Inventor Loses Claims Against Patent Lawyer

(CN) - The Federal Circuit affirmed dismissal of an inventor's legal malpractice claims against her former patent attorney, because she failed to show that her new Web site, The IP-Exchange, was patentable.

Heather Davis asked attorney Daniel A. Thomson with the Ohio-based firm Brouse McDowell LPA to help her obtain patents for The IP-Exchange, a social networking site aimed at intellectual property professionals.

She blamed the abandonment of her patent applications on Thomson's deficient filings. He allegedly went on vacation, missed filing deadlines and submitted a poorly drafted patent application that he said he would "go back and clean up."

The district court dismissed her case, saying the malpractice claims hinged on her invention's patentability, which Davis failed to prove.

The Federal Circuit agreed, but only because Davis failed to prove that Thomson was responsible for the failed patents.

Judge Kimberly Moore acknowledged that there was a "genuine issue of material fact as to whether Mr. Thomson breached a duty he owed to Ms. Davis as her attorney."

"Mr. Thomson went on vacation, missed filing dates, and, by his own admission, filed an application which he realized contained a poorly drafted specification and claims which he intended to repair at a later time. This is certainly not standard or adequate patent attorney representation, especially if, as Ms. Davis alleges, he did not inform her of his intention to proceed this way," the judge wrote.

"However, even if Ms. Davis can establish that Mr. Thomson breached a duty to her, she must still also prove causation, i.e., that absent his breach she would have obtained a patent."

But Davis ultimately failed to link her failed patents to Thomson's negligence, Moore concluded.

"Because Ms. Davis failed to establish a genuine issue of material fact as to the patentability of her inventions, she cannot prevail on the causation element of her malpractice claim as a matter of law."

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