Opinion on Representation from PCC
Summary of Enquiry
In this enquiry the Enquiring Member wished to establish whether it is permitted under the epi Code of Professional Conduct (and any other relevant epi provisions) to conduct patent work on behalf of a third party (which is not the Member’s employer) in the context of jointly-owned patent applications. In particular, the Member wished to understand whether he/she is permitted to draft and prosecute patent applications which are jointly owned by the employer and a third party.
The appointed PCC Chamber summarized the main issues that appear to be relevant as:
- Whether there is any prohibition, in any relevant epi rule or regulation, of working as proposed;
- Whether there is any prohibition, in any relevant non-epi rule or regulation affecting the work of European Patent Attorneys, of working as proposed;
- Whether questions of conflicts of interest, viewed in a general sense (both in terms of instructions received and (if relevant) being paid by two distinct entities in relation to the same task), may give rise to restrictions on practising as proposed; and
- On an auxiliary basis, and in general terms, whether national requirements concerning professional indemnity insurance or other conditions relating to practice as a patent attorney impede practising as proposed.
Relevant Provisions
epi Regulation on Discipline (“RDR”) Articles 2 and 3(2)
epi Code of Professional Conduct (“CoC”) Articles 4(a), 4(d), 4(f), 5(c) and 1(d)
The Chamber briefly reviewed Section 2.4.1 of the Code of Conduct for Representatives before the Unified Patent Court, but in view of confinement of the enquiry to drafting and prosecution of patent applications did not consider this to be of direct relevance.
Opinion
In the view of the Chamber the following provisions are unlikely to have effect while a Member provides representation for two or more client entities whose interests are mutually aligned. This seems to be the case regardless of whether either entity is the Member’s employer.
The following remarks are however likely to be of relevance in the event of the interests of the client entities (in the proposed scenario, the employer and a co-owner of patent rights) diverging while the Member is providing representation.
The Chamber strongly recommends that while any Member provides representation in the described circumstances he/she remains alert to possible divergences of interests of the co-owning entities.
Regulation on Discipline (RDR)
RDR Article 3(2) requires a professional representative to refuse or withdraw his [sic] services if acceptance or continuation would necessitate his [sic] dealing with a particular matter on which he [sic] has represented or advised another client with opposing interests and the conflict has not been resolved.
This Article imposes a clear obligation on a professional representative to take steps to avoid conflicts of interest based on historical work completed by the representative in question.
The Article does not prohibit working as proposed in the enquiry. Nonetheless the Chamber recommends reviewing past matters that the Member in question has handled and assessing whether any of them is likely to give rise to a conflict with work that is anticipated to arise under the arrangement outlined in the enquiry.
It may well be desirable to include, in any review, work tasks undertaken during previous employment. This may be the case if for example work during previous employment provided the Member with confidential information that could be relevant to work under the proposed arrangement. RDR Article 2 in any event obliges a professional representative to maintain confidentiality of any such information, unless a release from confidentiality is enacted.
It is difficult to be definitive about the extent of any review as proposed above. In the view of the Chamber the scope of any review should be reasonable in the circumstances. What constitutes a reasonable scope of review will vary from one instance to another. The Chamber suggests that any review should be such that the Member can be confident about identifying (as a minimum) any conflicts of interest.
Code of Conduct (CoC)
CoC Article 4(a) requires a professional representative at all times to give adequate care and attention to apply the necessary expertise to work entrusted by clients. A professional representative who potentially receives instructions from more than one client entity in relation to the same matter therefore must be alert to situations in which conflicting interests may prevent the provision of adequate care or the application of the necessary expertise, in the interest of both entities involved.
CoC Article 4(d) requires a representative to decline an order which is in conflict with the representative’s own interests. The Chamber considers the integrity of a representative’s conduct as an employee (or a business owner, when this is relevant) to be strongly related to his/her own interest. Hence Article 4(d) in the view of the Chamber prohibits behaviour that jeopardises the employment or other professional standing of the representative. The Chamber recommends that Members regularly review their compliance with this requirement in dealings with entities that jointly own any patent application that arises from the proposed work.
CoC Article 4(f) prevents a representative from taking any action against a particular matter which is being handled or has been handled by the representative or another person in the representative’s professional entity, unless the client in the matter agrees to this action or unless the representative has no cognisance of the matter and is no longer in a position to take cognisance of it. The representative 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.
