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Patent Firm Did Not Breach Standard of Care

A client whose legal malpractice complaint alleges it did not follow defendant law firm’s advice about its patent application that was “buried” within an amendment to a draft response to a patent examiner has not alleged the firm breached the standard of care for patent attorneys, and the Fairfax Circuit Court dismisses its complaint.

To establish a claim for legal malpractice, a plaintiff must allege an attorney-client relationship which gives rise to a duty, a breach of that duty by the defendant attorney, and finally that damages were proximately caused by the defendant attorney’s breach.

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

Defendant law firm met with a patent examiner on behalf of the client’s patent application. The patent examiner advised the law firm that the patent application could be legally and timely amended to replace the transitional phrase “comprising” in the application with “consisting essential of.”

The standard of care requires a patent attorney to explain to the client exactly what the examiner has indicated is needed in amendment for claim allowance. Plaintiff alleges the firm reported the result of the interview and drafted a response with claim amendments. Plaintiff alleges the firm “buried” an amendment to add the “consists essentially of” language recommended by the patent examiner.

The client decided to make its own amendments to the patent application based on the report, but those amendments did not include the “consisting essentially of” language recommended by the patent examiner. The law firm formally withdrew as counsel. The patent application was denied and the client sued the firm.

The court agrees with defendant that the allegations of plaintiff’s first amended complaint demonstrate plaintiff is not entitled to relief. The plaintiff rejected defendant’s advice, fired the firm and filed its amendments with the USPTO. Even if the factual allegations are taken as true, plaintiff’s claim that the firm breached the standard of care cannot survive demurrer.

Technology Advancement Labs LLC v. Birch, Stewart, Kolasch & Birch LLP (Roush) No. CL 2013-16498, June 9, 2015; Fairfax Cir.Ct.; John S. Lopatto III, William L. Mitchell II for the parties. VLW 015-8-065, 7 pp.

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