Code of Professional Conduct for Patent Agents and Trademark Agents Regulations — 7
7 (1) Subsections (2) to (4) apply when an agent transfers from one firm (“former firm”) to another (“new firm”) and the transferring agent or the new firm is aware at the time of the transfer or later discovers that (a) it is reasonable to believe that the transferring agent has confidential information relevant to the new firm’s matter for its client; or (b) the new firm represents a client in the same matter or in a related matter in which the former firm represents its client (“former client”), the interests of those clients in that matter conflict and the transferring agent actually possesses relevant information respecting that matter. COMMENTARY The purpose of this rule is to deal with actual knowledge. Imputed knowledge does not give rise to disqualification. This rule treats as one firm such entities as a corporation with separate regional intellectual property departments and an interprovincial or international firm. The more autonomous each unit or office is, the easier it should be, in the event of a conflict, for the new firm to obtain the former client’s consent or to establish that it is in the public interest that the new firm continue to represent the client in the matter. (2) If the transferring agent actually possesses confidential information relevant to a matter respecting the former client that may prejudice the former client if disclosed to a member of the new firm, the new firm must cease representing its client in that same matter unless (a) the former client consents to the new firm’s continued representation of its client in that matter; or (b) the new firm has (i) taken reasonable measures to ensure that there will be no disclosure of the former client’s confidential information by the transferring agent to any member of the new firm, and (ii) advised the agent’s former client, if requested by its client, of the measures taken. COMMENTARY It is not possible to offer a set of reasonable measures that will be appropriate or adequate in every case. Instead, the new firm that seeks to implement reasonable measures must exercise professional judgment in determining what steps must be taken in order to ensure that no disclosure will occur to any member of the new firm of the former client’s confidential information. Such measures may include timely and properly constructed confidentiality screens. For example, the intellectual property services units of a government, a corporation with separate regional legal departments or an interprovincial or international law firm or agency firm may be able to demonstrate that, because of its institutional structure, reporting relationships and function and the nature of its work and geography, relatively fewer measures are necessary to ensure the non-disclosure of client confidences. If it can be shown that, because of factors such as the foregoing ones, agents in separate units, offices or departments do not work together with other agents in other units, offices or departments, that will be taken into account in the determination of what screening measures are considered to be reasonable. The guidelines that follow are intended as a checklist of relevant factors to be considered. Adoption of only some of the guidelines may be adequate in some cases, while adoption of them all may not be sufficient in others. Guidelines on How to Screen for Conflicts of Interest and Measures to be Taken The screened agent must have no involvement in the new firm’s representation of its client in the matter. The screened agent must not discuss the current matter or any information relating to the representation of the former client — the two may be identical — with anyone else in the new firm. No member of the new firm should discuss the current matter or the representation of the former client with the screened agent. The firm must take steps to preclude the screened agent from having access to any part of the file. The new firm must document the measures for screening the transferr