Of late, we have commented on several malpractice actions brought by disgruntled clients against their patent attorneys. However, the most unusual malpractice case to come to our attention involves a claim that a patent application was rejected by the Patent Office because it contained material copied from a patent previously granted to another party. (Cold Spring Harbor Lab v. Ropes & Gray)
When the Patent Office refused to grant a patent on an invention which Cold Spring considered to be a “genetic breakthrough” by one of its employees, the lab determined to discover the cause of this refusal. Apparently they never entertained the possibility that the “breakthrough” invention could be anticipated by the prior art or be obvious in light thereof. They hired an individual to investigate the matter. He reported that the wonderful invention was denied patent protection because the patent application contained descriptive matter – 11 pages of it, to be precise – copied from a previously issued patent directed to related subject matter.
To make it even worse, the attorney who drafted the subject patent application – if “drafted” is the correct word under these circumstances – had failed to grant attribution to the inventor of the issued patent! In academic circles, this is a hanging offense.
Cold Spring complained to the attorney’s employer, the Ropes & Gray law firm, which denied that such copying was improper and noted that the patent, from which the material was copied, itself contained material copied from earlier issued patents. Cold Spring, not mollified (nor gruntled), then filed its malpractice action, claiming that, as a result of the alleged malpractice, it lost “no less than” $36.5M to 81.5M in licensing income. They also sought return of all legal fees paid to the law firm, “estimated to be no less than” $1.4M, plus punitive damages. They have not, however, demanded execution and dismemberment of the attorney in question.
Meanwhile, Ropes & Gray has fired the subject attorney upon learning that he secretly owned a data-processing firm which billed the law firm and its clients over $730K.
Author’s note: As argued by Ropes & Gray, the practice of including descriptive material copied from issued patents, in a patent application, is perfectly legitimate and ethical and has been and is a common practice in the patent prosecution biz.
THE LESSON TO BE LEARNED: Never practice law without malpractice insurance – even being right may not save you from being sued.
*Song lyrics by Tom Lehrer
If you take the time to look at the copied material, you will see that it is nothing more than boilerplate. Some of what was used from the Fire patent was copied by Fire's lawyers from even earlier patents. More than 200 published applications include the same text that Cold Spring Harbor complains about. It is a ruse.