The Supreme Judicial Court for the Commonwealth of Massachusetts (SJC) will decide an important legal malpractice case arising from an alleged conflict of interest that occurred during the prosecution of two patent applications. This decision will affect patent applicants and practitioners in Massachusetts, and courts in other states may look to this decision when analyzing alleged conflicts of interest in the patent prosecution context. Nutter attorneys Heather B. Repicky and Lauren E. Ingegneri recently filed an amicus brief on behalf of the Boston Patent Law Association (BPLA) on this issue. The BPLA argues that the adoption of a new conflict of interest rule that would prevent a patent practitioner from representing applications filed by competitors on “similar inventions” would create a great deal of uncertainty for both applicants and patent practitioners. Further, if this blanket rule were adopted, applicants might attempt to monopolize the marketplace for lawyers with specific expertise in order to gain a competitive advantage.

The Plaintiff Chris E. Maling (Maling) hired attorneys at Finnegan Henderson Farabow Garrett and Dunner LLP’s (Finnegan) Cambridge, MA office to conduct a prior art search on his screwless eyeglass hinge invention, to prepare a patent application, and to secure patents in the U.S. on this technology. At the same time, attorneys at Finnegan’s Washington, DC office were representing a Japanese company who was a direct competitor to Maling on what Maling argued was a “similar invention.” Finnegan ultimately obtained patents for Maling, but the competitor patents restricted Maling’s ability to practice his invention and Maling lost investor funding for his company.

The lower court held that the representation was not “directly adverse” because proceedings at the U.S. Patent and Trademark Office were conducted in parallel. Moreover, the complaint did not suggest that the concurrent representation negatively affected Maling and failed to allege that Finnegan was “materially limited” by representing Maling’s competitor. Therefore, the Massachusetts Rules of Professional Conduct were not violated. Maling appealed and the SJC took on this case under direct appellate review.

The oral arguments for this case will be held on September 8, 2015 at 9 am at the John Adams Courthouse, Courtroom One, Second Floor, Pemberton Square, in Boston, Massachusetts.

Copies of the parties’ briefs and the amicus briefs can be obtained here.