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No prosecution work for you!

Those experienced in modern patent litigation are no doubt familiar with what has become known as the “patent prosecution bar.”  Because large amounts of sensitive, confidential information is exchanged during the course of patent litigation, courts routinely grant protective orders specifying that any material designated with various levels of confidentiality may only be used for the litigation, and for no other purpose.  Further, it is not at all uncommon for litigants to request that any attorney receiving certain types of confidential information be prohibited from participating in patent prosecution out of the fear that the attorney would use that information to the disclosing party’s disadvantage.  Patently-O reports that the CAFC has stayed a district court order that denied a defendant’s request for a prosecution bar.  (In re Deutsche Bank Trust)  The CAFC order will effectively preserve status quo (i.e. prohibit the disclosure of information to the attorney that wishes to maintain his prosecution practice) while the court entertains mandamus briefing on the issue.

This is not very informative about the CAFC’s position on whether such prosecution bars are appropriate, but it does seem likely that the CAFC will at least grant a petition and hear full argument before deciding whether mandamus relief is appropriate.  This important issue pits valid, competing interests against one another, and a definitive decision regarding the appropriateness and scope of such orders is long overdue.


On one side is a client’s right to counsel of his or her choice and the lawyer’s right to practice.  Because the available supply of legal services is necessarily limited by the examination process, ethical rules have been adopted that counsel against lawyers entering into agreements that tend to further limit the availability of representation.  For example, Model Rule 5.6 provides “A lawyer shall not participate in offering or making (a) [an] …  agreement that restricts the right of a lawyer to practice after termination of the relationship … or (b) an agreement in which a restriction on the lawyer’s right to practice is part of the settlement of a client controversy.”  Previous prosecution bars have been analyzed with this concept in mind.
On the other side is a disclosing party’s right to ensure that its confidential information will not be improperly used and a client’s right to zealous advocacy.  First, regarding the protection of confidential information, the moving party in Deutsche Bank argues:

The majority of district courts … have found that an attorney who has obtained access to an adversary’s confidential information during the course of litigation should not be permitted to make use of that information in prosecuting his own client’s patent applications.
(DB Brief at 6).

Personally, given the general purpose and scope of any protective order (with or without a prosecution bar), I would hope that ALL district courts agree that attorneys cannot use an adversary’s confidential information in prosecuting patent applications.  Such a use would flatly contravene the purpose of such orders.  The controversy, in reality, is in whether the attorney should even be allowed to engage in prosecution at all, after considering the risk of “inadvertent disclosure.”  In other words, if a court is persuaded that the attorney will be able to compartmentalize the confidential information, and not reveal or use that information to their prosecution client’s advantage, then such courts would generally deny a prosecution bar.  However, if a court believes that the attorney cannot compartmentalize the confidential information, then the bar is likely to be granted.

Meanwhile, the prosecution client is entitled to zealous advocacy, like any other client.  An attorney that experiences significant difficulty separating confidential information from general knowledge would most likely err on the side of caution, using less than the full body of knowledge at the attorney’s disposal.  However, in doing so, the attorney potentially runs afoul of another ethical rule: conflicts of interest.  Model Rule 1.7(a)(2) states that “[a] concurrent conflict of interest exists if … there is a significant risk that the representation of one or more clients will be materially limited by the lawyer’s responsibilities to … a third person.”  In this situation, the third person is the adverse party in the litigation (as well as the court itself), and the lawyer’s responsibility is to abide by the court’s order for the benefit of the disclosing party.  Thus, in the absence of a prosecution bar, an attorney may have a conflict of interest with the prosecution client if the attorney’s inability to sufficiently compartmentalize the confidential information would result in the attorney relying on substantially less than his or her full body of general knowledge of a subject.

In reality, the ability of an attorney to separate general from confidential information is, among other things, a function of the relative subject matter of the confidential information and the patent prosecution work.  If the subject matter relates to the same aspects of the same types of products (e.g. both are related to cable assemblies for vehicle throttle control systems) then there is a greater chance of inadvertent disclosure.  However, if the subject matter relates to similar systems, but completely different aspects (e.g. both are related to throttle control, but one is related to controlling throttle position, and the other is related to adjusting the position of the pedal assembly) then the chance of disclosure is lower.  This is necessarily a very fact intensive analysis, and district courts (not to mention circuit courts) are busy enough as it is, without having to analyze and craft a proper scope of a prosecution bar that weighs these factors.

In practice, prosecution bars tend to run the gamut.  The most narrowly drafted bars only limit prosecution of patents in the “family chain” (e.g. continuations, CIPs, divisionals etc) of the patent-in-suit.  The most broadly drafted bars attempt to restrict prosecution practice altogether, or describe broad technology areas (e.g. restricting attorneys from prosecution of automotive patents).  When the parties cannot agree on an acceptable scope of the prosecution bar, the district court has to weigh in, forestalling the discovery process in the interim period.  Even in the Eastern District of Texas, where parties can take advantage of the local patent rule P.R. 2-2’s confidentiality designation, the rule is silent on prosecution bars.  Thus, the party seeking a broad prosecution bar might choose not to disclose certain information pending outcome of the protective order, which is, needless to say, counter to the general rule of liberal, open discovery.  Alternatively, the disclosing party might provide discovery conditioned on interim agreement of the disclosing party’s proposed bar language, pending final outcome by the court.  In that case, the receiving party is placed a precarious situation, and would have to carefully decide which members of the litigation team should have access, and which members should be restricted.  Because attorneys are already equipped with an adequate framework to police themselves, as I explain in the next paragraph, this type of dispute is wasteful and distracting to the overall purpose of the discovery process.

I would propose an alternative that simultaneously lifts this burden from district courts, and forces attorneys to reconsider, on a case-by-case basis, whether they should forgo a portion of their prosecution practice.  Model Rule 1.7(b) provides conditions under which an attorney can seek “informed consent,” through which the prosecution client could, despite the conflict, agree to be represented by the attorney.  However, given the risks mentioned above, a better solution would be to simply prohibit attorneys from seeking informed consent.  In other words, if an attorney believes that informed consent would be required to undertake (or continue) representation of a prosecution client, it indicates that the risk of inadvertent disclosure is higher.  Simultaneously, if the attorney is confident in undertaking the representation without any consent, the risk of disclosure is lower.  This places the burden back onto the attorney, rather than clogging the courts with side-show battles of whether and under what circumstances a litigation attorney may (or may not) represent others.

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