Liability of Intellectual Property Attorneys to their Clients

We live in a knowledge economy, where ideas are generated by the people and the inventions they make are the new currency. Research and Innovation are now seen as the key differentiators determining the market value of a product or service. The emphasis today has graduated from the cost arbitrage and quality deliverables to IP creation and R&D.

Intellectual property rights award exclusive rights to the owner in the form of a monopoly. The law related to patents in India is the Patent Act, 1970, which has been amended thrice in 1999, 2002 and 2005 and is on its way to become fully TRIPS compliant. The Office of the Controller General of Patents, Designs & Trademarks which is an attached office of the Department of Industrial Policy & Promotion, Ministry of Commerce and Industry is responsible for intellectual property rights relating to patents.

Intellectual property rights are the legal rights, which result from the intellectual activity in the individual, scientific, literary and artistic field. These rights give statutory expression to the economic and moral rights of the creators in their creations.

Intellectual property rights safeguards creator and other producers to control the use made of those productions. These rights also promote creativity and the dissemination and application of the result and encourage fair trading which contributes to economic and social development.

The importance of intellectual property rights in today’s world requires no further emphasis. Today majority of the business houses rely on their intellectual asset and thus arises a further need to protect it.

This demand resulted in a supply of highly complicated yet effective laws regulating the creation, protection and grant of intellectual property rights.

With India becoming a signatory to TRIPS, the law’ relating to the intellectual property rights in India have become updated, international in scope and provides more confidence to the international fraternity to invest in India.

Patent Attorneys, are specialist legal advisors, who advice their clients how to protect their intellectual property. Patent Attorneys work either in private firm of large industrial Organizations.

Patent Attorney’s day-to-day work generally involves drafting of patent specifications, making application for a patent, subsequent correspondence with the patent office on the objections raised; representing the applicant’s case at the hearings, filing opposition proceedings or defending an application against an opposition, all being of a highly technical nature.

For the purpose of maintaining a high standard of efficiency and professional integrity the Patent Act has prescribed certain qualifications for persons practicing as Patent Agents and provided for their registration.

Only person who satisfy those qualification and registered under the Patent Act are allowed to practice as Patent Agents in India.

The Client Attorney Privilege

The Client Attorney Privilege

‘Client-Attorney’ privilege is one of those sacrosanct principles of the common law system which protects the communications between a client and his attorney from disclosure to a third party, regardless of whether the third party is a court of law.

In the context of the common law system, ‘client-attorney‘ privilege is a significant exception to the rule.

The ‘rule’, as such, of the common law system, requires both parties to disclose all possible information to the court so as facilitate the quest for justice and the ultimate truth.

Without complete information it is unlikely that a court of law will ever be in a position to deliver a verdict that does justice to both parties.

The concept of ‘client-attorney’ privilege therefore is a limited exception to the full disclosure requirement since it was felt that a client could be best advised by his attorney only when he made full and frank disclosures to his attorney and the only way to ensure this was to ‘privilege’ the communications between the client and the attorney.

The Indian Evidence Act – 1872 codifies the concept of client-attorney privilege in Section 126 & Section 129.

‘Client-Attorney’ privileges in the context of the Indian ‘Patent Agent’:

The qualifying criteria for practice as an Indian Patent Agent is set out in Section 126 of the Patents Act.

The minimum qualifying criteria is a degree in science, engineering or technology after which a candidate is required to pass the qualifying exams conducted by the Controller General of the Patent Office.

On having passed the exams this candidate is said to have qualified as a ‘Patent Agent’ who, as per Section 127, is entitled to practice before the Controller.

Therefore a person without a degree in law is perfectly qualified to become a patent agent in India.

The question now is whether all confidential communications between the patent agent and his/her client are protected from disclosure during the course of discovery proceedings either before a court of law or the Controller himself, who under Section 77 has the power to order discovery of the documents.
 

Application of section 126 of Indian Evidence Act to Patents Agent

Application of section 126 of Indian Evidence Act to Patents Agent:

As explained above Section 126 places on ‘barristers, attorneys, vakils, pleaders’ a duty to not disclose any professional communications that he may have had with his client.

Given the fact that the Evidence Act was enacted in 1872 and not amended subsequently, it is necessary to explain that ‘barristers, attorneys, vakils and pleaders’ are no longer prevalent in India.

