From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 20 February 2015

Are there ethical reasons for not "googling" your inventor client?

How should the IP profession view the availability of online information? Taking patents as our focus, access to on-line public information would appear to be a central component of the patent system. After all, the ability to search information, especially prior art, is crucial for maintaining the integrity of the system, especially about patentability (the fact that some patent attorneys may not want to carry out a search for tactical reasons is not the contrary). What's more, background information about the inventor and his company may be available to complement what is provided in face-to-face meetings. The only limitation on our ability to make maximum use of online information flows from the fact that there is too much of it. As such, at first glance, there does not appear to be any inherent constraint in the patent system to our use of public information.

Given this orientation towards the utility of information in the service of the patent system, this Kat read with great interest a recent article that appeared on reuters.com on 13 February. Entitled, "Is it OK for doctors to "google" patients?" the piece summarizes an article by Maria Baker and Daniel George, both connected to Penn State University, which recently appeared in the Journal of General Internal Medicine, focusing on the question of whether there are (or should be) professional standards that set limits on the extent to which a physician may carry out an online search about so-called personal aspects of his patient.

The default position appears to be that physicians should refrain from seeking such information, except in a narrow set of circumstances. The co-authors are said to identify 10 such situations where such "googling" is permitted, guided by two overarching principles:
(1) Per Baker: “the motivation is to protect patients and prevent harm"; and
(2) per Daniel: "there is something worth protecting in the physician-patient relationship," 
An example of where seeking out publicly available information was deemed proper involves a young woman who approached a physician, requesting to have both breasts removed, citing a long family history of cancer. The woman declined to undergo genetic testing. A genetic counsellor at the hospital searched the woman on the internet and discovered that she had been holding herself out as a cancer survivor and even raising funds on that basis. The physician informed the woman that he was not comfortable performing the surgery in the absence of the appropriate tests. To the contrary, the authors refer to a situation where a doctor who developed a course of action to improve his patient’s lifestyle, only to then search the patient via social media and find pictures of the patient "smoking a cigar". Here, the information only served to undermine the trust relationship between the doctor and his patient. Better that the search would not have been conducted.

The Reuters.com piece brings several expressions of reservation regarding even the limited scope of the right to search suggested by the co-authors. Thus, the president of The Hastings Center, which engages in bioethics, observed that inconsistencies in patient statements, or between the patient and relatives, are not grounds to search online about a patient, because "there is too much wiggle room." She went on:
"Why is the physician doing this? It is going to bring benefit to the patient, or is it something self-serving or out of personal curiosity?"
In the same vein, a 2013 policy statement from The Federation of State Medical Boards stated as follows:
"It instead can be linked to curiosity, voyeurism and habit. Although anecdotal reports highlight some benefit (for example, intervening when a patient is blogging about suicide), real potential exists for blurring professional and personal boundaries."
The metes and bounds of acceptable bioethical searching online about a patient are still work-in-progress. Still, it already raises for this Kat the question of whether there are insights that might be germane to the attorney-inventor relationship, if for no other reason that both relationships rest on the principle of professional privilege. The issue suggested is whether there are such ethical-professional norms of behaviour between the attorney and the inventor that might reach beyond the privilege so as to limit the scope of the attorney’s on-line inquiry about his client.

A possible answer of “yes” might focus on the trust relationship between the two. After all, a misrepresentation in a patent application might have perjury implications, arguing for caution on the part of the attorney. However, should the attorney became a Facebook friend of his inventor client, adding the inventor to one’s LinkedIn contacts, or simply “googling” the inventor’s name, with the result that the attorney is exposed to personal information that might impact on the general degree of trust between the parties, even if such information is not directly relevant to the patent application process itself? Or are the ethical concerns that arise between a doctor and his patient so fundamentally different from those of an attorney and an inventor that there should not be any similar kinds of restraints placed on seeking online information about the inventor?

17 comments:

Rich L said...

It seems a bit odd to be worried about searching for public domain information relating to a client when potentially far more invasive searching, such as for example credit checks, are carried out as standard practice.

Anonymous said...

There is a huge difference between a doctor researching a patient and an attorney researching a client.

The discussion is therefore unnecessary.

Anonymous said...

If the attorney does search for information on the inventor and finds a page disclosing the bones of the patent application they are in the process of drafting what should they do? Ignore it and pretend they have no knowledge of such prior publication or take it into account when formulating the claims?

Anonymous said...

I wonder whether there are circumstances in which failure to google one's client might even turn out to be professional negligence.

Anonymous said...

Carrying out customer due diligence under money laundering regulations often involves a bit of googling. I know some disagree but IPReg consider these regulations to apply to Patent and Trade Mark Attorneys.

Also, surely the whole point of LinkedIn is to add clients? Or am I missing something?

James Wagner said...

Anon 13:08, There may be. I know of a few examples where no prior art search was commissioned, but 10 secs of internet searching identified prior art, which avoided the need to engage further client expenses.

