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Client rejected advice, claimed malpractice

DLawyers who have given sound advice may think they need not worry about being sued by clients.

Not necessarily.

Giving sound advice is one thing. Getting the client to follow the advice is another.

A disappointed client sued a law firm after the client failed to win approval of a patent for a low-calorie “dough product.” The client said the defendant law firm had “buried” advice to the client on the change it needed to make in its claim in the law firm’s 25-page draft response to a patent examiner’s initial rejection of the claim.

The Fairfax Circuit Court was succinct in dismissing the malpractice suit: According to the former client, the client rejected the advice, fired the defendant law firm and then, acting pro se, filed its amendments with the U.S. Patent and Trademark Office omitting to make the suggested change.

The firm was not at fault for the failed application, the court concluded in Technology Advancement Labs LLC v. Birch, Stewart, Kolasch & Birch LLP (VLW 015-8-065).

But the client is contemplating an appeal, according to its attorney, Washington DC lawyer John Lopatto III.

Lopatto compared TAL’s complaint to a malpractice complaint filed by a bankruptcy client who said his lawyer failed to highlight critical advice. In that 2014 case, Valladares v. Lilly Law Group PC, the Supreme Court of Virginia said the client had adequately pleaded malpractice. It reversed in an unpublished order and sent the case back to the trial court.

Dough for dough

The client TAL had high hopes for its patent application, claiming damages of $200 million for the firm’s alleged malpractice.

Plaintiff TAL hired a Northern Virginia IP firm to help it with a patent application for a “novel, low caloric dough that can be used to create bread, crackers and other food products” with a “caloric reduction” of 98 percent, according to TAL’s malpractice complaint.

TAL asked Birch, Stewart, Kolasch & Birch LLP, based in Falls Church, to respond to the PTO’s preliminary rejection of TAL’s patent application and to meet with the patent examiner who was in charge of reviewing the application.

Federal patent law requires a written description of an invention and of the patent claims pointing out the subject matter of the invention. Each claim is divided into a preamble, a transitional phrase from the preamble to claim body, and the claim body.

The standard of care for patent attorneys requires that they know the importance of differences between the transitional phrases in a patent application: “comprising,” “consisting of” and “consisting essentially of,” TAL’s lawsuit said.

According to the PTO’s Manual of Patent Examining Procedure, the transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional parts or steps, if any, are excluded from the scope of the claim. The manual directs that a determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis.

When BSKB met with the patent examiner in October 2008, the examiner advised that TAL’s application could be legally and timely amended to replace the transitional phrase “comprising” in the application with the phrase “consisting essentially of.”

According to TAL’s complaint, the patent examiner referred to the “consisting essentially of” replacement transitional phrase “in a sufficiently positive way that made allowance of the claim highly likely if the examiner’s suggestion had been acted upon.”

The standard of care required the law firm to explain exactly what the examiner indicated was needed as an amendment for claim allowance, TAL asserted. The defendant law firm had to make its report to the client “meaningful and detailed enough that the client applicant could understand and act appropriately,” the former client said.

Advice not clear

TAL claimed it had been left in the dark as to the patent examiner’s “affirmative and favorable sentiment to changing the text in its claim to ‘consisting essentially of.’”

Two days after the law firm’s interview with the patent examiner, it drafted a 25-page response with claim amendments answering the PTO’s first denial.

TAL said the law firm “buried” an amendment to add the “consists essentially of” language recommended by the patent examiner.  The company said the firm “did not alert its client on the urgency of filing this particular amendment to claim 1 to achieve the examiner suggested path to claim allowance.”

The company’s chief scientist informed BSKB that the company would be making its own amendments to the application based on the law firm report of its communication with the patent examiner, and would be proposing amendments contrary to BSKB’s recommendations.

TAL’s amendments did not include the “consisting essentially of” language recommended by the patent examiner. In March 2009, the PTO rejected the application. TAL sued, claiming it learned in a later meeting with the patent examiner that the examiner had told BSKB that “comprising” should be changed to “consisting essentially of” in the transitional phrase in the patent application.

In TAL’s own words, the law firm had in fact communicated to the client that the amended application should include the transitional phrase language change, the trial court said.

“The Plaintiff rejected this advice, fired the Defendant as its counsel, and then, acting pro se, filed its amendments with the USPTO. In short, even if the factual allegations of the First Amended Complaint are taken as true, the Plaintiff’s claim that BSKB breached the standard of care for patent attorneys cannot survive demurrer,” wrote Judge Jane Marum Roush in the June 9 opinion.

Fairfax lawyer William L. Mitchell II, who represented the defendant, could not be reached for comment.

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