While ‘barrister’ has the same meaning as that in England, the remaining three terms i.e. ‘attorneys, vakils & pleaders’ are defined in the Legal Practitioners Act, 1879 and they necessarily have to be understood in context of that legislation and not given an ordinary dictionary meaning.

This entire class of legal practitioners was replaced by the sole term ‘advocate’ through the enactment of the Advocates Act, 1961.

The qualifying criteria for an ‘attorney’ in those days were decided by the High Courts in which the attorneys sought to practice. Originally under the Indian High Courts Act, 1861 there were only three High Courts located at Madras, Calcutta and Bombay.

Now although Section 126 does not mention ‘advocate’ the fact of the matter remains that Rule 17 of Chapter II, Part VI of the Bar Council of India Rules that were enacted under the Bar Council of India Act, prevent an advocate from breaching his obligations under Section 126 of the Evidence Act.

Any breach of these obligations would render the ‘advocate’ liable for punishment and maybe even expulsion from the rolls of the bar council.

Additionally it is most likely that Section 126 itself will be given a purposive interpretation to cover ‘advocates’ thereby rendering all such communications inadmissible in a court of law as evidence.

Therefore even if an advocate were to unethically disclose such information it would not be possible to admit the same as evidence during the course of a trial.

Does Section 129 of the Evidence Act, 1872 cover ‘Indian Patent Agents’?:

Section 124 of the Evidence Act, 1872 states that a witness shall not be compelled to disclose any confidential communications that he may have had with his ‘Legal Professional Advisor’.

The essential question over here is the ambit of the term ‘legal professional advisor’. Given the difference in wording between Section 126 and 129 i.e. Section 126 specifies a class of legal practitioners, it is possible to argue that Section 129 by using the generic term ‘legal professional advisor’, envisages a much broader category.

The above understanding however will have to be tempered by the fact that under Section 29 of the Advocates Act, 1961 only advocates are entitled to practice law in India. (Section 29 : Advocates to be the only recognised class of persons entitled to practice law.

Subject to the provisions of this Act and any rules made thereunder, there shall, as from the appointed day, be only one class of persons entitled to practise the profession of law, namely, advocates.)

Advocates, as per the Advocates Act, 1961, need to be enrolled with Bar Council and the Bar Council requires all advocates to be law graduates i.e. hold a LLB degree, which can be acquired only after a three year course in a BCI recognized law college.

Now it is up to the interpretation that whether the term agents come under the ambit of ‘legal professional advisor’, in light of the fact that only advocates can practice law in India hence if the interpretation hints at the affirmative then in that case all communications between patent agents and their clients will be protected from disclosure during discovery proceedings but on the other hand if the interpretation gives a negative view then all communications between patent agents and their clients will be open to discovery proceedings under Order 11 of the CPC.

Patent Attorneys And Conflicts Of Interest:

Practice in the IP area is more fraught with conflict of interest issues than many other areas of professional advice because practitioners seek to achieve broad and exclusive property right protection for their clients, proprietary rights that are limited by and impact upon the scope of later patents.

The dire consequences for the IP professional who falls foul of the law on conflicts of interest in my opinion must include one or more actions amongst the following recourse’s:

Civil action for damages for breach of contract,

Negligence, or breach of fiduciary duty; from acting, or disciplinary hearings for breach of the relevant codes of conduct.

An associated consequence is the cost and embarrassment of such proceedings.

(CIPA, ‘Consultation on Rules of Conduct for Patent Attorneys, Trade Mark Attorneys and Other Registered or Regulated Persons: Comments of the CIPA’ (2008), http://www.cipa.org.uk/download/ CIPA_Response_to_Consultation.pdf (accessed 12 December 2008).)

Are patent attorneys fiduciaries?:

The law places more onerous duties on fiduciaries than on other service providers. A fiduciary has a duty to avoid positions of conflict and may be required to disgorge profits made while in a position of conflict. It is because such onerous duties and greater sanctions apply that one must consider whether a patent attorney is a fiduciary. Surprisingly, given the stakes involved for both attorney and client, the issue remains unresolved.

(World Medical Manufacturing Corporation v Phillips Ormonde & Fitzpatrick Lawyers [2000] VSC 196 (Unreported, Supreme Court of Victoria, Gillard J, 18 May 2000) [256].)

The obligation to identify and manage potential conflict in the duties owed to various clients has not been as clearly articulated for patent attorneys as for lawyers.

