Has a patent lawyer ever been successfully sued for malpractice due to advising that an invention was patentable when it was not?

Market forces encourage restraint.  An attorney has an incentive to help smaller clients spend money only where it will help them make their business successful.  Once the business is successful, they will become a bigger client, and the attorney will hopefully get more work from them because they treated them fairly when they were small.  A rule of thumb is that it's much easier to bring in more business from existing clients than it is to go out and find brand new clients. 

You could also think of it like the fishing industry: A fishing captain wants to bring in as many fish as he can, but if he takes too many, he runs the risk of underpopulating the fishery and destroying his livelihood.  The fishing captain, like the attorney, has an incentive to ensure that the source of his income remains healthy. 

Also, at least in Seattle, the patent bar is fairly small.  An attorney that goes around convincing people to spend a lot of money filing patent applications that go nowhere will probably earn a reputation for doing so, and would have a harder time acquiring new business.

At least one case shows it may be hard to win a malpractice claim in court.  It seems like succeeding on a claim alleging that an attorney advised their client to pursue a patent on something unpatentable would be difficult.

I did a little searching on this, and I found Voight v. Kraft, 342 F. Supp. 821 (D. Idaho 1972).  You can read the case here:

http://scholar.google.com/schola…

Summary: Plaintiffs tried to sue their patent attorney in federal court for advising them to pursue a patent on an unpatentable invention.  However, the federal courts only have subject matter jurisdiction if the case contains questions of patent law.  As the plaintiffs admitted that there was no question of patentability, there was no federal question, and so the case was dismissed for lack of jurisdiction.

That was the only case I was able to find in a brief search on Google.  However, I did find this article by Professor Oddi that goes into great detail about the difficulties involved in proving patent malpractice:

http://www.jltp.uiuc.edu/archive…

From the patent attorney's perspective, advising that an invention is not patentable is often a bad idea.  An attorney can definitely be sued for malpractice for negligently advising a client not to pursue IP protection (or negligently failing to obtain such IP protection), and the client suffers damages. 

If you assume that the attorney will get sued no matter what advice he gives, think about this: What would the damages be for failing to obtain IP protection that could have ensured a stake in a billion dollar industry?  Meanwhile, what would the damages be if a client spent legal fees on patent prosecution to pursue an application that is unlikely to be allowed?  If the attorney is erring on the side of his own risk management, it's probably in his best interest to advise the client to try to seek IP protection.

So, in answer to the question, it seems like the risk of malpractice liability provides an incentive to advise pursuing patent protection in questionable cases.

Personally, I don't like to tell clients that they shouldn't file a patent on something, because I can never be sure whether it is patentable, and in the end it is their decision to make.  However, in difficult cases, I like to manage expectations by explaining how hard/expensive I think it will be to obtain a patent, and predicting that any claims eventually allowed are likely to be quite narrow or of little value.

4 Replies to “Has a patent lawyer ever been successfully sued for malpractice due to advising that an invention was patentable when it was not?”

  1. I don't know if this has ever happened, but it's safe to say this is exceedingly rare if it happens at all. The reason is that the standard of patentability is legally very vague and in flux. The rules are very gray. Malpractice generally only occurs when an attorney has acted egregiously. That's not to say that one can't be censured for malpractice for an ommission (you can if it's essentially a misrepresentation or a failure to act on behalf of a client), but because the underlying standard is so vague, it is hard for a judge to decide if a lawyer's actions were egregious. Moreover, it is really the patent office's responsibility to decide what is patentable, not an attorney's. Technically you don't need an attorney to file a patent. The responsibility for filtering lies with the patent office.

    However, an attorney can (and they have) face santions from a court if it is discovered that an attorney misled a patent examiner. So, if an attorney knows that a similar invention already exists and tries to hide it, then he can face a penalty if that patent is ever sued on. Statistically though, few patents ever go to trial. Most see no conflict and the ones that do are often settled on.

    Far more likely is the possibility of a lawyer getting in trouble with a state bar for violating ethics rules. Perhaps the lawyer solicits clients in unproffesional ways or harasses them. Again, though, while more likely than the other scenarios, that does not happen very often.

  2. The challenge is even if you proved him wrong AND negligent (incredibly hard to prove), you have no damages until you can prove to the court the money you would have made with the patent.

    Sure, if he is wrong and negligent you may be able to get a fee refund, but I doubt that is where this question was going.

  3. We can never advice if something is patentable or not. That is for the USPTO to decide.   What we can do is research whether or not there is similar art or prior art!   We can tell them what the SCOTUS tells them about what is within the subject matter.   We can give them legal standards and then the client decides if it is worth it risking the fees to patent.

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