Mass. Sup. Ct. Schedules Oral Argument on Subject Matter Conflicts in Patent Prosecution

Michael E. McCabe, Jr.Conflicts of Interest, IP Ethics, Malpractice0 Comments

Maling flame imageHow close is too close?  That is a question that has perplexed patent attorneys who prepare and prosecute patent applications for multiple clients in the same, or similar, fields of technology.  At least one state appeals court has decided to take this question head on.

As previously reported in our January 2, 2015, posting, the Justices of the Supreme Judicial Court of Massachusetts are soliciting amicus briefs regarding the issue of whether a conflict of interest exists when attorneys in the same law firm simultaneously represent two different clients in prosecuting patents on similar inventions.  See Chrisopher Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, SJC-11800.

The case is presently set for oral argument on either April 6, 7, or 8, 2015.  Amicus briefs are due within two weeks of the oral hearing.  Consequently, if the hearing schedule holds, amicus briefs may be due as early as Monday, March 23, 2014.  According to the court’s public docket, to date no amicus briefs have been filed in this case.

As previously discussed, this action arises from a lawsuit for malpractice filed against IP firm Finnegan Henderson by a former client and solo inventor, Christopher Maling.  The complaint alleged that two different offices of the Finnegan law firm were simultaneously prosecuting patent applications on allegedly “similar” eyeglass inventions for two different clients – Maling and a Japanese entity.  Although both clients were awarded patents, Maling sued Finnegan on the basis of an alleged conflict of interest.  According to Maling, he was allegedly unable to market a commercial version of his patented invention due to “similarities” between Maling’s patent and the other client’s patent.

Whether two inventions handled simultaneously by the same law firm are “similar” enough to raise an ethical conflict of interest, or give rise to potential malpractice liability, are issues of considerable importance to the intellectual property bar.  Clients who operate in the same field of technology routinely use the services of the same law firm to prosecute their patent applications because the firm has developed expertise in the relevant field of technology.  Moreover, once a lawyer of law firm becomes an expert in a particular field of technology, they should be able to provide their clients in their field of expertise with better services since those attorneys presumably will have developed a significant understanding of the state of the art.  Developing such specialized technical expertise can thus provide substantial economic benefits to clients.  A court decision that punishes a law firm or individual lawyer because that attorney or firm has developed expertise in a particular technical field ultimately hurts clients and may hinder the attorney’s or firm’s ability to represent more than one client in any particular field of technology.

There is still time for the intellectual property bar to weigh in on this important case.

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