Attorneys interfere with property rights so deal with this complex issue on a daily basis and the consequences for attorney and client can be dire if it is poorly managed.

This article examines the role of patent attorneys to determine the extent of the duties owed to clients, and uses practical examples to demonstrate how those duties might conflict and how this might be more easily identified and managed.

Since patent attorneys are also not status-based but fact-based, whether they are in a fiduciary relationship with a particular client depends on the situation.

A further complication is that deciding whether patent attorneys are fiduciaries does not necessarily resolve all issues.

It is therefore important to consider the nature and extent of the duties which the patent attorney has undertaken.

The nature of what a patent attorney agrees to do for various clients can vary considerably. In World Medical Manufacturing Corporation v Phillips Ormonde & Fitzpatrick Lawyers ([2000] VSC 196 (Unreported, Supreme Court of Victoria, Gillard J, 18 May 2000).), an American client had engaged an Australian attorney to file a patent in Australia, having successfully prosecuted the patent in the USA with representation and advice given by a local patent attorney.

The court described the Australian attorneys as providing ‘nothing more than a convenient conduit for an American company to make application for the grant of a patent in Australia. (World Medical Manufacturing Corporation v Phillips Ormonde & Fitzpatrick Lawyers [2000] VSC 196 (Unreported, Supreme Court of Victoria, Gillard J, 18 May 2000) [275].)

In cases like this, it may be correct to argue that the attorney receiving instructions through offshore attorneys to file a foreign patent locally is not being asked to advise on the wisdom of filing the patent locally and may thus owe fewer duties to the client. (As in cases relating to mortgage lending: Mortgage Express Ltd v Bowerman & Partners (a firm) [1996] 2 All ER 836 (CA); Clark Boyce v Mouat [1994] 1 AC 428 (PC).)

Patent Attorney Malpractice (Negligence):

With increasing frequency, clients are bringing malpractice claims against their patent attorneys.

Malpractice and the risk of malpractice is a matter of continuing concern for clients seeking patent services, individual patent attorneys, their firms and employers, the patent bar, and society as a whole, all of whom benefit from the fulfillment of the instrumentalist goals of the patent system.

Thus comes in the LAW OF TORTS. In this vein, one of the principal goals of tort law is to deter injurious conduct.

For deterrence to occur, the actor must be able to anticipate that certain conduct may result in harm to others, so that such conduct may be avoided.

Until the last decade or so, malpractice suits against patent attorneys were virtually unknown; “because patent law practice is so technically sophisticated, even to the ordinary attorney, few clients recognize when a patent attorney erred.” ( RONALD E. MALLEN & JEFFREY M. SMITH, LEGAL MALPRACTICE § 23.23, at 590 (5th ed. 2000 & Supp. 2002).)

Though this is not an entirely convincing explanation still the technical sophistication would seem to be a double-edged sword in patent law.

On the one edge, complexity may tend to minimize malpractice claims against patent attorneys due to a general lack of understanding of the technology or the law—thus making malpractice difficult to detect and to prove.

The practice of patent law is one of the most complex and difficult today.

The proceedings and forms not only require an extensive knowledge of the legal field but also considerable experience in engineering.

In conjunction with the inherent difficulty of the practice, the patent attorney has greater control over the processing of the application and the determination of the extent of the rights granted under the patent than is found in any other attorney–client relation.

Technical and legal complexities are two main factors which multiply the opportunities for patent attorney to perform mistakes.

As to the inability of clients to detect malpractice, inventors and patent owners are not among the most unsophisticated of clients. Moreover, most patent owners are industrial corporations who are likely to have in-house patent counsel or other employees experienced in patent matters.

A more plausible explanation for the relative dearth of patent attorney malpractice cases may be the difficulty of clients in prevailing in claims against their attorneys because of the ethereal nature of patent rights and the “case-within-a-case” (often referred to as “trial-within-a trial”) requirement in legal malpractice cases. (Sanitary Hair Goods Co. v. Elliott, 191 Ill. App. 563 (Ill. App. Ct. 1915))

Thus, in many instances, it would be quite difficult for the client to prove that it would have prevailed in the underlying case but for the negligent conduct of the patent attorney.

The difficulty of proving the “case-within-a-case” in patent attorney malpractice suits must be accounted for in evaluating the probability of success in the suit.

