The latest in a spate of legal malpractice claims is one where we can only shake our heads and wonder, “what were they thinking?” (Davis v. Brouse McDowell)
The plaintiff, owner of the “IP-Exchange” website, filed two pro se provisional patent applications. Five (5) days before the deadline for filing corresponding non-provisional, utility applications, she contacted a patent attorney who agreed to file the non-provisional applications and a PCT application on a rush basis. He succeeded in filing three (3) U.S. non-provisional applications, but missed the deadline for filing the PCT application.
The plaintiff ultimately abandoned the U.S. applications. She then sued her attorney and his firm for malpractice based on the failure to timely file the PCT application and alleged negligence in the preparation of the U.S. applications.
The trial court granted the defendants’ motion to dismiss and the plaintiff appealed. The appellate court agreed that the defendants owed a duty of care to the plaintiff and noted that the attorney admitted that he had “filed an application which he realized contained a poorly drafted specification and claims which he intended to repair at a later time.” However, the court went on to hold that, “even if [the plaintiff] can establish that [the attorney] breached a duty to her, she must still also prove causation, i.e. that absent his breach she would have obtained a patent…” Since her expert witness had not performed a prior art search, or a “patentability analysis,” nor had he identified any patent claims that could be made for her invention, his opinion as to the patentability of her invention lacked adequate foundation and, hence, could not serve as evidence of patentability. Therefore, the appeal was denied.
THE LESSONS TO BE LEARNED: (1) Patent prosecution should be done by professionals, who need adequate time to do a proper job; and (2) expert opinions require adequate foundation.