Patent Attorneys Off the Hook for Malpractice

     (CN) - Law firms that represented a Japanese company in a patent dispute over a corrective tape dispenser are off the hook for legal malpractice.
     A federal judge in the District of Columbia dismissed the malpractice suit brought by Seed Company Ltd. after it lost in a patent interference action before the U.S. Patent and Trademark Office.
     As recounted in the opinion written by U.S. District Court Judge Richard J. Leon, the Japanese firm lost the underlying case despite the fact its patent application was filed three years earlier than that of a rival U.S company for a similar device.
     The Patent Office based its adverse decision on the failure of lawyers for the firm, Seed Company Ltd., to attach an English-language translation of a Japanese patent application to an application they filed with the U.S. agency, Judge Leon said.In dismissing the current case, the judge said the lawyers can't be sued for malpractice because they were simply following the law as they knew it at the time.
     Leon noted that it was clear from the record that the attorneys were well aware of the requirements concerning translations of patent documents, which vary from one type of patent proceeding to another. Their failure to attach a translation to a filing in the interference action was clearly not a result of carelessness, Leon said. Instead, the decision was based on their interpretation of legal authorities available to them at the time, in 1997, which stated that a translated copy was not required.
     The first decision to establish such a requirement was a ruling during the underlying patent litigation in this very case, the judge pointed out. The lawyers can't be faulted for failing to anticipate a future change in the law, Leon said. He concluded that "any decision by this court finding that defendants breached their duty of care by not filing such a translation would assign liability based on hindsight ..."
     In dismissing the malpractice claim, Leon invoked the judgmental immunity doctrine, which was formally recognized in a 2009 decision of the D.C. Circuit Court of Appeals. The ruling established that an attorney cannot be sued for malpractice for following an "informed professional judgment made with reasonable care and skill."
     The doctrine bars the Seed Company's malpractice claims against its patent attorneys because it "requires that lawyers must exercise reasonable care, it does not require them to foretell the future," Leon concluded.
     The judge also dismissed the company's malpractice claim based on their attorneys' allegedly erroneous advice to turn down settlement offers from the inventor with the rival U.S. patent. The company had acknowledged that it could not identify any damages from the alleged misadvice concerning the settlement offers that were distinct from the damages associated with the other malpractice claim.