114.08    Adverse Parties Represented by Same Practitioner

37 C.F.R. § 11.107 Conflict of interest; Current clients.

  • (a) Except as provided in paragraph (b) of this section, a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if:
    • (1) The representation of one client will be directly adverse to another client; or
    • (2) There is a significant risk that the representation of one or more clients will be materially limited by the practitioner’s responsibilities to another client, a former client or a third person or by a personal interest of the practitioner.
  • (b) Notwithstanding the existence of a concurrent conflict of interest under paragraph (a) of this section, a practitioner may represent a client if:
    • (1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client;
    • (2) The representation is not prohibited by law;
    • (3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same litigation or other proceeding before a tribunal; and
    • (4) Each affected client gives informed consent, confirmed in writing.

As a general rule, a practitioner (i.e., attorney or other authorized representative) may not represent parties with conflicting interests in proceedings before the Office. That is, a practitioner normally may not accept proffered employment, or continue multiple employment, if the exercise of the practitioner’s independent professional judgment on behalf of one client is likely to be adversely affected by the practitioner’s representation of another client, or if the employment would be likely to involve the practitioner in representing differing interests. [ Note 1.]

However, a practitioner may represent multiple clients under the particular circumstances specified in 37 C.F.R. § 11.107(b).

If it comes to the attention of the Board that two or more parties whose interests are in conflict appear to be represented by the same practitioner, or by different practitioners within the same firm, each of the parties and their practitioner(s) will be notified by the Board, in writing, of the possible conflict of interest.

It is the responsibility of a practitioner to ensure that there is no violation of the rules cited above. If an impermissible conflict exists, a practitioner should take appropriate action immediately. A practitioner who fails to do so may be subject to disciplinary action.

Please Note: Effective May 3, 2013, the United States Patent and Trademark Office adopted new USPTO RULES OF PROFESSIONAL CONDUCT which are based on the American Bar Association’s MODEL RULES OF PROFESSIONAL CONDUCT. Cases decided prior to May 3, 2013 refer to the USPTO CODE OF PROFESSIONAL CONDUCT that was in effect at that time. These earlier cases continue to be instructive.

NOTES:

 1.   37 C.F.R. § 11.107; Sunkist Growers, Inc. v. Benjamin Ansehl Co., 221 USPQ 1077, 1082 (Comm’r 1984) (attorney was disqualified, but law firm was not); Plus Products v. Con-Stan Industries, Inc., 221 USPQ 1071, 1075 (Comm’r 1984) (attorney representing respondent in an opposition disqualified in view of his previous representation of petitioner in USPTO proceedings and in infringement litigation concerning the same trademark issues). But see Gilman Corp. v. Gilman Brothers Co., 20 USPQ2d 1238, 1240 (Comm’r 1991) (petitioner’s former attorney in patent matter not disqualified from representing respondent in trademark cancellation proceeding; no "substantial relationship" between prior and present matters); Unico American Corp. v. Unico Banking Group, 223 USPQ 684, 685 (Comm’r 1984) (opposer has no right to seek disqualification of applicant’s counsel based on any possible conflict between applicant and third parties).