Patent Attorney Malpractice: An Oxymoron No More

Until the last decade or so, malpractice suits against patent attorneys were virtually unknown. Mallen and Smith in their treatise on Legal Malpractice attempt to explain this: Because patent law practice is so technically sophisticated, even to the ordinary attorney, few clients recognize when a patent attorney erred. This is not an entirely convincing explanation. Technical sophistication would seem to be a two-edged sword in patent law. On the one edge, it may, as has been asserted, tend to minimize claims against patent attorneys for malpractice because of a general lack of understanding of the technology itself, or of the law relating to patentability, or both - thus making malpractice difficult to detect and to prove. While, on the other edge, technical and legal complexity would seem to multiply the opportunities for mistakes to be made by patent attorneys. A more plausible explanation for the relative dearth of patent attorney malpractice cases may be due to the difficulty of clients' prevailing in malpractice claims against their patent attorneys because of the ethereal nature of patent rights and the case-within-a-case (often referred to as trial-within-a-trial) requirement in legal malpractice cases. Nonetheless, whatever reasons existed in the past, times and attitudes have changed and continue to change. Clients, with increasing frequency, are bringing malpractice claims against their patent attorneys. They seem to have become better at detecting error, particularly in hindsight blessed with 20/20 vision. Irrespective of whether there has been a substantial increase in the number of malpractice claims against patent attorneys, for whatever the reasons, malpractice and the risk of malpractice should be a matter of continuing concern to clients seeking their services, individual patent attorneys, their firms and employers, the patent bar, and society as a whole, all of whom benefit from the fulfillment of the instrumentalist goals of the patent system. In this vein, one of the principal goals of tort law is to deter injurious conduct. For deterrence to occur, the actor must be able to anticipate that certain conduct may result in harm to others, so that such conduct can be avoided. It is a goal of this article to analyze the exposure of patent attorneys to malpractice claims and hence to promote deterrence of conduct that may result in economic injury to clients and others affected by that conduct. This will be done by first evaluating the theories upon which malpractice is based, principally professional negligence and breach of fiduciary duty. The respective elements of the professional negligence cause of action will be analyzed with specific reference to the peculiarities of patent practice. The breach of fiduciary duty theory will be similarly analyzed and compared. In the course of these analyses, the transferability to malpractice claims against patent attorneys of certain doctrines recognized with respect to other professions will be considered. Common defenses to malpractice claims will then be evaluated in the context of patent practice, in particular the functioning of statutes of limitations. Based on the preceding analyses, some implications and conclusions will then be offered.