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A. Samuel Oddi - One of the best experts on this subject based on the ideXlab platform.

  • Patent Attorney Malpractice: Case-within-a-Case-within-a-Case
    2012
    Co-Authors: A. Samuel Oddi
    Abstract:

    As literary devices, a “story-within-a story” and a “play-within-a-play” have a long lineage. Shakespeare seems to have been particularly fond of these devices. The legal analog may be seen as the “case-within-a-case” (“trial-within-a-trial,” “suit-within-a-suit”) arising in legal malpractice cases. The case-within-a-case terminology seems to be the most commonly used and hence will be used herein. While it is clear that the “case” is the malpractice case, it is not so clear what the “case-within-” is, which is usually referred to as the “underlying case.” Often, it seems to be presumed that the underlying case is limited to litigation, which would have involved a trial culminating in a judgment being entered in favor of one of the parties. In many instances, litigation (real or hypothetical), indeed, is the source of the plaintiff’s injury and resulting damages as a consequence of an Attorney’s malpractice. For example, if an Attorney should miss a statute of limitations, thus barring the plaintiff from recovering against a party asserting the statute, the plaintiff must prove that, but for the negligence of its Attorney, it would have prevailed against that party had the case been tried and gone to judgment. On the other hand, there are many situations where clients are injured due to the malpractice of Attorneys that do not involve being denied a favorable judgment in litigation. An example of this in the context of Patent law would be the negligent failure of a Patent Attorney to file a Patent application on behalf of a client in a timely manner to avoid a statutory bar. This situation obviously does not involve litigation; nonetheless, the client has suffered the loss of a Patent if it can be established that a Patent would have been granted but for the failure of the Attorney to file the application in a timely manner. If no Patent would have been granted (e.g., because of prior art), the plaintiff would be unable to establish a causal connection between the Attorney’s negligence and any damage suffered. On the other hand, even if the Patent would have been granted, plaintiff will still have to establish in the malpractice case that it suffered damages — perhaps in the form of loss of infringement damages or license royalties. When the malpractice plaintiff has suffered injury in the form of loss of a favorable judgment as a consequence of the malpractice of its Attorney, this type of case-within-a-case will be termed herein as the “judgment” model. According to this model, the malpractice plaintiff must prove that it would have received a more favorable judgment in the underlying case (litigation) but for the malpractice of the Attorney. However, this model is only a species of the general class of injuries that may be suffered by clients due to the malpractice of their Attorneys.When the malpractice plaintiff has suffered injury in other than the form of the loss of a favorable judgment as a consequence of the malpractice of its Attorney, this type of case-within-a-case will be termed herein as the “non-judgment” model. The plaintiff, of course, bears the burden of proving it suffered actual damages of a nature other than the loss of a favorable judgment in the underlying case. To further illustrate these models, a more comprehensive definition of the “case-within” (i.e., the underlying case) may be helpful.Indeed, “case” has a broader connotation than litigation/trial/suit. The venerable Black’s Law Dictionary gives the following definition: “case... [a] civil or criminal proceeding, action, suit, or controversy at law or in equity.” Thus, according to this definition, it would be appropriate to consider a “controversy” as being included within the “case-within” (the underlying case) as well as “proceeding, action, suit” to which “trial” could be added.Courts, particularly those who are following the judgment model, often refer to “case-within-a-case” as a doctrine, rule, requirement, or element, thus giving the impression that it is mandatory that the malpractice plaintiff prove that it would have prevailed to judgment in the underlying case to recover in the malpractice case. Recognizing that “case” has a broader meaning than “litigation” to include “controversies” may help to avoid this significant limitation to the scope of legal malpractice cases (controversies). Other courts have preferred to categorize “case-within-a-case” as a methodology or analysis rather than as a doctrine/rule/requirement/element. There seems to be considerable merit in this usage because the “case-within-a-case” methodology is being used whether the malpractice plaintiff is alleging damages for the failure to obtain a favorable judgment in the underlying litigation (judgment model) or actual damages suffered as a result of malpractice in representation in the underlying controversy (nonjudgment model).In both the judgment and non-judgment models, in the context of a malpractice case based on negligence, the duty and breach elements (constituting negligence) are the same for both the malpractice case and the underlying case (controversy), where malpractice is alleged to have occurred. However, in the “judgment” model, the causation and damage elements are conflated, with the only damage recoverable by the plaintiff being the hypothetical loss of a favorable judgment had the trial been held in the underlying case. Accordingly, the only “cognizable” damage in the “judgment” model is the loss of a favorable judgment in the hypothetical underlying case-within-a-case. There is, of course, no causal relationship between the negligent conduct of the defendant Attorney and any damage suffered by the malpractice plaintiff, if damage is limited to the loss of a favorable judgment in the underlying case and the plaintiff cannot establish that specific form of damage.In the “non-judgment” model, the duty-breach-causation elements are the same as in the “judgment” model; however, the damage element is determined by the nature of the damage the malpractice plaintiff pleads it has actually suffered, and such damage is not limited to prevailing in any hypothetical underlying case that would have resulted in a favorable judgment. In other words, the malpractice plaintiff in the “non-judgment” model is not required to prove it would have obtained a judgment in the underlying case, but only that it suffered actual damages causally related to defendant Attorney’s negligence in the underlying transaction. These damages may be based on a variety of theories.In using the “case-within-a-case” methodology, it is important to recognize that the underlying case that precipitated the malpractice claim is not limited to litigation that would have resulted in a favorable judgment for the malpractice plaintiff, but also includes any controversy where, due to the malpractice of the Attorney, plaintiff has suffered damages. The judgment and non-judgment models provide an explanatory framework. The elements of a legal malpractice case remain the same in both models, with the understanding that the damage element may be satisfied by the loss of a favorable judgment or other actual damages in the underlying case (controversy).

