Conflict of interest

P. Rosenich (LI), Chair Disciplinary Committee

The Chairman of the Disciplinary Committee Paul Rosenich is of the opinion that the latest Decision of Chamber Dina Korper is of general Interest to the epi Members. For that reason a summary of said decision prepared by the Chairman is published.

Summary of the complaint and the defense

The complainant was of the opinion that the defendant breached Art. 4(f) of the Code of Conduct of the Institute of Professional Representatives (CoC) and Art. 3 (2) of the Regulation on discipline for professional representatives (RD) because the defendant was previously the representative of a national part of a European Patent of which European Patent the defendant later represented the opponent.
The defendant proved to the satisfaction of the Chamber that only administrative tasks were performed for the patentee on the national level of procedures. Furthermore, the defendant had - apart from the publicly available information - no knowledge of the matter due to the restricted involvement of the defendant’s IP-law firm.

Decision

From the wording of the relevant provisions (see below) the Chamber found that they are directly aimed at punishing the use/disclosing of confidential information acquired while dealing with a “particular matter” entrusted by a client, as long as such information does not belong to the public domain. Accordingly, as a “particular matter” should be understood a substantial work - e.g. drafting a specification, since this activity provides insider knowledge on eventual weaknesses of a patent. Clerical work, such as acting as a “mail box” of the client at a national patent office or translating published patent specifications, which holds only information which are fully accessible by the public however does – according to that Chamber - not fall into the meaning of “ a particular matter”. The definition of “particular matter” is corroborated by the relevant provision of Art. 2 of the RD, which refers to information acquired from the client “in confidence”.
The Chamber of the Disciplinary Committee has therefore dismissed the complaint.

Relevant Regulations

Art. 2 (RD) “Professional secrecy”: A professional representative shall be bound not to disclose
information accepted by him in confidence in the exercise of his duties, unless he is released from this obligation.
Article 3 (RD) “Special provisions on conduct towards clients” § 2: A professional representative shall refuse or withdraw his services if acceptance or continuation would necessitate his dealing with a particular matter on which he has represented or advised another client with opposing interests and the conflict has not been resolved.
According to Art. 4(f) (CoC) “Relations with Clients”: Supplementary to Art. 2 and 3 (RD), a member shall not take any action against a particular matter which is being handled or has been handled by the Member or another person in his office, unless the client in the matter agrees to this action or unless the Member has no cognizance of the matter and is no longer in a position to take cognizance of it. The Member is not permitted to make use in the action of information obtained during the time the matter was previously handled, unless the information is public.

The Chairman of the Disciplinary Committee reminds the epi Members that Chambers of the Disciplinary Committee are – like Chambers of the EPO Boards of Appeal - independent in their Decisions and that Appeals are open only for the Defendant and the President of the EPO as well as the President of the epi.