Posts Tagged: "patent malpractice"

Gunn et al v. Minton: Patent Malpractice Not a Federal Issue

The Supreme Court tried to simplify the issue by concentrating on whether the state-law claim raised a substantial and disputed federal issue, which a federal forum would be able to entertain without disturbing the approved balance between federal and state jurisdictional responsibilities. The Supreme Court went on to note that “federal jurisdiction over a state law claim will lie if a federal issue is: (1) necessarily raised, (2) actually disputed, (3) substantial and (4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress. Where all four of these requirement are met, we held, jurisdiction is proper because there is a ‘serious federal interest in claiming the advantages thought to be inherent in a federal forum.”

Jason Williams

March 4, 2013

Patent Prosecution Across the AIA Divide: Warning to Patent Practitioners – Special Care is Needed to Avoid Legal Malpractice

Therefore, returning to my hypothetical inquiry above, assume a continuation is filed on or after March 13, 2013, but is accomplished in such a manner so that its does not qualify to be treated as a patent application under current law. This means, as a consequence, that if, for example, the parent application when originally filed relied upon the one year grace period or if someone else files a patent application describing the subject matter of the invention before the filing of the parent application (but otherwise was not the “first to invent”), the claims of the continuation will be rendered unpatentable. Furthermore, since it would have been possible to file the continuation in a manner so that current law continued to apply even after March 13, 2013, one might imagine that a patent prosecutor in this situation may be subject to liability and/or perhaps a bar complaint. If I now have your attention, continue reading, because this situation can take place much more easily than I certainly would have imagined.

Howard Skaist

January 19, 2012

Ropes & Gray Seeks Dismissal of Patent Malpractice Lawsuit

On Tuesday, March 23, 2010, Ropes & Gray filed a motion seeking to dismiss a malpractice claim brought against the firm by Cold Spring Harbor Laboratory (CSHL). The complaint filed against Ropes & Gray also names patent attorney Matthew P. Vincent, who allegedly engaged in plagiarism by copying 11 pages of text from a patent application filed by another scientist, Dr. Andrew Fire. CSHL alleged that the copying of this material led to the United States Patent and Trademark Office concluding that the work of Dr. Hannon (of CSHL) was indistinguishable from Dr. Fire’s work and, therefore, unpatentable. The problem with this theory, as was pointed out in the Ropes & Gray motion to dismiss, copying text out of other patents and patent applications is done all the time.

Gene Quinn

March 28, 2010

Akin Gump Loses $72.6 Million in Patent Malpractice

On May 7, 2009, Akin Gump Strauss Hauer & Feld LLP lost a patent malpractice suit in the United States Federal District Court for the Western District of Texas, when the jury concluded deliberations and presented the court with its a Verdict Form, which awarded the plaintiff’s $72,611,397.83. In a report in Law Blog of the Wall Street Journal on…

Gene Quinn

May 9, 2009