Corrections and Conflicts of Interest

Rule 7 of the IPReg Rules of Conduct, which applies to Chartered Patent Attorneys in the UK, states (in part) that "A regulated person must not act where his interests conflict with those of a client or of a former client". There is a proviso that allows such a conflict to continue, provided "all of the parties have given their informed consent in writing", but a regulated person "must, however, refuse to act on behalf of conflicting or potentially conflicting parties in contentious matters, in circumstances where the regulated person's actions would not be seen to be neutral or where accepting instructions from both parties would risk a breach of Rule 5 [carrying out professional work in a timely manner and with proper regard for standards of professional service and client care] or Rule 8 [keeping the affairs of clients and former clients confidential] cannot be observed".

Bearing the above in mind, I will set out a possible situation. Let's say you are a patent attorney doing a typical task of engaging a new client (Mr S), who wants to get a UK patent application prepared and filed. You work with Mr S and get the application prepared and filed in November 2017, filing it in his name without paying any fees. So far so good. All seems to be in order, and you wait until near the time for sorting the fees out by the first anniversary. However, ten months afterwards in September 2018 you find out that your client has decided to engage the services of a different patent attorney by filing a Form 51 himself. While unusual, this is not unheard of and Mr S is perfectly within his rights. You then, for the avoidance of doubt, on 17 September 2018 confirm to the UK IPO that you withdraw your representation. Normally that would be an end of it as far as you are concerned. While you might be disappointed to lose your client to a bigger firm of patent attorneys, there is nothing you can do about it. However, shortly after withdrawing your representation you are contacted by Mr H, who says that he worked with Mr S in developing the invention you prepared and filed the patent application for. Mr H is in an ongoing dispute with Mr S about the invention and the company Mr S has set up to commercialise it, and there is a disagreement about who should be named as inventor and applicant on the application. Mr H seeks your advice on what you can do to help him with this, now that you no longer represent Mr S.

At this point, even without having to consult the IPReg Rules of Conduct, you should of course inform Mr H that you unfortunately cannot act for him because this would conflict with the interests of Mr S, your former client and doing so would be against the rules. You advise Mr H that there are plenty of other patent attorneys he can choose from, pointing him in the direction of the register of patent attorneys on the IPReg website. Although unhappy not to be able to engage your services because you already have a good knowledge of the invention, Mr H would then go off to engage someone else and you can then get on with other less contentious things. 

However, this is not what actually happens. Instead, three days after confirming your withdrawal of representation to the UK IPO, you write to the IPO seeking a correction under Section 117 to the applicant, which you had previously identified as Mr S on filing the application, asking that Mr H is also named as applicant and inventor. After some head-scratching, the IPO informs the new representative about the request for correction. Unsurprisingly, the new representative objects and the IPO then decides to refuse the request, suggesting that a reference under Section 8 (entitlement) should be filed to resolve any dispute over who should be identified as inventor and applicant. You nevertheless persist in arguing that a correction under Section 117 should be allowed. The new representative, of course, disagrees and the dispute eventually results in a hearing being held to resolve the issue. In the view of the hearing officer, Section 117 cannot be used to circumvent the more specific legal provisions of Sections 8 and 13, in line with the well known principle generalia specialibus non derogant (the general cannot overrule the specific). You argue that you knew that Mr H was a co-inventor at the time of filing the application but failed to enter his name in error. The hearing officer, however, does not believe you because the error was not the result of a single isolated oversight on Form 1 but also involved stating that all the applicants were inventors and that there were no other inventors. In other words, in the hearing officer's view, you positively affirmed that there were no other inventors when filing the application, making the possibility of this being an error very unlikely. The error was also not noticed until nearly a year afterwards, and only shortly after you withdrew your representation. The hearing officer, unsurprisingly, refuses your request for correction. 

What I am wondering about now is not whether the decision to refuse the correction was correct, as it was clearly a complete non-starter, but instead what position you, as a regulated patent attorney, are now in. Have you acted in accordance with the Rules of Conduct? If not, what should happen? As you might have guessed by now, the situation is not hypothetical but actually happened*. The case can be easily found by those who know where to look.

*UPDATE 17/9/20: Based on information I have received since the above post was published, the hypothetical case could have been slightly different to how I have put it, although given that the actual details are not on the public record it not possible to tell. Let's suppose instead that you were acting for both Mr H and Mr S originally, being instructed principally by Mr S. After the application was filed, Mr S got involved in a dispute with Mr H and, being named as sole applicant, took the patent application with him to the new representative. Does this alter the conclusion about whether there was a conflict?

UPDATE 18/9/20: Following several discussions about how the scenario might possibly be interpreted as not resulting in a conflict, one possibility raised is that your client was originally, and continued to be, Mr H. It might then be argued that continuing to represent Mr H would not be a conflict, since he was always your client and he was the one who paid the bills, while Mr S was only the inventor and applicant. This would require Rule 7 to be interpreted to exclude Mr S from being your client, thereby excluding you from being conflicted. Unfortunately for you, this runs against the definition of "client" provided in Rule 1, which is given as "the principal on whose behalf a regulated person acts as agent and includes any person for whom the regulated person is address for service for any right regardless of the nature of any current relationship". Mr S was the named applicant and you were identified as the address for service in communications from the IPO before Mr S took representation elsewhere. Mr S was therefore a client within the meaning of the rules, becoming a former client afterwards, whether or not Mr H was as well. I wonder if anyone can think of a plausible way around this. 