  • Patent Attorney Malpractice: An Oxymoron No More
    2003
    Co-Authors: A. Samuel Oddi
    Abstract:

    Until the last decade or so, malpractice suits against Patent Attorneys were virtually unknown. Mallen and Smith in their treatise on Legal Malpractice attempt to explain this: "Because Patent law practice is so technically sophisticated, even to the ordinary Attorney, few clients recognize when a Patent Attorney erred." This is not an entirely convincing explanation. Technical sophistication would seem to be a two-edged sword in Patent law. On the one edge, it may, as has been asserted, tend to minimize claims against Patent Attorneys for malpractice because of a general lack of understanding of the technology itself, or of the law relating to Patentability, or both - thus making malpractice difficult to detect and to prove. While, on the other edge, technical and legal complexity would seem to multiply the opportunities for mistakes to be made by Patent Attorneys. A more plausible explanation for the relative dearth of Patent Attorney malpractice cases may be due to the difficulty of clients' prevailing in malpractice claims against their Patent Attorneys because of the ethereal nature of Patent rights and the case-within-a-case (often referred to as "trial-within-a-trial") requirement in legal malpractice cases. Nonetheless, whatever reasons existed in the past, times and attitudes have changed and continue to change. Clients, with increasing frequency, are bringing malpractice claims against their Patent Attorneys. They seem to have become better at detecting error, particularly in hindsight blessed with 20/20 vision. Irrespective of whether there has been a substantial increase in the number of malpractice claims against Patent Attorneys, for whatever the reasons, malpractice and the risk of malpractice should be a matter of continuing concern to clients seeking their services, individual Patent Attorneys, their firms and employers, the Patent bar, and society as a whole, all of whom benefit from the fulfillment of the instrumentalist goals of the Patent system. In this vein, one of the principal goals of tort law is to deter injurious conduct. For deterrence to occur, the actor must be able to anticipate that certain conduct may result in harm to others, so that such conduct can be avoided. It is a goal of this article to analyze the exposure of Patent Attorneys to malpractice claims and hence to promote deterrence of conduct that may result in economic injury to clients and others affected by that conduct. This will be done by first evaluating the theories upon which malpractice is based, principally professional negligence and breach of fiduciary duty. The respective elements of the professional negligence cause of action will be analyzed with specific reference to the peculiarities of Patent practice. The breach of fiduciary duty theory will be similarly analyzed and compared. In the course of these analyses, the transferability to malpractice claims against Patent Attorneys of certain doctrines recognized with respect to other professions will be considered. Common defenses to malpractice claims will then be evaluated in the context of Patent practice, in particular the functioning of statutes of limitations. Based on the preceding analyses, some implications and conclusions will then be offered.

Andrew F. Christie - One of the best experts on this subject based on the ideXlab platform.