The likely result would be to discount the value of the case and thus decrease the number of cases brought directly for patent attorney malpractice.

Nonetheless, whatever reasons existed in the past, times and attitudes have changed and continue to evolve.

Clients are bringing malpractice claims against their patent attorneys.

One possible explanation for the lack of malpractice claims, other than the possibility that patent attorneys simply do not commit malpractice, is the fact that “patent law practice is so technically sophisticated, even to the ordinary attorney, it is unlikely that a client would independently detect an error by his patent attorney.” (John H. Bauman, Damages for Legal Malpractice: An Appraisal of the Crumbling Dike and the Threatening Flood, 61 TEMP. L. REV. 1127 (1988).)

However, a person who has been sued for infringement after securing a patent attorney’s infringement opinion is likely to examine the opinion closely, possibly with the benefit of technical experts, and is likely to ferret out any technical errors the attorney may have made.

The ratio of the yearly average of total malpractice (world figure) claims in the 1999 Study (9211) to the yearly average in the 1995 Study (3832) is 2.4.

For intellectual property attorneys, the ratio of the yearly average of claims in the 1999 Study (95.5) to the yearly average of claims in the 1995 Study (36) is 2.65. In other words, the increase was 240% overall, while for intellectual property attorneys the increase was 265%.

From the 1995 to the 1999 Study, claims against intellectual property attorneys increased from 0.94% to 1.04% of the total.

The percentage of the total claims in the 1985 Study was only 0.57% for intellectual property lawyers.

The statistical significance of any of these increases cannot be accurately determined. However, at a minimum, these increases demonstrate that malpractice claims against intellectual property attorneys are keeping pace with the legal profession as a whole, if not actually outrunning it.

There has been “a dramatic and steady increase in the frequency of legal malpractice litigation,” beginning in the 1960s and continuing to date: “Today, in the new millennium, the absolute number of appellate decisions is still increasing as is the relative frequency.”

This increase in claims is also reflected in the number of reported malpractice cases against patent attorneys.

Based on a rudimentary computer database search, courts have decided at least three times the number of malpractice cases against patent attorneys in the past fourteen years as in the first two hundred years of our federal patent system. Aside from tracking the general increase in legal malpractice claims, there would appear to be several patent-specific reasons for the increase.

As noted by Professor Dobbs: “Each field of law practice tends to have its own unique problems.” (Roy Ryden Anderson & Walter W. Steele, Jr., Fiduciary Duty, Tort and Contract: A Primer on the Legal Malpractice Puzzle, 47 SMU L. REV. 235, 236 (1994).)

Legal malpractice may be seen as including three separate but somewhat overlapping causes of action. Three distinct causes of action are potentially available to clients for misbehavior by their lawyers:

(1) Breach of Fiduciary Duty;

(2) Breach of Contract; and

(3) The Tort of Malpractice.

The first two aspects are based on negligence and breach of fiduciary duty.

The third is based on contract, express or implied.

All require an attorney–client relationship arising in either tort or contract (or perhaps both), which imposes a legal duty on the part of the attorney to not violate any correlative rights of the client.

All require that a breach of that duty be causally related to any damages suffered by the client.

The difference between the causes of action relate to the nature of the duty imposed and the conduct of the attorney that results in the breach of such duty owed to the client.

With respect to professional negligence, the duty is one of exercising “the skill and knowledge normally possessed by members” of the legal profession.

Thus, a duty of care is imposed on the attorney to act reasonably “under the circumstances” according to the professional standard of care normally exercised by attorneys. (In the patent context, see, for example, Campcore, Inc. v. Mathews, 689 N.Y.S.2d 814 (N.Y. App. Div. 1999) (requiring expert evidence by client to avoid summary judgment in favor of patent attorney based on expert proof submitted by attorney that client would be unsuccessful in any infringement action))

Expert testimony is usually required to establish this professional standard. With respect to a legal malpractice action based upon breach of fiduciary duty, the duty involved is one of professional conduct, i.e., to act consistently with standards of legal ethics as imposed by the common law. 

Hence, the difference is between breaching the professional standard of care and breaching the professional standard of ethics.

As expressed by one court, “Professional negligence implicates a duty of care, while breach of fiduciary duty implicates a duty of loyalty and honesty.”

The problem with this broad interpretation is “A lawyer who breaches an ethical rule has acted ‘unethically.’

