Law Firm Cleared for Flubbed Patent Deal

     (CN) – Baker Donelson, a law firm that proudly describes itself as the 73rd largest in the country, nixed allegations that it cost a manufacturer millions of dollars in potential contracts by acting with gross negligence on a foreign patent application.




     Antiballistic Security and Protection, which manufacturers light-weight walls to protect against explosives and ballistic attacks, lacked subject-matter jurisdiction to bring its suit, which hinged on questions related to state law and Canadian patent procedures but not U.S. patent law, U.S. District Judge Amy Berman Jackson ruled Monday.
     “The resolution of this case will not require a determination of the patentability of the underlying invention in the United States,” Jackson wrote. “So there is no question of federal patent law for this court to resolve at all – much less a substantial one.”
     “While as the plaintiffs point out, some cases alleging legal malpractice by patent lawyers may entail the resolution of issues of patent law… the mere fact that the foreign patent would have been predicated on the issuance of a patent here is insufficient without more to confer federal jurisdiction in this case,” she said.
     In their lawsuit, Antiballistic Security and two company executives said they hired attorney Susan McBee in July 2003 to file three provisional patents for its products in the United States, as well as an international patent with the World Intellectual Property Organization.
     Thereafter, the plaintiffs said they directed McBee to prepare and file various foreign patent applications, including a “national stage” application in Canada. The plaintiffs later asked the attorney to delay the Canadian filing under the one-year grace period provided by Canadian law.
     During this period, McBee joined Baker, Donelson, Bearman, Caldwell & Berkowitz, taking her patent work with her. Just over a year later, she left Baker Donelson to join another firm.
     “During that time, plaintiffs discovered that nobody had filed a national stage application in Canada despite plaintiffs’ instructions to defendants to do so before the one year grace period expired on January 1, 2007,” Jackson summarized. “Plaintiffs then retained Canadian counsel to persuade the Canadian Intellectual Property Office and Canadian courts that they had acted in a timely fashion, but on December 10, 2008, the Canada Federal Court of Appeal ruled against plaintiffs.”
     The next day, the U.S. Patent Office allowed all 93 of the claims included in the plaintiffs’ original patent application. Antiballistic Security and its executives sued McBee and her former law firm for legal malpractice and breach of fiduciary duty in December 2009.
     In dismissing the case, Jackson noted that federal patent law does not cover either of the plaintiffs’ causes of action, which she characterized as state-law claims. Therefore, “jurisdiction depends on whether patent law is a necessary element – actually disputed and substantial – of one of the well-pleaded claims,” Jackson wrote.
     “The mere fact that the foreign patent would have been predicated on the issuance of a patent here is insufficient without more to confer federal jurisdiction in this case,” she added.

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