Patent Law

Davis v. Brouse McDowell (Fed. Cir. 2010)

Ms. Davis has developed the "IP-Exchange" as a networking portal for IP professionals. The site boldly claims a "Patent Pending Business Method."

Before releasing her website, Ms. Davis spoke with Daniel Thomson then of the Ohio-based Brouse McDowell law firm about patent protection. Their conversation apparently included a discussion of potential international filing. There was no direct evidence, however, that Mr. Thomson informed her of the "absolute novelty" rule found in most countries that bars an inventor from obtaining a patent on material that had been publicly disclosed prior to the filing of the patent application.

Ms. Davis released her website in 2005 and then several months later (January 2006) she filed two provisional applications pro-se. Five-days before the non-provisional application was due, Ms. Davis again approached Mr. Thomson and asked him to file non-provisional applications and a PCT application. He agreed to do so in a rushed manner (despite a planned vacation). The PCT application was not filed by the one-year expiration date, although three US non-provisional applications were filed.

Ms. Davis eventually allowed her US patent applications to go abandoned. She then sued Thomson and Brouse McDowell for malpractice based on failure to file the PCT applications and negligence in preparing the US applications. The district court (Judge Sara Lioi) dismissed the case on summary judgment ? finding that the case lacked merit. On appeal, Federal Circuit affirmed in an opinion written by Judge Moore and signed by Judges Newman and Bryson.

Patent prosecution malpractice has historically been difficult to prove because the court requires proof that ? but for the malpractice, the invention would have been covered by a valuable patent.

In dicta, the court made clear that the "case-with-a-case" does not require that the malpractice plaintiff identify the exact patentable claims and how those claims would have been patentable over the prior art. Rather, the burden is to "establish the likelihood that her inventions would have been held patentable on examination . . . in accordance with the criteria of patentability applied during examination."

Federal Courts Jurisdiction: An interesting aspect of the decision involves the jurisdiction of federal courts. Malpractice is typically a state claim, but some patent malpractice cases are properly adjudged by federal courts if the "relief necessarily depends on resolution of a substantial question of federal patent law." In this case, the court noted that federal jurisdiction would not exist if the malpractice claim had been wholly based on loss of foreign patent rights.