Code of Professional Conduct for Patent Agents and Trademark Agents Regulations — 10
10 An agent may disclose confidential information to the extent reasonably necessary to detect and resolve conflicts of interest arising from the agent’s change of employment or from changes in the composition or ownership of a firm, but only if the information disclosed does not compromise any privileged communication between the agent and their client or otherwise prejudice the client. COMMENTARY As a matter related to clients’ interests in maintaining a relationship with the agent of choice and protecting client confidences, agents in different firms may need to disclose limited information to each other to detect and resolve conflicts of interest, such as when an agent is considering an association with another firm, two or more firms are considering a merger or an agent is considering the purchase of a firm. In these situations (see subsection 7(1) of Part 3), this section permits agents and firms to disclose limited information. That type of disclosure would only be made once substantive discussions regarding the new relationship have taken place. The exchange of information between the firms needs to be carried out in a manner consistent with the obligations of the transferring agent and of the new firm to protect client confidentiality and privileged information and avoid any prejudice to the client. It ordinarily would include no more than the names of the persons involved in a matter or matters. Depending on the circumstances, it may include a brief summary of the general issues involved and information about whether the representation has come to an end. The disclosure should be made to as few agents at the new firm as possible, ideally to just one agent of the new firm such as a designated conflicts agent. The information must always be disclosed only to the extent reasonably necessary in order to detect and resolve conflicts of interest that might arise from the possible new relationship. As the disclosure is made on the basis that it is solely for the purpose of checking conflicts when agents are transferring between firms and for establishing confidentiality screens, the disclosure must be accompanied by an undertaking by the new firm to the former firm that it (a) will limit access to the disclosed information; (b) will not use the information for any purpose other than detecting and resolving conflicts; and (c) will return, destroy or store in a secure and confidential manner the information provided once appropriate confidentiality screens are established. The client’s consent to disclosure of such information may be specifically addressed in a retainer agreement between the agent and the client. However, in some circumstances, because of the nature of the retainer, the transferring agent and the new firm may be required to obtain the consent of clients to the disclosure or the disclosure of any other information about the clients. That is especially the case if disclosure would compromise privilege or otherwise prejudice the client (for example, disclosure of the fact that a corporate client is seeking due diligence advice relating to a corporate takeover that has not yet been publicly announced).