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 Mr H seeks your advice on what you can do to help him with this, now that you no longer represent Mr S.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.