In an October 22, 2010 decision by Justice Fried the court dismissed a number of malpractice claims arising from plaintiff’s failure to timely pay a patent renewal fee. Plaintiff alleged that this failure was due to the legal malpractice of its attorneys. Of note, this failure occurred over the course of a number of years and while plaintiff switched attorneys, eventually bringing the patent work in-house.
The court granted summary judgment dismissing one of the law firms from the suit because the claims against it were time barred and the continuing representation doctrine did not apply. The court dismissed other claims because one of the ways an application to revive the patent could have been made was if the attorneys violated their ethical obligations and argued to the Patent and Trademark Office that the late payment was due to unintentional delay, when in fact it was originally intentionally decided to not make the payment when it was originally due (it could then have been made within a six-month grace period without excuse but plaintiff did not do so). However, the court allowed a malpractice claim to continue against one of the defendants because it allegedly failed to advise plaintiff that the patent expired, even though it was purportedly obligated to do so years earlier and plaintiff may have suffered some level of damages for this delay.