a substantial risk of a subject matter conflict of interest, the patent attorney will tell the inventor that the patent attorney cannot accept the inventor as a client. This will be done before the patent attorney obtains any details that would be material to the patentability of the invention of the current client. In other words, the interview must be handled with caution and care. The inventor should not volunteer details about the invention until the patent attorney is assured that there is no subject matter conflict of interest.
If no actual or potential conflict of interest would be created by the patent attorney accepting the inventor as a client, then and only then, should confidential information be obtained. The rest of the inventor interview can then proceed.
A patent attorney cannot accept the inventor as a client if doing so would result in a conflict of interest between the patent attorney's duties to a current client and to the inventor. Some types of conflicts of interest can be waived by the clients -- but that is beyond the scope of this article. This article will also not address potential or actual conflicts of interest between a former client of the patent attorney and a potential client.
In screening for potential conflicts of interest, the patent attorney will have at least three goals, which should be communicated to the potential client, the inventor. These three goals include: 1) Not forming an attorney/client relationship with the inventor until the patent attorney has determined that there is no potential or actual conflict of interest that would be created by accepting the inventor as a client: 2) Not receiving any confidential information from the inventor until the patent attorney has determined that there is no actual or potential conflict of interest; and 3) Obtaining from the inventor, the information necessary to determine whether an actual or potential conflict of interest would be created by the patent attorney accepting the inventor as a client. This article will discuss two types conflicts of interest and how a patent attorney screens for each type before or at the beginning of the inventor interview.
One type of conflict of interest is based primarily on the relationship between a current client and a potential client. For example, suppose the inventor conceived of an invention while working for Company A. The inventor now works for Company B. Now suppose the patent attorney represents Company A as a current client. There is at least a potential conflict of interest that would prevent the patent attorney from representing the inventor. Perhaps the inventor is under some legal obligation to assign the invention to Company A. If that is an issue, the attorney cannot represent both Company A and the inventor.
The above is an example of a conflict of interest that is based on the relationship between a current client of the patent attorney and a potential client of the attorney -- the inventor. To identify this type of conflict, the patent attorney will ask the inventor questions about current and previous employers and about the identity of others who might have some interest in or knowledge about the invention. Therefore, the inventor should be prepared to answer questions about these subjects. The inventor should initially, just answer questions posed by the patent attorney without volunteering any confidential information.
Patent attorneys also deal with what are sometimes called "subject matter" conflicts of interest. In this type of conflict, the attorney may have a current client that the inventor does not know, has never met, and has no relationship with. But the current client may have an invention that is too similar to the invention that the inventor has. For example, suppose the patent attorney represents a current client who has invented and is obtaining a patent for a talking toaster. Suppose the inventor has invented a talking microwave oven.
In representing the current client before the U.S. Patent Office, the patent attorney has a duty to disclose to the Patent Office "all information known to [to the patent attorney that is] material to patentability***." 37 CFR Section 1.56. The patent attorney has this duty because he is representing the current client before the U.S. Patent Office. Therefore, if the inventor, who is the potential client, tells the patent attorney about his invention, but wants the patent attorney to keep the information secret, the patent attorney might still have no choice but to reveal the talking microwave oven to the Patent Office, because it may be material to the patentability of the talking toaster. That is, the patent attorney may have a duty to take some action on behalf of the current client, that is contrary to the interests or wishes of the potential new client, the inventor. This situation could actually give rise to a variety of trouble scenarios -- some of which may be discussed in a later posting. The patent attorney could not accept the inventor as a new client.
Therefore, the patent attorney should avoid hearing about any details of the inventor's invention until the patent attorney determines whether there is a subject matter conflict. This can be done by the patent attorney first asking very generally what the inventor wants to do, for example, possibly file a patent application. The patent attorney may then ask the inventor to state in very general terms the type of invention he wants patented. Is it a mechanical invention? Is it a computer-related invention? Then the questions get progressively more detailed. If it is a computer-related invention, is a robotic invention? If at some point, the patent attorney determines that there is a substantial risk of a subject matter conflict of interest, the patent attorney will tell the inventor that the patent attorney cannot accept the inventor as a client. This will be done before the patent attorney obtains any details that would be material to the patentability of the invention of the current client. In other words, the interview must be handled with caution and care. The inventor should not volunteer details about the invention until the patent attorney is assured that there is no subject matter conflict of interest.
If no actual or potential conflict of interest would be created by the patent attorney accepting the inventor as a client, then and only then, should confidential information be obtained. The rest of the inventor interview can then proceed.
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