Intransigent Inventors and Switching Sides

I wrote a while back about a case involving inventors refusing to sign forms for a US application. In that case, the application had been assigned to another company after the original applicant went bust. The inventors, who were directors of the original applicant company, unsurprisingly became uncooperative once the new applicant took over, and refused to sign declaration and assignment documents for a subsequent US application. The case was resolved by a UK IPO hearing officer deciding in favour of the new applicant because the original intention was to have the application to proceed in the name of the company and not the inventors. It undoubtedly helped the new applicant's case, however, that neither inventor filed anything in their defence, which resulted in the claimant's case being considered to be supported (according to Rule 77(9)).

As I mentioned at the time, cases relating to entitlement under section 12 (relating to foreign and international patents and applications) do not come up very often. I was therefore interested to see that another one was decided last month. This was the case of University of Warwick v Dr Geoffrey Diamond, published as BL O/518/15. The case concerned US application 12/306,505, which happens to have been recently allowed by the USPTO, although the UK proceedings were initiated over two years ago while the application was undergoing examination.

The issue related, as before, to an inventor refusing to sign declaration and assignment documents for the US application. The application identified three inventors, two of whom were cooperative. Dr Diamond, however, refused to sign. Unlike in the earlier case, he contested the claim, and argued that the University had no right to his contribution to the invention. Instead, he argued that his contribution belonged to a company, G-Tronix, which had been spun out from the University and at one point had all of the inventors listed as directors but by the time the proceedings were issued had only Dr Diamond as director (and has now been dissolved).

By the time the hearing took place in June this year, it appears that Dr Diamond had caused the University a great deal of difficulty (and, presumably, expense), having caused the hearing officer at the IPO to issue two preliminary decisions (BL O/208/14 and BL O/225/15), one of which Dr Diamond appealed to the High Court (and had struck out). The argument was largely about whether Dr Diamond was, at the time the invention was made, employed by the University in a capacity where section 39 would indicate that the invention belonged to the University. Dr Diamond argued that he was not, although his arguments were somewhat confused and contradictory. He initially argued that he was employed by G-Tronix but, when cross-examined, said that this was a "slip of the pen". He was also quite vague about how early prototypes of the invention were developed, even though he claimed that they were developed in his workshop at home, and did not appear to have any knowledge of how some of the figures in the patent application were prepared, even though they formed a key aspect of the invention. The hearing officer found Dr Diamond to be unconvincing and not a credible or reliable witness, although did not go so far as to find him dishonest.

You might think that this would fatally damage Dr Diamond's case, but you would be wrong. Since the proceedings were initiated by the University, it was down to them to establish that they were entitled to the invention, and not for Dr Diamond to prove that he was instead. Unfortunately for the University, they failed to do this to the hearing officer's satisfaction. Even though the hearing officer was fairly sure that the invention was made before the inventors became directors of G-Tronix, and Dr Diamond was working with the other inventors at the time, the evidence of whether the invention was made in the course of Dr Diamond's normal duties was not particularly strong on either side and the claimant had failed to show that the invention belonged to them. This left the US application having to proceed in joint names, and presumably with neither side being particularly happy about the outcome.

The moral of the tale in my previous story about section 12 proceedings was that it was sometimes necessary to use a sledgehammer to crack a nut. This time though, to extend the metaphor a bit further, I would say that if you need to use a sledgehammer you should make pretty sure that you have a good one as sometime the nut can be more difficult to crack than you first thought.

As a postscript, while looking through the prosecution files for the family of applications relating to the one in question, I noticed something odd. The US application forms part of a family that includes international application PCT/GB07/050368, which was published as WO 2008/001141. This entered the European regional phase in January 2009 as European application number 07733789.7. In the decision the hearing officer mentioned a few times the patent attorney who was responsible for the PCT application, who Dr Diamond had met and apparently liaised closely with for preparation of the application. This same patent attorney was also responsible for making a request for the application to enter the European regional phase, as evidenced by his electronic signature on the request form. The next year, however, in July 2010 the EP register shows a change of representation, with another representative from the same association of patent attorneys becoming responsible. This is all fairly standard, as representatives change fairly often and responsibilities for applications can change. What happened afterwards, however, was not normal. Only three months later, in October 2010, third party observations were filed, attacking the validity of the application. These were prepared and filed by the same attorney who was originally responsible for the application, but was apparently now representing someone else, having left his previous employ and set up by himself. This other party was identified only as "a well established manufacturer [who] is monitoring with interest the prosecution of this European patent application". Further observations were filed in March 2011 by the same attorney. None of this prevented the application from going on to be granted, which it did in 2012, although the examiner did use the prior art cited by the third party in raising an objection of lack of inventive step in a summons to oral proceedings.

Switching sides is something that would obviously raise alarm bells for any patent attorney. If you were involved with preparing, filing and prosecuting a patent application, it would be a clear conflict of interest to then work for another party in trying to knock down the same application. This is made quite clear in the IPReg Code of Conduct, Rule 7 of which states:

"A regulated person must not act where his interests conflict with those of a client or of a former client, or where he knows or has reasonable grounds for suspecting that the interests of any partner or regulated person or staff of his firm, conflict with those of a client or of a former client.

Provided in all the circumstances it is reasonable to do so, a regulated person may act for two or more clients, or for a client as against a former client, in relation to the same or a related matter in a situation of conflict, or possible conflict but only if all of the parties have given their informed consent in writing."

What I wonder is whether the University gave permission for the attorney to switch sides and start attacking the patent application that he originally prepared and filed. I would be very surprised if they did, since I cannot see how it could possibly be in their interests to do so, but this seems to me to be the only way that this would avoid a clear breach of the IPReg code.