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Author
Ludmila Lisovskaya

Patent Specialist / Chemical Specialist

30 September 2020

What is a conflict of interests and what is to be done, if it has occurred between a Patent Attorney and a Principal?

According to a definition, a conflict of interests is a situation, in which a person’s personal interest can influence on the process of making a decision and, thus be detrimental to the interests of society or the company being the employer of anemployee.

Thus, if a Patent Attorney, while reviewing the technical solution of a Principal, for example, reveals the fact that he is already working with another Principal on a similar subject matter, he is forced to notify immediately the Principal about it and to terminate the legal relationship with him in this case, because the Patent Attorney is responsible to the Principal and he is obliged to comply with the requirements of the legislation on preventing the conflict of interests and he is striving to avoid the conflict of interests. The patent attorneys’ organization is obliged not only to ensure the proper fulfillment of the Principal’s engagement by the patent attorney, to ensure the safety of the documents and the materials received from the Principal, but also to undertake measures to avoid the conflicts of interests.

An example of the most common cases of the conflict of interests in the field of the defense of intellectual property may be the provision by the Patent Attorney of equivalent services in parallel to two competing persons or companies.  Or, for example, representing the interests of the plaintiff and the defendant in the same court case by the specialists of the same law firm will be the conflict of interests. Or, for example, filing objection by the specialist of the law firm to the Chamber for Patent Disputes for cancelling the patent, which patent holder is the Principal of this law firm, and the patent has been obtained with the participation of this company, will be the conflict of interests.

In this regard, in order to minimize the likelihood of the conflict of interests, at the request of the Principal or the person applying for assistance, the Patent Attorney is obliged to notify the reliable information about the fact that he is representing some specific persons in respect of whom, in the opinion of the Principal or the person, who has applied for assistance, the conflict of interests may occur. The Patent Attorney must also satisfy the Principal’s requirement to prevent the representation of the specifically indicated persons during the period of the representation of this Principal (if the Principal has any).

If the conflict of interests arose after the getting the engagement, or the Attorney became aware of it after the acceptance of the engagement, the Patent Attorney is obliged to notify both Principals about this. In this case, the Patent Attorney can either act as a mediator in the dispute occurred, or refuse to provide services for one of the Principals, who applied later.

The Patent Attorney’ duties are regulated by Article 4 of Federal Law of December 30, 2008 No. 316-FZ “On Patent Attorneys.”

As a rule, the Patent Attorney’s assistance and services are provided on the basis of a written agreement executed in the form of a single document or the exchange of letters (including by any means of communication) or in any other manner stipulated by the legislation.

The Attorney shall provide assistance and services in compliance with the requirements of the legislation, the rules of his profession and the patent attorney’s code of ethics, as well as the principles of good faith, honesty and reasonableness.

The Attorney shall not accept the Principal’s engagement or he shall refuse from it, if the engagement is or becomes of a deliberately illegal or a deliberately bad faith nature, the Attorney shall inform the Principal about the reasons for the refusal, and he shall also explain to the Principal the possible negative consequences of the violation of the requirements of the law.

When providing assistance, the Attorney shall strive to ensure the legitimate interests of the Principal directly on the subject of the engagement and other issues arising in this regard. The Attorney shall strive to ensure the Principal having a complete understanding about the assistance provided. In particular, the Attorney shall give a detailed report on his actions in the interests of the Principal at his request. The Attorney shall strive to ensure the legitimate interests of the Principal even after the fulfillment of the engagement. If the Attorney receives correspondence to the address of the former Principal, the Patent Attorney shall send this correspondence to his address.

In order to prevent the conflict of interests between the Attorney and his client (Principal), there are a number of restrictions and prohibitions for the Patent Attorney:

- it is not recommended for him to acquire the rights to the means of individualization to the own name, to the names of the legal entities controlled by him, to file applications for the means of individualization, except for the rights to trademarks, commercial designations and company names used for the individualization of the own activities as a Patent Attorney;

- it is prohibited for him to be engaged in the systematic activities for the purpose of making profit from acquiring the rights to the means of individualization to the own name, to the names of the legal entities controlled by him, including to file applications for the means of individualization for the purpose of alienating subsequently these rights;

- it is prohibited for him to be engaged in the systematic activities for the purpose of making profit (by getting compensation) from disputing the validity of the intellectual property rights or from terminating the rights to the means of individualization on behalf of his name or on behalf of the names of the legal entities controlled by him;

- regardless of the assistance nature, that is, even if such assistance has included a creative contribution, the Patent Attorney is not recommended to indicate himself as an author (co-author) and he is prohibited to become, personally or through the legal entities controlled by him, the owner (co-owner) of a patent for an invention, a utility model or an industrial design in respect of the subject matters to assist with which the Principal has applied to him;

- after finishing the representation and the expiry of the periods set for keeping the secret and the documents, it is prohibited for the Attorney to use the information or the documents received from the Principal, in any activities, which are explicitly detrimental to the interests of the Principal. In particular, the Attorney is prohibited to use such information or documents against the former Principal, if he is representing the interests of other persons.

When concluding an agreement on the Patent Attorney’s services, always pay attention to the presence of a paragraph on the conflict of interests, this will show you good faith and a high level of the skills of the selected company. Each Patent Attorney, who holds dear his reputation, includes in the text of an engagement agreement the paragraph relating to the conflict of interests, since this is dictated by the ethical behavior, which the Patent Attorney must strive to in his professional and public activities. 

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