Conflicting Clients, a Confidential Notebook and a Subpoena
Attorney R is a registered Israeli patent attorney. Her firm filed an application for Client A on a microfluidic valve. R personally drafted the application and received A's confidential lab notebook. A year later Client B, a direct competitor, asks R's firm to draft a PCT application on a similar valve. The firm's conflict check shows no identical party name, but R recognizes A's inventor's name from the notebook. B refuses to identify its inventor until engagement. R's partner proposes a screen: a junior attorney would handle B, and R would have no involvement. A has not consented. R then receives a subpoena in litigation between A and B seeking her notes and correspondence about the valve.
1. May R's firm accept Client B's engagement with a screen? Analyze the conflict and confidentiality issues.
Read the worked answer
The firm should decline Client B. A screen is not sufficient on these facts.
- R personally received A's confidential notebook, which is materially related to the same microfluidic valve technology. The subject matter of B's proposed application is substantially related to A's matter.
- R has actual knowledge of A's confidential technical information. That knowledge is imputed to the firm. A junior attorney handling B does not cure the conflict because the firm as a whole remains in possession of the information, and R could inadvertently influence the work.
- B's refusal to identify its inventor prevents a meaningful conflict check. The firm cannot verify whether B's inventor is the same person or a collaborator from A's notebook.
- A's informed consent would be required for the firm to act adversely to A in a substantially related matter. A has not consented. Even with consent, the firm would need effective screening and written confirmation.
The correct step is a written decline to B, before receiving any B confidential information. The firm should not use the conflict-check result as a substitute for a substantive analysis.
2. What should R do about the subpoena for her notes and correspondence?
Read the worked answer
R should not ignore the subpoena and should not unilaterally destroy or hand over the file.
- Identify the documents sought. A's lab notebook itself is likely A's property and may be producible if relevant, but R's notes and advice may contain privileged analysis.
- Assert applicable patent attorney-client confidentiality or privilege over communications with A made for the purpose of legal advice. The precise scope depends on the forum and the evidence rules; R should research whether patent attorney privilege is recognized in that proceeding.
- Prepare a privilege log describing withheld documents without revealing their content.
- Notify A and A's litigation counsel immediately so they can assert privilege or seek a protective order. R's own firm may need independent counsel because its interests and A's interests could diverge.
- If the court orders production, comply only to the extent ordered and preserve a record for appeal.
The subpoena does not by itself create a conflict with B, but it reinforces why the firm should not take B as a client.
3. Draft a short set of immediate firm actions for the partner.
Read the worked answer
- Decline B in writing before any engagement letter or receipt of B's technical information. State that the firm has a conflict and cannot act.
- Do not use a screen as a substitute for declining. A screen may be useful in future unrelated matters but cannot cure R's actual knowledge of A's notebook.
- Notify A that a subpoena has been received and that the firm will assert confidentiality. Do not disclose A's technical information to B or to the firm's other clients.
- Isolate A's file. Restrict access to R and the responsible partner; log any access; do not let the junior who would have handled B see it.
- Retain independent ethics or litigation counsel for the subpoena response and for advice on the firm's own position.
- Document the conflict check, the recognition of the inventor's name, B's refusal to identify its inventor, and the decision to decline.
- Review firm procedures for conflict checks that rely only on party names; add inventor names and technology keywords.