I recently came across a LinkedIn post regarding a dilemma that plagues attorneys—our responsibility to advise clients regarding the pros and cons of certain courses of action, which sometimes may entail turning business away. Now more than ever, with the current COVID-19 pandemic, lawyers are struggling to keep their firms afloat, with many “Am LAW 100” firms slashing attorney and staff compensation, and solo practitioners shutting their doors.
The LinkedIn post described the hypothetical facing patent attorneys as a “motivation to encourage clients to pursue a patent even when the client's invention may be unpatentable, and to downplay the associated risks of filing for such a patent.” While the author noted that he had his own method of reconciling the issue, he solicited the thoughts of others. But where is the ethical line with balancing offering a practitioner’s services and running a successful law practice?
During economic downturns, attorneys are seemingly more likely to take on work that they would normally shy away from—often out of necessity. While hindsight is 20/20, attorneys should carefully analyze the risks of harm to their reputation, license, and of course the malpractice risk with taking on work that they be unprepared for. Noting that there may be a multitude of societal issues and business considerations, this ethics-focused blog will examine the ethics considerations of advising clients, while balancing a practitioner’s own interests under the USPTO Rules of Professional Conduct. To aid us, we will add some facts to the hypothetical by assuming that the practitioner is being asked to patent software, and has no experience in that area.
As a starting point, the rules make it clear that practitioners must have the skills to provide competent representation. See 37 CFR 11.101. While years of experience are often confused with competence, even newly minted practitioners may provide competent representation through the practitioner’s study of the law, or by association with other practitioners. While for the average lawyer, competence may be as simple as understanding the substantive law, patent attorneys must also have the technical knowledge to perform the legal service. Take for instance, a patent litigator who comes across a client needing prosecution services for software. That patent litigator must not only be competent to prosecute patent applications from a legal perspective, but must also have the requisite understanding of the technology. While the USPTO does not limit patent attorneys to their technical specialties, the ethics rules may pose some limitations, based upon the attorney’s competence.
As a follow on, and directly related to the hypothetical above, practitioners have a duty to “… explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation.” See 37 CFR 11.104. While the amount of information may vary, based upon the client’s sophistication, as a general matter, a practitioner should provide concrete facts and information to help the client make a decision. Under these two ethics rules, the practitioner above needs to ensure not only that they have the competence to understand software patents (and their limitations), but also are able to properly communicate the information to the client in a way that allows them to make an informed decision. For example, in helping the client decide whether to seek patent protection, can the practitioner explain the Alice, obviousness, and enablement?
Of course, even with a thorough explanation, there is no guarantee of success (and patentability). So when the client asks for the practitioner’s recommendation, what should they say? While the conflicts provisions of the USPTO Rules of Professional Conduct do not directly address this issue as a personal conflict of interest, it would appear they come quite close. Generally speaking, beyond the competence issue, practitioners should consider the benefits of thoroughly explaining the material risks and alternatives of the course of action—for example, can the client benefit from utilizing a trade secret, or can the client afford for the patent to not be granted. Indeed, clients often appreciate the candor of attorneys, but want the sage advice applicable to scaling their idea.
Practitioners will benefit from taking a step back after performing a client intake. Prior to providing that direction to a client, the practitioner should self-reflect regarding their own risks to their reputation and license, as well as the malpractice risk if, during a tough economy, the client felt ill informed about the process and was unhappy they “did not get what they paid for.” As practitioners, we tell our clients to pause and reflect, so why shouldn't we?
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