The stigma of being so labeled sounds more serious than the violation of a common-law civil principle [the standard of care], though they may be substantively identical.

”However, these breaches are separate torts and would require separate pleading and proof.
Violation of an ethical rule generally may be admissible as evidence of the breach of a duty of care, but is not a determinative factor; moreover, this breach must be causally related to some damage suffered by the client.

For breach of fiduciary duty, expert testimony may not be required, as the breach is one of an ethical standard and not of due care. In addition, separate defenses may be available, such as contributory negligence and statutes of limitation.

A client may base her claim against an attorney upon breach of an express contract. The client would be required to prove the existence of such a contract and the express provisions thereof violated.

When an implied contract is alleged as the basis of the client’s claim and the alleged breach involves negligence or unethical conduct of the attorney, the proof of the breach would be the same as in the direct actions for the respective torts.

Thus, the client would have the burden of establishing the appropriate professional standard of care or ethical conduct.

However, pleading breach of implied contract normally provides the client with a longer statute of limitations than that applied to professional negligence.

Malpractice as Professional Negligence:

There are various duties of a patent attorney which he/she needs to follow and in cases of professional Negligence these same duties are neglected or are breached. Some of the essential duties are:

Duty Of Confidence:

The law imposes a duty of confidence on patent attorneys in relation to any information received in confidence and which remains confidential.

Unlike some of the other duties described below, the duty of confidence is ongoing and survives the end of the retainer.

If we take example of the Australian code of ethics for patent attorneys then, given that this duty is not necessarily based in contract, a duty of confidence may even arise in relation to potential clients. Care should be exercised when discussing with a potential client whether one might act for them. (This is assumed by the code of ethics of the professional body: Institute of Patent and Trade Mark Attorneys of Australia, ‘Code of Ethics’ (1998) Guideline 7, http://www.ipta.com.au/indexPrev.php?artId=64 (accessed 27 December 2008))

If confidential information is disclosed in the course of that discussion, which could benefit an existing client and harm the potential client, this could compromise the adviser’s ability to continue to act for the existing client.

Views differ as to when information is sufficiently public to excuse a lawyer or attorney from the duty of confidence.

For instance, in Hilton v Barker Booth & Eastwood (a firm) ([2005] UKHL 8, [2005] WLR 567.), the House of Lords concluded that the information that a client had been made bankrupt and imprisoned was not confidential because ‘these facts were known to any journalist or member of the public who had been present in the Crown Court at Preston’ when the client was sentenced and ‘were also probably reported in local newspapers. (Hilton v Barker Booth & Eastwood (a firm) [2005] UKHL 8, [2005] WLR 567 [33] (Lord Walker).)

This narrow approach to the notion of confidential information in the context of conflicts of interest has been criticized by UK commentators as well as Australian courts. ( Fordham v Legal Practitioners’ Complaints Committee (1997) 18 WAR 467 (Full Court of the Supreme Court of Western Australia). Special leave to appeal to the High Court of Australia was refused: see Transcript of proceedings, Fordham v Legal Practitioners’ Complaints Committee (High Court of Australia, Gaudron and Kirby JJ, 22 October 1998). See also British American Tobacco Australia Services Ltd v Blanch [2004] NSWS 70 (Unreported, Supreme Court of New South Wales, Young CJ, 20 February 2004) [85].)

Patent attorneys should err on the side of caution. As appears from Hilton v Barker Booth & Eastwood (a firm), ([2005] UKHL 8, [2005] WLR 567.) whether the information is confidential is beside the point if the patent attorney is considered a fiduciary with duties of loyalty to a current client.

In such a case, the obligation is to not disclose unfavourable information about the client, even if published.

As lawyers are key players in the administration of justice, courts are sensitive to perceptions of justice and will restrain lawyers even where it may appear to a member of the public that they may misuse confidential information from past or present clients.

While patent attorneys are not officers of the court, if they have played a role more analogous to that of a lawyer in litigation, the court may be equally concerned about perceptions of misuse of confidential information.

Duty Owed to Client as a Matter of Right:

The legal duty between an attorney and client arises from the professional relationship formed between the parties.

The theory underlying the duty–right relationship may be contract (express or implied) or tort.

The duty so imposed on the attorney is to act according to the standard of care customarily undertaken by members of the profession to avoid unreasonable risks of injury to the client within the scope of the imposed duty, with the client having a correlative right to that standard of care.

