Patent Ethics Update and Query

Thanks to Mercer University Law School Professor David Hricik at the Legal Ethics Forum for pointing to two different authorities that have so far held that it is per se unethical for a lawyer to provide a non-infringement or invalidity opinion about another client's patent. Va. Op. No. 1774 (Feb. 13, 2003); Andrew Corp. v. Beverly Mfg. Co., 2006 U.S. Dist. LEXIS 6360 (N.D. Ill. Feb. 16, 2006) (non-infringement). "Andrew is particularly worrisome (and wrong)," writes The Ethical Professor "because it concludes that an opinion given by a conflicted lawyer is 'incompetent' as a matter of law, and therefore inadmissible to defend against a charge of willful infringement.

In another post, Professor Hricik points to an opinion by a panel of the Federal Circuit that "held that the enforceability of a patent is determined by the 'would the information have been important to a reasonable examiner' standard, and not the (arguably) narrower standard established in 1992 in 37 CFR 1.56."

Hricik has also generated quite a few comments on a common dilemma for patent prosecutors: "Lawyer in prosecuting application for Client A receives an office action rejecting a claim over a prior art reference. Lawyer looks, and that reference is owned by another Client, Client B. Is this a conflict at all?" According to The Ethical Professor,

Some people say that any response by the lawyer constitutes an adverse
representation, even if the firm had nothing to do with obtaining the prior
patent, and even if the firm's representation of the client who owns that patent
are completely unrelated to the subject matter in prosecution. Others say
that, in the abstract it's not a conflict, but can become one where, for
example, the lawyer would be arguing that the client's patent is invalid (say,
e.g., that it lacks support for the breadth argued by the PTO). Others say
that that even that isn't an adverse representation.

Read the comments and/or give Professor Hricik a piece of your mind on this issue here.