The Attorney's Conflict and the Deadline
You are a patent attorney at a mid-sized firm. On Monday you are instructed by Riverina AgTech to draft and file an Australian standard patent application. The invention is a variable-rate seeding controller; the priority deadline is Friday. On Tuesday, a long-standing client, Murrumbidgee Precision, sends you a draft specification for a 'seeding rate controller using soil-moisture feedback' and asks you to review it for patentability before it files. On Wednesday you realise the two inventions overlap substantially: Riverina's controller uses soil-moisture feedback to vary seeding rate, and Murrumbidgee's draft describes the same feedback loop with a different sensor arrangement. You have already received Murrumbidgee's confidential draft. You have not yet filed Riverina's application. Murrumbidgee is not aware of Riverina's work.
1. Identify the ethical and professional conduct issues and state what you must do before Friday.
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Issues.
- Confidentiality. Murrumbidgee's draft is confidential information received in a client relationship. You must not use it for Riverina's benefit, and must not disclose it to Riverina. This is a core duty under the profession's code of conduct and at general law.
- Conflict of interest. You now hold confidential information from one client that is materially relevant to the other client's matter, and the two clients are potentially adverse (their inventions overlap). A solicitor/attorney cannot act for both where the confidential information is or may be relevant, and cannot act for one against the other without informed consent from both.
- Duty to the client (Riverina). You owe Riverina competent and diligent service and must meet the Friday deadline if possible, but not by misusing Murrumbidgee's information.
- Duty to the client (Murrumbidgee). You owe it the review it asked for, but you cannot continue if doing so would breach Riverina's confidence or create a conflict.
What you must do before Friday.
- Do not use Murrumbidgee's draft in drafting Riverina's application. Draft Riverina's application solely from Riverina's own materials.
- Isolate the files - physically and electronically - and inform the firm's conflicts partner.
- Notify both clients of the conflict, in general terms, without disclosing either client's confidential information. Seek informed consent to continue acting for one of them, with the other referred to independent counsel.
- If consent is not obtained, cease acting for one client (normally the later one, but the firm's conflict policy and the risk of misuse of information govern) and refer it out promptly so the Friday deadline can still be met by new counsel.
- Consider whether Riverina's application can still be filed by Friday through a different attorney at the firm who has not seen Murrumbidgee's draft, with an ethical screen. If the firm cannot screen effectively, Riverina must be told immediately so it can instruct another firm before the deadline.
- Document all steps taken.
2. Murrumbidgee asks you on Thursday: 'Has anyone else filed anything like our controller?' What may you say, and what may you not say?
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You may say:
- You may explain the general legal position: that Australia is a first-to-file system, that publication anywhere before the priority date is prior art, and that a search of published databases (AustLII, IP Australia's AusPat, Espacenet, WIPO Patentscope) can be commissioned.
- You may say that you cannot comment on other clients' matters and that you have not been instructed to search on their behalf.
- You may recommend a freedom-to-operate or patentability search and offer to commission one.
- You may advise on confidentiality and timing: file before any publication or disclosure.
You may not say:
- Anything that discloses or hints at Riverina's work, its filing intention, or the content of its application. Even a 'yes, someone is working in that area' would breach confidence and would be a use of Murrumbidgee's information against Riverina.
- Anything that misleads Murrumbidgee into thinking no one else is active, if that would be a misrepresentation. Silence on other clients' matters is permissible; a false denial is not.
- You may not use Murrumbidgee's question as an opportunity to shape Riverina's filing (e.g. by adding Murrumbidgee's sensor arrangement to Riverina's claims).
Practical answer: 'I can't discuss other clients' matters. What I can do is run a patentability search and advise you on filing strategy and timing.' If the conflict is unresolved, the answer should come from the attorney handling Murrumbidgee after the screen, not from you.