The scope of the duty is not unlimited and depends upon the nature of the legal services sought.

The scope may be expressly defined, e.g., if there is a contract specifying the services to be performed by the attorney, such as preparing a patent application covering a particular invention.

The duty may also be implied in the absence of an express contract, as an implied term of the professional relationship, or imposed by implication by the tort duty–right relationship under the circumstances.

Duty to disclose relevant information:

A duty which a fiduciary will usually owe to a current client where there is no conflict of duties is a duty to disclose information relevant to the retainer.(Hilton v Barker Booth & Eastwood (a firm) [2005] UKHL 8, [2005] WLR 567 [38] (Lord Walker). This is a duty based in contract or tort law, not fiduciary law.) Where an actual conflict arises between a duty of confidentiality and the duty of disclosure, fiduciary law usually obliges lawyers to avoid the conflict by dismissing both clients.(This will ordinarily be the case for lawyers unless the court agrees that the client consented to a highly constrained form of retainer: Clark Boyce v Mouat [1994] 1 AC 428 (PC).)

In the case of patent attorneys, much will depend on what the attorney has been retained to do and whether the attorney is considered a fiduciary.

Consider the following scenarios:

Scenario 1

An attorney has been approached by a potential client to lodge all documents necessary to protect an invention.

What if the attorney is aware, having acted for an existing client, that this potential client is wasting its money seeking patent protection for the invention as it stands, since the existing client’s application has already been filed—even though it has not yet been published?

While the attorney should send the potential client away, there is no positive duty to disclose such knowledge to a person who has never become a client. There is no relevant information to disclose to the existing client, whose application has already been filed.

Scenario 2

In this scenario, when the attorney is approached by the potential client, an existing client’s patent application has been prepared for substantially the same invention but has not been lodged.

The potential client is sent away, but from this brief encounter the attorney has become aware that the prospective client will lodge a patent application through another patent attorney very soon, perhaps before the existing client’s application is lodged.

If the duty towards an existing client includes a duty to advise on the merits of its application, the attorney may have a duty to disclose information relevant to the application’s legal merit, for instance information that would increase the chance of the patent application being successful.

But if disclosure of this information requires disclosure of confidential information belonging to the potential client, the attorney would be in breach of a duty of confidence. In such situations, fiduciaries are required to take action to avoid the conflict—not disclose the information, but cease acting for the existing client, as well as refusing to act for the potential client. (Hilton v Barker Booth & Eastwood (a firm) [2005] UKHL 8, [2005] WLR 567.)

Scenario 3

In the third scenario the client is offshore, an experienced user of the patent system and primarily represented by a patent attorney overseas who has already lodged the patent application in that country on the client’s behalf. In such circumstances, the client arguably only wants the attorney’s clerical assistance in preparing basic documents for the lodging of the patent application, not the attorney’s advice.

The attorney may not be considered a fiduciary in such a scenario and may have no positive duty of disclosure.

The three scenarios above demonstrate that there are no clear answers in regard to the duty of disclosure.

Much depends on the facts of individual cases and the nature of the retainer between attorney and client.

But in some cases, the court may find a duty of disclosure arising out of a duty to advise.

The profession often promotes itself as providing advice, not just clerical assistance and imposition of an advisory role akin to that of lawyers is also consistent with the patent attorney’s ability to claim client legal privilege on behalf of clients.

Thus it shows that the importance of the duty of confidence and its interplay.

Hence a possible duty of disclosure serves to demonstrate how essential it is to be alert to the potential for conflicts of interest to arise and to ensure that potential clients do not disclose more information than necessary before that attorney agrees to accept instructions.

Failure to exercise caution can have dire consequences for the attorney, including the dismissal of existing clients. (C Dent, E Hall and A Christie, ‘For the health of the economy and patent system: rationale and scope of patent attorney privilege’ (2009) 4(1) JIPLP 23)

CONCLUSION

Legal malpractice is an omnipresent danger for all lawyers. The danger seems particularly pressing with respect to patent practitioners, especially in view of the often metaphysical nature of patent law, the ever increasing sophistication of technology, and the law designed to protect that technology. It thus becomes progressively more important that patent attorneys be aware of the scope and consequences of this danger.

The acquisition of patents is costly, as is their enforcement. Damages can be horrendous. The full expectations of clients cannot always, if ever, be fulfilled.

