Two interesting cases present themselves involving liability of patent lawyers. The first case pertains to our Canadian lawyer friends. As a courtesy, the U.S. Patent and Trademark Office allows Canadian lawyers to practice before it, extending the courtesy of filing papers in behalf of patent and trademark applicants and representing applicants in PTO proceedings. But what happens if a Canadian lawyer commits an act of malpractice in a PTO filing or during the course of a PTO proceeding? The U.S. Court of Appeals for the Federal Circuit on August 3d held that the Canadian lawyer is subject to personal jurisdiction in the U.S. for the malpractice claim, and can be sued in any federal court.
The Canadian lawyer filed a computer software patent application with the PTO for a Canadian client. The client took the position that the Canadian lawyer failed to include relevant software code in the patent application and, as such, the resulting U.S. issued patent failed to include a relevant portion of the software code. The Canadian lawyer never entered into Virginia (the PTO is located in Alexandria, Virginia) in prosecuting the patent, but the client sued the lawyer in federal court in Virginia nonetheless. The Federal Circuit held that any state has personal jurisdiction over a non-resident defendant who does not come into the U.S., when the claim arises under federal law, the defendant is not subject to jurisdiction in any state, and the exercise of jurisdiction comports with due process. Canadian lawyers have had the benefit of practicing before the PTO without having to become qualified as a U.S. licensed attorney. Now, they also have the burden.
The second case deals with how to establish a patent lawyer's liablity for malpractice in prosecuting a patent application. The federal court in Kentucky held last week that it is necessary for a plaintiff in a patent malpractice case to establish the patent lawyer's negligence through expert testimony of unreasonable conduct. However, any expert will not do. Here, the plaintiff argued that the patent lawyer was negligent in including certain descriptive language in the patent claims. The patent lawyer argued that the cited language was reasonable and necessary to the patent claims. The plaintiff offered expert testimony from another attorney to establish patent prosecution legal negligence. The expert attorney possessed 40 years experience as a patent attorney. The court refused to accept this expert testimony, however, stating that the expert's "extensive experience with the patent application process alone does not necessarily qualify him as an expert." Huh? Experience in the patent application process is not enough to qualify a witness as an expert to prove patent prosecution malpractice. The court requires specialized experience, training, skill or education in legal malpractice as it relates to the patent application process. Such a requirement may not be easily achieved in many instances.
And so it comes to be. While it is one thing to sue a patent attorney for malpractice, even a Canadian lawyer who does not set foot into the U.S. for purposes of the patent prosecution, it is harder than heck to win.