  • Patent Attorney Privilege in Australia: Options for Reform
    2009
    Co-Authors: Elizabeth Hall, Chris Dent, Andrew F. Christie
    Abstract:

    Patent Attorney privilege is a key aspect of the working relationship between a client and her or his Patent Attorney. The capacity to withhold communications from a court, should litigation arise, facilitates the provision of full and frank advice to the client. The privilege in Australia arises from s 200(2) of the Patents Act 1990 (Cth) – a provision that has been held to not protect communications with Patent Attorneys not registered under the Patents Act. Given the increasing internationalisation of the Patent system, this limitation may impact directly on the system’s operation. This article considers a number of issues relating to the existence of the privilege in Australia and overseas, and raises a number of specific options for the reform of Patent Attorney privilege in Australia.

  • For the Health of the Economy and Patent System: Rationale and Scope of Patent Attorney Privilege
    Journal of Intellectual Property Law & Practice, 2008
    Co-Authors: Chris Dent, Elizabeth Hall, Andrew F. Christie
    Abstract:

    There exists, in some countries, a Patent Attorney privilege. This privilege allows an actual or potential holder of Patent rights to withhold from a court communications that it has had with its Patent Attorney. The privilege is not recognised in all jurisdictions and there is variation in the extent of the privilege in those countries where it does exist. This article explores the rationale for the privilege in order to see if there is a sound basis upon which to found it. Through a consideration of the justifications for the other relational privileges recognised in law, the article finds that Patent Attorney privilege is a justifiable protection for communications between clients and their Patent Attorneys. This is because the specialised knowledge and expertise of Patent Attorneys allows them to provide appropriate and effective advice to their clients, with that advice directly going to the maintenance and benefit of the Patent system and the overall economy. If there was a threat the communications would have to be revealed in court, then this may impact on the full and frank nature of the communications.

  • Patent Attorney Privilege in Australia: Rationale, Current Concerns and Avenues for Reform
    2007
    Co-Authors: Elizabeth Hall, Chris Dent, Andrew F. Christie
    Abstract:

    Communications between a Patent Attorney and her or his client facilitate the optimisation of Patent grants and the efficient operation of the Patent system overall. These communications are protected, in certain circumstances, by a privilege which prevents them being disclosed during the conduct of any litigation involving the client. Such a Patent Attorney privilege is recognised in Australia, but there are concerns arising out of its limited scope, in particular, its failure to apply to foreign Patent Attorneys. Similar concerns exist in other jurisdictions with respect to the nonrecognition, in one jurisdiction, of privilege recognised in another. This Report investigates those concerns and whether the privilege's scope should be extended to encompass communications with foreign Patent practitioners and third parties generally. It concludes that the privilege in Australia should be extended but that, to most effectively address the concerns, action is also required at a transnational level. This conclusion is based on an analysis of the principles that underpin the privilege. There are two main public policy justifications for the recognition of Patent Attorney privilege in its current form: the good of society and the good of the person. The benefits found to flow to society from the operation of the privilege are the administration of justice and the maintenance of the economy. From the perspective of the individual, the privilege facilitates the provision of effective and appropriate advice and removes personal hardship. The Report finds that these justifications are supported by the documented rationale for the privilege and also by the rationales for other relational legal privileges. Concerns over the extent of the privilege in Australia stem, in part, from differences in the recognition of an equivalent privilege in other countries and differences in the recognition of a Patent Attorney profession in other jurisdictions. These differences potentially give rise to some anomalous and unsatisfactory outcomes in terms of the protection of Patent Attorney-client communications during litigation. It is noted, however, that the incidence of Patent litigation is low and, therefore, the need to rely on the privilege in Australia is minimal, at least for the present time. With harmonisation of Patent laws and globalisation of the economy increasing, this may not continue to be the case. Accordingly, there is a need to address the concerns, insofar as is possible at the domestic level, by extending the scope of the privilege to foreign Patent practitioners and third parties. This extension is supported by the rationale for Patent Attorney privilege - the inclusion of communications with both foreign practitioners and third parties facilitates the provision of effective and appropriate advice for the Patent Attorney's client. However, this extension will not resolve the concerns from a global perspective. Thus, if the concerns are to be ameliorated more effectively, there needs to be action taken at the transnational level. Theoretically, this may be best achieved through global treaty negotiations, but practically, the most appropriate course of action is likely to be the negotiation of plurilateral agreements.

Ping-hsun Chen - One of the best experts on this subject based on the ideXlab platform.