If that conduct is not deterred, then the other primary goal of compensation must be imposed for reasons of corrective justice. (The imposition of tort liability not only corrects wrongs that have already occurred; it also helps to prevent future tortious actions, by threatening potential wrongdoers with liability if they cause actionable harm.” KENNETH S. ABRAHAM, THE FORMS AND FUNCTIONS OF TORT LAW 15 (1997). See generally Symposium, Corrective)

In the end the question remains whether a client who is at loss can bring any action against his attorney? In Indian legal set up although we have provisions like Consumer Protection Act and Right to Information Act under which the client who is a “customer” can bring his grievances or the client who in certain cases is also the “citizen” of India can ask for information, for the redressal of their grievance has a twist.

We all agree that in this commercial era, all services have a price and there are no second thoughts that law profession is inevitably a service. So was also the conclusion of the National Consumer Disputes Redressal Commission.

However the Supreme Court, it seems, has doubts on that proposition. Thus was stayed by the Supreme Court the decision of the National Commission which had held that lawyers also provide service and thus can be brought to terms under the Consumer Protection Act for deficiency in service.

In its judgment dated 06.08.2007 passed in D.K. Gandhi v. M. Mathias (D.K.Gandhi v/s M.Mathias, in Revision Petition No. 1392 of 2006, pronounced on 6th August 2007)a Bench of National Commission, headed by Justice M.B. Shah (a former Judge of the Supreme Court) had inter alia held as under;

“In our view, the reasoning given by the State Commission is totally erroneous. The ambit and scope of Section 2(1)(o) of the Consumer Protection Act  which defines ‘service’ is very wide and by this time  well established. It covers all services except rendering of services free of charge or a contract of personal service. Undisputedly, lawyers are rendering service. They are charging fees.  It is not a contract of personal service.  Therefore, there is no reason to hold that they are not covered by the provisions of the Consumer Protection Act, 1986.”

Firstly, that in an advocate-client relationship the client executes the power of attorney to his advocate to do certain acts on his behalf, but nothing is stated in the contract or power of attorney as to what would be the liability of the advocate incase of his failure to act.

Secondly, the contract giving rise to the above relationship is a unilateral contract executed by the client giving authority to the lawyer to appear and represent the matter on his behalf without any specific assurance or undertaking and,

Thirdly, there is no term of contract whereby such power of attorney is executed to the advocate.

A petition for special leave to appeal was filed against this decision by an association in the name of Bar of India Lawyers where the Supreme Court, allowing leave to appeal (and thus paving way for a decision to be given on the issue on merits) stayed the judgment of the National Commission by its order dated 13.04.2009 in Bar of Indian Lawyers v. D.K. Gandhi. Thus as of now, given the operation of stay, no final opinion can be given as to the status of lawyers as service providers under the Consumer Protection Act.

Next, RTI stands for Right To Information and has been given the status of a fundamental right under Article 19(1) of the Constitution. Article 19 (1) under which every citizen has freedom of speech and expression and have the right to know how the government works, what role does it play, what are its functions and so on.

Hence RTI is not an apt tool for seeking information against an attorney by his client, as it is a tool which is best utilised in respect to government or government undertaking and clearly a patent attorney doesn’t come under that preview.

Conflict of interest situations are especially troubling to patent firms, particularly in the age of assimilating patent attorneys into large general practice firms. There are significant professional and practical consequences that require active foresight for effective deterrence.

If there is a potential for high losses to be suffered by a client by a particular course of conduct, even when these losses are discounted by the improbability of their occurring, the attorney should be forewarned that his conduct may be suspect, and additional thought and evaluation should be given before proceeding.

About Authors

Vibhuti Kagdiyal is a Law (Hons) graduate with specialization in energy laws from university of petroleum and energy studies, Dehradun,  and is currently employed as project trainee (legal) Larsen n Tubrou, Hydrocarbons. She can be contacted at vibhuti.kagdiyal@gmail.com. She did an internship at Indian Oil Corporation Limited during Jan-Feb 2012.

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Dr. A.K. Kashyap is currently Senior Project Coordinator, IP Cell, at Indian Oil Corporation Ltd (IOCL). He superannuated in January 2012 as Chief Research Manager (IPR) at IOCL. He can be contacted at kashyaparun@yahoo.com.