Self-evidently this provision prohibits for example the filing of an EPO opposition against a patent in which the representative previously provided representation, unless one or more of the release conditions mentioned in the Article apply.
CoC Article 5(c) prevents a representative from conveying any view about a specific case, which the representative knows or suspects is being handled by another epi Member, unless the client in question declares a wish to have an independent view or change representative.
This Article does not directly apply to the scenario outlined in the enquiry. The Chamber does however recommend that Members have regard to this Article for example in the event of a co-owner instructing an independent representative.
Article 1(d) of the CoC operates such that in the event of any of the foregoing provisions preventing a Member from providing representation he/she must make sure that the interests of any entity identifiable as a client are safeguarded.
International Non-epi Regulations
As noted, among non-epi regulations only the UPC Code of Conduct appears to be potentially relevant to the described scenario. However, as also noted, this Code does not seem to be directly relevant and therefore has not been considered as part of the present opinion.
General Considerations
Codes of conduct and disciplinary regulations are underpinned by a clear and overarching requirement for professionals to behave ethically. This means that in the proposed scenario, regardless of any specific regulatory provisions as summarised above, Members must be alert to any divergence of interest of the parties that may instruct them.
Members should in the view of the Chamber plan for the possibility that a divergence of interests may arise. In this regard the Chamber recommends that before work commences under the proposed instructing regime the Member in question clarifies, with the parties involved, what is an acceptable way of dealing with any actual or potential conflict of interests.
One possible solution to a conflict is to arrange alternative representation for the entity that is not the Member’s employer, such that the Member remains free to continue working for that employer. However other forms of solution alternatively may be agreed. Regardless of the solution adopted, as mentioned it is recommended that it is agreed on by the parties before any work commences.
Obviously if a solution such as the foregoing is invoked the Member should proceed in a manner that complies with the RDR and CoC.
Another area in which the Chamber has some concerns relates to the Member’s remuneration for any work undertaken on behalf of the entities in question. The Chamber does not consider it desirable, on grounds relating to the reputation of the profession, for a representative to be paid more than once for any individual item of work.
It appears desirable to establish, preferably in writing, the instructing regime that will apply. In particular it would be useful to determine for example whether both the entities are entitled to instruct the Member; and, perhaps, whether all executives or only a limited number in each organisation has this right.
The Chamber recommends that members establish in writing, before the commencement of work, what is expected to happen in the event of a conflict arising. For example a Member may wish to say that in such a situation he/she would withdraw representation of the co-owning company and (to the extent permitted by the regulations discussed above) continue to provide representation of (solely) his/her employer.
National Law Considerations
It is beyond the remit of the epi Professional Conduct Committee to comment in detail on national regulations that affect the practice of professional representation in patent matters. Hence this advice is given only in the context of members’ work as professional representatives before the European Patent Office.
Members are nonetheless urged to have regard to such regulations, in particular affecting whether they are required to obtain professional indemnity insurance cover when representing a non-employer entity that with an employer co-owns a patent application. Members also are urged to establish whether any such regulations take priority over any of the provisions discussed above.
Conclusions
The Chamber having carefully considered the enquiry concludes that there are no prohibitions on a representative working simultaneously on the basis of instructions that may emanate from more than one entity, only one of which is the representative’s employer. However as summarised above there are numerous precautions that in the view of the Chamber should be observed in order to ensure compliance with the relevant disciplinary and conduct regulations and articles. These provisions are especially likely to become relevant in the event of divergence of the interests of the co-owning parties contemplated in the scenario.
Summary
In the view of the appointed Chamber, as long as the interests of the employer and the co-owning applicant entity are aligned there are no prohibitions, in regulations affecting the practice of European Patent Attorneys, on proceeding as outlined in the enquiry. As noted however it appears desirable to put in place certain safeguards that will take effect in the event of the interests of an application-owning employer and a co-owning entity diverging. Furthermore it appears strongly desirable to keep the question of the representative’s professional relationships with the parties under review, in order to be immediately alerted in the event of the interests of the parties diverging.
This opinion does not have regulatory force and is prepared with the intention to provide helpful assistance. An opinion provided in accordance with Article 7(c) CoC is not binding on the Disciplinary Bodies. No liability of any kind attaches to epi, its Professional Conduct Committee or any members of that Committee in respect of this opinion.