  • Patent English in the Context of Patent-Eligibility
    2015
    Co-Authors: Ping-hsun Chen
    Abstract:

    The Patent system is used to boost technical innovation by granting to an inventor an exclusive right to stop others from exploiting her inventions. The system requires an inventor to file a Patent application to a designated governmental agency. To file a Patent application, the applicant usually needs a specialist who is familiar with Patent prosecution and Patent law. To become a Patent specialist in Taiwan, a person might have to pass the Patent Attorney bar exam where “Patent English” is one of the test subjects. But, the scope of “Patent English” has not been well elaborated since the test subject “Patent English” was created. This paper defines “Patent English” as a kind of English for special purposes in the context of Patent prosecution. “Patent English” is used to convey thoughts or knowledge from one specialist to another specialist. In the context of Patent prosecution, specialists have to address various legal issues when deciding whether to file a Patent application. One of those issues is “Patent-eligibility.” Under 35 U.S.C. § 101, a law of nature, a physical phenomenon, or an abstract idea cannot be a Patent-eligible subject matter. In this paper, court decisions related to “Patent eligibility” are analyzed to illustrate how a Patent specialist should talk about the eligibility issue. First, this paper defines the scope of the context related to Patent-eligibility issues. While doing so, this paper also introduces some concepts in the American Patent law. Second, several selected court decisions are analyzed in terms of frequent words (e.g., nouns, verbs.) and sentence structure. Those cases are relatively important cases. Before analyzing decisions, this paper will discuss proposed theories related the analysis. This paper has several findings. First, the issue of “Patent-eligibility” is often related to a process invention and rarely related to a product invention. A process claim is featured with a claim of several steps. Second, a way to explain why a claim is not Patent-eligible follows some pattern. This paper lists some sentence examples that could serve as teaching examples for a course of Patent English.

  • What is Patent English
    Journal of English and Education, 2012
    Co-Authors: Ping-hsun Chen
    Abstract:

    The Patent system was created to encourage innovation by granting to an inventor an exclusive right to stop others from using her inventions. The system requires an inventor to submit an application to the governmental agency which, in Taiwan, is the Taiwan Intellectual Property Office. To file a Patent application, the applicant might need a specialist who is presumed to acquire the knowledge of Patent prosecution and Patent law. To become a Patent specialist, a person has to pass the Patent Attorney bar exam. Among the tested subjects is “Patent English.” The goal of the “Patent English” subject is to examine the language ability of a test-taker to provide Patent prosecution services in English. However, the scope of Patent English has not been discussed well. This paper intends to elaborate the content of Patent English. First, the questions tested in the Patent Attorney bar exam are reviewed to figure out the governmental view regarding Patent English. It is found that the bar exam not only tests English vocabulary used in the Patent law but also tests general knowledge about intellectual property issues. Second, this paper analyzes the course of Patent prosecution. Three circumstances exist when the English ability is needed. The first circumstance is that a Patent Attorney might assist foreign applicants to file a Patent application. The second circumstance is that a Patent Attorney might work with foreign Patent agents to help Taiwanese clients file a Patent applicant in a foreign country, which requires a communication skill in English and a reading skill for analyzing official opinions from foreign Patent offices. The third circumstance is that a Patent Attorney might provide professional opinions about global Patent filing strategies to her client, which requires the knowledge or terminologies of Patent law. Particularly, she needs to know the American Patent law because it influences many countries’ Patent laws. This paper concludes that Patent English covers the knowledge of the American Patent law, business writing skill in English, and essay writing skill in English.

Brigitte Muehlmann - One of the best experts on this subject based on the ideXlab platform.

  • Determinants of successful Patent applications to combat financial fraud
    Scientometrics, 2017
    Co-Authors: Davit Khachatryan, Brigitte Muehlmann
    Abstract:

    Finding out the characteristics of Patent applications that lead to successful grants is an important and yet under-investigated topic in the scientometric literature. Using data from financial fraud-related Patent applications submitted to the United States Patent and Trademark Office (USPTO), this study aims to determine which factors that can be influenced by inventors relate to successful Patent grants. A descriptive statistical model is proposed to estimate the likelihood of a Patent document being granted by the USPTO based on a number of explanatory variables. The following factors are among the notable statistically significant determinants for the studied Patent sample: number of drawings, drafting aggressiveness, proportion of granted Patent prior art references, proportion of web-based non-Patent literature references, subclass specialization, and representation by a Patent Attorney or agent. The implications of these empirical findings are discussed in the context of entrepreneurship.

J A Kemp - One of the best experts on this subject based on the ideXlab platform.