My company hired a patent attorney to file a patent application for a new online business system. They system had already been launched publicly (by a few months) when we hired the patent attorney (a fact he was aware of). The process of drafting the application took longer than we thought. The attorney ended up sitting on the completed patent application for no reason and filing it a year and 2 days after we had publicly launched the service. We did not know there was a requirement that the patent application had to be filed within one year of the invention being publicly disclosed (we were never told by the patent attorney). The examiner rejected our application in large part due to this problem. What kind of case do we have against our former patent attorney?
Any legal malpractice case requires a "trial within a trial," meaning the underlying case has to proved to be a winner if you want to be able to hold the attorney that screwed it up liable for screwing it up.
So what's crucial here is that the missed deadline was only "in large part" the reason for rejection by the USPTO. The state of the law on business patents is in flux due to the Bilski caase and its progeny, so this is not a easy question with an easy answer. Don't wait to see a malpractice lawyer, because the statute for legal malpractice in CA is 1 year from the date of injury.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
10 lawyers agree
Personal Injury Lawyer
I strongly advise you to consult with a patent attorney to discuss a potential case as you did not give me enough facts.
This advice should not be construed as forming an attorney-client relationship.
Patent Application Attorney
This is a serious action you are contemplating. You should consult a patent attorney in person with all the details in front of him or her.
The foregoing does not constitute legal advice. No attorney-client relationship exists between me and you. Please consult a qualified attorney before making any significant decision.
5 lawyers agree
As a patent attorney I am not going to make a direct comment on this one, but you may want to google the well-known Kairos Scientific vs. Fish & Richardson malpractice case for your own information.
All comments and opinions expressed in the above are simply mere conjecture and speculation and do not constitute legal opinion or legal advice, and as such should not be used as a legal opinion or legal advice. Please consult your own attorney or legal representative for all legal opinions and advice.
Patent Application Attorney
It is worth looking into. Be aware that the law firm's insurance company will try to defend on the basis that there is other prior art out there that is relevant, and on the basis that damages are low. They will look beyond the examiner's rejection to other possible grounds of rejection or invalidity. They may conduct an international search. Hire an attorney right away to investigate. While they are investigating, you could do some of your own searching to verify novelty.