IP: Subject matter conflicts of interest in patent prosecution – Case law

Vaxiion Therapeutics v. Foley & Lardner provides an important example in avoiding conflicts of interest

As discussed in the introductory article of this series, conflict of interest issues are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts of interest. This type of additional conflict search is not related to the inventors, assignee or research team, but is directly related to the patent application disclosure.

There are several key cases to show how this type of conflict is problematic and what it can do to a client relationship and to the client’s perception of whether the attorney is representing that client zealously. The first case that will be reviewed in this series is Vaxiion Therapeutics v. Foley & Lardner in the Southern District of California.

The malpractice lawsuit related to a breach of fiduciary duty and dual representation of adverse interests (among other things) arose from that failure to file the PCT application for Vaxiion on time. While the case ultimately settled, some interesting information came from the court. First, the court said that it was unnecessary to show that attorneys in San Diego communicated Vaxiion client confidences to their colleagues in the D.C. office who were representing EnGeneIC. In addition, the court pointed out that ethical rules in different jurisdictions (California, D.C. and USPTO) may have different implications.

Ultimately, two acts in advance of the EnGeneIC representation could have negated or dramatically minimized the subject matter conflict issues in this case. First, Vaxiion should provide a list of competitors to Foley and request that they not represent any company or individual on that list. That list should be put into Foley’s conflict system as “adverse parties” or “related parties”, so that a conflict search will flag those companies. Vaxiion should also update that list with outside counsel as needed.

Contributing Author

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Sandra P. Thompson

Sandra P. Thompson, J.D., Ph.D., is a Shareholder in the Orange County office of Buchalter Nemer. Her practice focuses on intellectual property, specifically, patents and...

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