There are also times when there may be an ethical duty to conduct searches of clients, client's businesses and related activities as part of our duties to the Court and others.

Under the code of conduct applying to barristers and solicitors in British Columbia we have the following footnote in our code of conduct, regarding times when we should conduct further inquiries of a client:

"[3] Before accepting a retainer, or during a retainer, if a lawyer has suspicions or doubts about whether he or she might be assisting a client in any dishonesty, crime or fraud, the lawyer should make reasonable inquiries to obtain information about the client and about the subject matter and objectives of the retainer. These should include making reasonable attempts to verify the legal or beneficial ownership of property and business entities and who has the control of business entities, and to clarify the nature and purpose of a complex or unusual transaction where the nature and purpose are not clear."

Anonymous said...

James,

Many years ago, as a junior member of a team, I personally experienced what you describe (in the context of a client's claim to an invention). A search turned up within ten minutes not only the concept itself (full lack of novelty), but an actual catalog page from the competitor.

I was chastised for my basic (in my view, such an action is indeed basic) activities.

My chastisement lessened (in reality, only partially) when I explained that my actions SAVED the client from further expenses chasing a patent that was never going to be (or if somehow granted, would not be enforceable), and possibly even avoiding infringement. The senior partner remained unhappy.

I found out only much later that the reason why the senior partner was unhappy was because he had told the client that he had performed a "routine diligent search," and had to eat some humble pie.

But back to the direct issue at hand: client WILL lie. Anytime my reputation is at stake, I owe first and foremost to myself to comport myself with professionalism which - as you note - necessarily involves gauging the veracity of the client.


And yes, this means "internal" clients as well.

Rob Harrison said...

Neil has certainly started an interesting debate here. Most of the previous comments revolve around carrying out an Internet search using a well-know search engine. I happen to agree with the contributors who argue that it is probably a necessary part of due diligence to establish that firstly you actually know who the client is, and secondly a ten-minute search can often turn up highly relevant prior art. Indeed in my previous life as a patent examiner I would routinely search inventor's own publications and frequently come up with highly relevant prior art to cite back to the patent attorney - much easier than having to carry out a full-blown search.

The second part about befriending a client on a social media site is much more difficult to argue. I frequently get friends requests. My principle is to accept them on LinkedIn - and maintain that site for purely business use - and reject them on Facebook. I don't necessarily want clients to see private photos and posts destined for friends and family. That used to work quite well, but I've seen how Facebook has become increasingly a business tool and I'm now wondering whether I should set up a Facebook page for business contacts.

Michael Factor said...

I see this discussion as relating to two separate issues:

1. Prior Art. Sure, in US and Israel the attorney has an obligation to report prior art. In other countries, I assume one cannot knowingly draft claims for something anticipated. However, whether a claimed invention something is inventive or not, is, of course, subjective. I've managed to convince examiners where I was not convinced myself. I recommend searching to the client and and am aware of the problem of client's own earlier disclosures coming out of the woodwork. It regularly happens with university academics, but I've had it with a range of other clients. I get them to state that there was no prior disclosure. One has to warn clients about own goals. However, if they want you to go ahead, fine.

The trouble with searching is that you don't know what you'll find. Sometimes clients are interested to be patent pending for commercial reasons and are willing to spend a certain amount of money on drafting and filing patents, but do not want to know what's out there. One should therefore not search without permission.

2. I think that it is reasonable to do some minimal background checks to avoid taking on clients that are dishonest. Where applicant is a company, one should check the company number and address since clients get these facts wrong, but doing so will invariably provide details of the company and may raise flags.

3. I suspect that in some companies, where a junior or trainee finds that an invention is known without being asked to search, the senior is annoyed that the golden goose has been killed. One should put client's interest first, but some companies get confused and put their billing first. Where one's own living is linked to the advice given to client, it is sometimes easy to get confused as to what is in the client's best interest.

Anonymous said...

"1. Prior Art. Sure, in US and Israel the attorney has an obligation to report prior art."

yes, but not obligation to go looking for art.

"One should therefore not search without permission."

ABSOLUTELY

"some companies get confused and put their billing first."

I would suggest that billing is more often than not the determining factor many firms.

I would suggest that attorneys advise their clients that a search is in their best interests prior to drafting. The benefits far outway the cons and unless the client knows there are things they would rather the attorney didn't find, the only reason for not searching are cost and time (imminent publication). Even in those cases, a minimal search - internet/free databases is essential to help identify the inventive concept and draft a claim having some value.

Once an application has been filed and can no longer be updated (priority period used) it is probably best not to know unless a validity-guarantee (as best one can provide) is a requirement.

Anonymous said...

Michael,

Thank you for your reply (this is Anonymous @ 2:28).

I respectfully disagree with you - as I did with my then superiors back then.

If I am putting my name on anything - including submissions to the Patent Office, it is my innate duty to maintain a minimum level of professionalism. Makings filings in order to have "patent pending" and to fill out a portfolio quantity per se falls under that professionalism level.

The mere fact that such actions can take place does not make those actions "professional."

