Don’t Pass the Buck on Ethics in International IP Practice
LACBA Update, November 2010

By Mark C. Scarsi of Milbank, Tweed, Hadley & McCloy LLP in Los Angeles, and member of LACBA’s Professional Responsibility and Ethics Committee. The opinions expressed are his own. He can be reached at mscarsi@milbank.com.

While intellectual property law is predominantly domestic, a client’s appetite for IP protection often does not stop at the borders. As a result, many domestic IP practitioners serve the additional function of managing foreign counsel in the acquisition of foreign patent and trademark rights. At first blush, this may seem like a relatively simple job. You hire a reputable firm, provide it with appropriate instructions, and wait for results. What could be easier? Unfortunately, it’s not that simple.

As a California practitioner, you operate under a developed set of ethical rules that ensure your client receives competent legal service free from conflicts of interest. Foreign counsel, however, operate under a different set of ethical rules, which could differ significantly from California practice. While it would be easy to simply apprise your client of this disconnect and hope for the best, the better practice is to take steps to ensure that foreign counsel carries out his or her duties in a way that will meet your client’s ethical expectations. 

At a minimum, after concluding that the firm you hire on the client’s behalf is competent to perform the work, you should also determine whether the foreign firm is free from conflicts that could preclude zealous advocacy on the part of your client. Given the fact that the firms you will engage may be thousands of miles away and may have limited English language skills, taking these steps may be easier said than done.

Finding competent foreign IP counsel. Often, the best way to identify potential foreign counsel for an intellectual property matter is to obtain a referral from a trusted colleague or trade organization. In the trademark area, the International Trademark Association (INTA) is a good source for referrals. In the patent area, the American Intellectual Property Law Association (AIPLA) provides referrals. There are also a number of Web sites that publish lists of intellectual property counsel by geography. For example, Managing IP conducts a study every year of the world IP market. The survey covers 75 countries and is organized by geography and practice area such as patent, trademark, and copyright.

Once you have identified potential foreign counsel, there are a number of actions you can take to help determine whether they can competently handle your client’s matter. First and foremost, ensure that your foreign counsel is registered to practice before the applicable foreign governmental agency. Many countries, including the United States, require lawyers to demonstrate specific competency before they are permitted to practice certain forms of intellectual property law. Research the requirements applicable to your target foreign country, and verify that your foreign counsel has met those requirements.

In addition, verify that the potential foreign counsel has relevant experience with the type of intellectual property assistance your client needs. Often, you can satisfy this concern by asking foreign counsel to provide you with examples of his or her past efforts. As most intellectual property acquisition work exists in public files, foreign counsel should be able to provide you meaningful examples of past work on similar matters.

Clearing conflicts. As the conflict rules of foreign jurisdictions may differ substantially from the standards your client might expect, you should facilitate a complete search for conflicts at your potential foreign firm. While repeat experience with a foreign firm will allow you to better tailor the “extra” work you want to undertake, you should consider the following:

1) Ask the firm whether it has any representations that are adverse to your client either directly (as in the case of trademark oppositions proceedings or inter partes patent proceedings) or indirectly (as in the case where your client’s intellectual property is cited against another party in an acquisition proceeding).

2) Identify your client’s chief competitors and determine whether the foreign firm represents those companies. Bring any of these “business” conflicts to the attention of your client.

3) Conduct your own search of public intellectual property acquisition files to both verify the information you receive from the firm and to make your own assessment of subject matter conflicts.

4) Continue monitoring public records throughout the representation to identify conflicts that may arise.

While managing your client’s foreign intellectual property efforts may make you feel more like a client than a lawyer, you can add significant value by being mindful of the potential ethical gaps between California practice and that of foreign countries. With a little effort, you can help ensure that the foreign representation will meet your client’s expectations for competent and conflict free legal service.