Code of Professional Conduct for Patent Agents and Trademark Agents Regulations — Code of Professional Conduct for Patent Agents and Trademark Agents Regulations
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 transferring agent and the time when they were put in place — which should be done as soon as possible — and must advise all affected agents and support staff of the measures taken. These Guidelines apply, with the necessary modifications, to situations in which a non-agent staff member leaves one firm to work for another and a determination is made by the new firm, before hiring that individual, as to whether any conflicts of interest will be created and whether they actually possesses relevant confidential information. How to Determine if a Conflict Exists Before Hiring a Potential Transferee When a firm of agents, or a firm of agents and legal counsel (“new firm”), considers hiring an agent or agent in training (“transferring agent”) from another firm of agents, or another firm of agents and legal counsel, (“former firm”), the transferring agent and the new firm need to determine, before the transfer, whether any conflicts of interest will be created. Conflicts can arise with respect to clients of the firm that the transferring agent is leaving and with respect to clients of a firm in which the transferring agent worked at some earlier time. After completing the interview process and before hiring the transferring agent, the new firm must determine whether any conflicts exist. In determining whether the transferring agent actually possesses relevant confidential information, both the transferring agent and the new firm must be very careful during any interview of a potential transferring agent or during any other recruitment process to ensure that they do not disclose client confidences. See section 10 of Part 2 which provides that an agent may disclose confidential information to the extent the agent reasonably believes necessary to detect and resolve conflicts of interest when agents transfer between firms. An agent’s duty to their firm may also govern the age