A client may desire any number of actions which of themselves are not illegal, but still fall under a certain level of such professionalism. Of course, this is not to say that the client should not be informed (and I have learned to express this upfront with the client - as did my superior in the immediate context of my example). I would of course distinguish my basic survey from an action of a rigorous search and clearance study. I think the two are different not just in degree, but are different in kind as well.

As to your point 3, I find your statement a bit muddled. To wit: one's own professionalism always - always - come first, even before client's interests. To be rational, a client's interests do not include their representative's professional standing. Yes, I agree with you that billing does fall behind the client's interests (as appropriate), but billing also falls far behind (and is distinct from) one's professionalism. These are three - not two - distinct items in operation. In my case, I was able to (at least partially) assuage my superior by appealing to his sense of professionalism (outside of the lost billings AND the short term hit to his own "searching" ego) and position my find as a benefit to the client's long term interests. ON this last point, what is in the client's best interest may in fact be at odds with their stated short term interests (a no-search-at-all, pump up the count, patent pending action, accompanied by a foray into a product ALREADY on the market by a competitor - and possible patent protected by them - can carry more harm than a purposefully ignorant "just march ahead" mindset that is aimed solely at the short term.

To a counter point of your point 3, then: my professionalism is what the client is purchasing - NOT just a scribe or an "errand boy" to follow orders without thinking. Maintaining my professionalism is - and always is - the first order of business, even in fact, ahead of the client's goals. I would like to think that any other collateral issues - such as exploring social media to gauge the client - and that falls under this directive remains my unchallengeable, and in fact, dutiful, right.

Anonymous said...

Anon at 15:34 - I agree with the majority of your last comment. Presently, working in-house for an organisation bullish in marketing and challenging as regards appreciating legalities, I am constantly under pressure not to maintain my professionalism. Such businesses operate for the short-term benefit of management.

However, as a private practice attorney, I believe you are not in a position to take it upon yourself to go googling for prior art if it is against the wishes of the client. You are not retained to act in the best interests of your client in every regard, but only those areas in which you are retained and instructed.

By all means, suggest to the client that a rapid look-see is in their interests.

Anonymous said...

Anonymous @ 18:43,

I hear what you are saying and (also) fully disagree with you.

Baseline professionalism includes a simple vetting. I do attempt to draw the distinction between clearance activity and this baseline vetting.

Further, both my long ago superiors and I communicate this baseline professionalism to the client before they agree to hire us. This is supposed to maintain that professionalism. Again, as an officer of the court, I owe a first allegiance - bar none - due my personal professionalism. Clients that don't like this are always welcome to file pro se.

Anonymous said...

One factor that doesn't appear to have been mentioned is that doing a search can give away the invention, to a greater or lesser extent - at least to the search engine operator, but who's to know who they might pass information on to? An example we were giving in training is if the inventor has discovered that giving castor oil will induce labour. A simple search of "castor oil induce labour" will probably find any prior art, but it will also give away the entire invention to anyone that sees the query.

Ron said...

Anon 15.34, when I was in industrial practice, one of the subsidiary companies had a policy of filing a new patent application for a feature of its new products, however trivial, to keep competitors guessing. Their competitors did the same, and I never considered it unprofessional behavior. Sauce for the goose is sauce for the gander. The client ought to know his business, and a feature that is prima facie trivial to the non-expert, may turn out to be commercially important. I still recall one for a mounting bracket that I drafted that seemed so trivial it had a snowball's chance of getting granted. The main embodiment could have been knocked up in miniature a century ago from half a dozen standard Meccanno parts, but the closest prior art found by the EPO was a German Gebrauchsmuster for a bracket for attaching a cine camera to the end of a walking stick to allow filming at near ground level to get the viewpoint of a small animal. We filed a PCT and got patents granted in several countries.

Filing patent applications for prima facie trivial features is a perfectly legal procedure, and as long as the client is warned of the possible outcome of such an application, I do not see that there is anything unprofessional about following the applicant's instructions.

Anonymous said...

To anon at 20:26:
You say you fully disagree with me, yet you then go on to discuss professionalism regarding vetting your client.

My comment is in respect of prior art searching prior to a patent filing. I fail to see the connection. Unless, of course, your professionalism involves reading your client's scientific publications as opposed to running credit checks. Personally, I don't see that as valid or relevant, but if you do find something of interest prior to taking on a new client (presumably that is when you do your check?) you can tell your client prior to agreeing to draft an expensive application.

Anonymous said...

To the anon at 15.34, I can't see any issue with filing of patents when you are aware of knock-out prior art, as long as the client is fully aware of the implications of this, i.e. that they will be spending money on a patent that is potentially worthless, and that he cannot use it in court. And, as long as they obey the rules e.g. in the USA regarding disclosure of relevant prior art. Having "Patent Pending" for a time is a perfectly good reason for filing. There may also be contractual obligations to file on research done for a third party.

And of course, the patent examiner may validly disagree with one's own viewpoint on the relevance of a particular piece of prior art.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':