The Prospective Client's Confidential Electrolyte Disclosure
Priya, a registered patent agent, interviewed with Company B, a solid-state battery maker, two years ago about a lithium-dopant electrolyte. She signed Company B's NDA, received a 12-page technical disclosure, and was not engaged. Company B never filed. Company A, a direct competitor, now asks Priya to prepare and file an application on a lithium-dopant electrolyte with a 'graded dopant profile.' The disclosure Company B gave Priya included a graded dopant profile. Priya's paralegal has already drafted the claims and a declaration; the inventor has signed the declaration. Priya has not yet signed the application. Company A refuses to consent to any screening or notice to Company B. Priya asks whether she can take the engagement, whether the paralegal's work changes the analysis, and who must sign the application.
1. Can Priya take the engagement? Analyze the conflict of interest and confidentiality issues.
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Priya should decline unless Company B gives informed consent. Under 37 CFR 11.107(a)(2), a practitioner may not represent a client if there is a significant risk that the representation will be materially limited by responsibilities to a former client or a third person. Company B is a prospective client from whom Priya received confidential information under an NDA. Under 37 CFR 11.109, she may not reveal or use that information. The two matters are substantially related: both concern lithium-dopant solid-state electrolytes, and Company B's disclosure included the graded dopant profile that is central to Company A's application. Company A is a direct competitor, so the representation is materially adverse to Company B.
Company B's consent is the relevant consent, not Company A's. Company A's refusal to permit screening or notice does not cure the conflict. Screening is also insufficient because Priya personally received the confidential disclosure; a screen cannot erase her own knowledge. She should not take the engagement, should not review Company A's confidential disclosure further, and should return or destroy Company B's materials as required. If she is in a firm, the firm should evaluate imputation under 11.107, but her personal conflict is disqualifying.
2. Does the paralegal's involvement change the conflict analysis or Priya's professional responsibilities?
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The paralegal's work does not change the conflict analysis. A paralegal is not a registered patent practitioner and cannot sign the application, give legal advice, or assume Priya's professional responsibilities. Under 37 CFR 11.18(b), Priya certifies that the papers she signs are supported and not misleading; she must review the claims and the declaration independently. If the paralegal drafted claims that are broader than the disclosure or a declaration that the inventor did not read, Priya must correct them.
The paralegal's involvement also does not cure the conflict; if anything, it increases the risk because the paralegal may have had access to Company B's file. Priya should not let the paralegal continue work on Company A's application while the conflict is unresolved. If Priya declines, the paralegal's work product should not be used. If Priya takes the case after Company B's consent, she must supervise the paralegal and ensure the inventor's declaration is signed by the inventor, not the paralegal.
3. Who must sign the application and declaration, and what should Priya do if she declines the engagement?
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Under 37 CFR 1.33(b), a patent application may be signed by a patent practitioner of record, the inventor, or a party in interest. Priya, as a registered patent agent, may sign the application and transmittal papers. The paralegal may not sign the application or any declaration. The inventor must sign the oath or declaration; the inventor has already signed the declaration, but Priya should confirm that the inventor reviewed the claims and understands the disclosure.
If Priya declines the engagement, she must not sign anything and should not file the application. If she takes the engagement after Company B's informed consent, she should file a power of attorney, sign the application, and keep the conflict waiver in the file. The client's refusal to consent to screening does not authorize Priya to ignore Company B's rights. The signature is a professional certification, not a ministerial act.