Our prior article discussed Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, 473 Mass. 336, 42 N.E.3d 199 (2015), where the plaintiff asserted malpractice based on alleged conflict of interest in representation in applying for patents before the Patent Office (known as patent prosecution). Plaintiff, Chris Maling, alleged that the law firm that prosecuted several patent applications for eyeglass technology for him was, at the same time, prosecuting applications for competing eyeglass technology for another client. The Maling court held that he had failed to make out a malpractice claim, rejecting his argument that the mere fact that the patents sought would compete economically meant a per se conflict. While it noted some additional factors that might create an actionable conflict, Maling had failed to allege them with enough specificity to survive dismissal.
As we noted before, the issues raised in Maling are increasing in importance. Patent prosecution counsel tend to focus more and more on particular fields of technology, and often have multiple clients operating in the same technological space. Absent from the decision in Maling, however, was an analytical framework by which to evaluate and analyze potential conflicts in patent prosecution. The published literature suggests two alternative frameworks to analyze potential prosecution conflicts: claim-based and information-based.
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