Patent malpractice claims are a rare, but growing area of legal malpractice. However, in Morgan & Mendel Genomics v. Amster Rothstein & Ebenstein, LLP, 2021 NY Slip Op 30465, the trial court dismissed a patent malpractice claim because the client failed to give correct information to the law firm.
On October 15, 2012, Einstein asked the Defendant to help obtain patent protection for its new discovery (id., ¶ 23). When the Defendant asked Einstein, their own client, for the publication date of the Article, Einstein advised that it was first published in March 2012 (id. 26). This was however incorrect. In fact, although the Defendant learned that the Article had appeared online on January 11, 2012 and emailed Dr. Ostrer and Mr. Loke on November 26, 2012 to advise them of the same, the article was first published in an “Early View” service on December 15, 2011 (id., 18-20, 29). Subsequently, the Defendant filed a provisional patent application on January 8, 2013 and a non-provisional application on January 8, 2014 (the Application) (id., ¶¶ 36-37)…..
On September 14, 2016, the United States Patent and Trademark Office (the USPTO) rejected the Application, in part, because the Article was available online on December 15, 2011, more than one year before the Application was filed (id., ¶ 46). In other words, the Application was untimely because it was not filed in accordance with the strict condition that applications be filed in less than a year after being described in a printed publication (id., ¶¶ 7-8; 35 USC § 102). The Plaintiff commenced this action on November 22, 2019 alleging that it entered into an agreement with Einstein in March 2019, pursuant to which Einstein assigned to the Plaintiff its legal malpractice claim against the Defendant regarding the Application (NYSCEF Doc. No. 20, ¶ 61).
Equally important, the branch of the motion to dismiss under CPLR § 3211(a)(7) must be granted as the Defendant’s representation consisted of filing a patent application and did not include an undertaking to verify that the information provided to it by its client was not false. Although an attorney is responsible for investigating and preparing a client’s case, the attorney “should not be held liable for ignorance of facts which the client neglected to tell him or her” (Green v Conciatori, 26 AD3d 410, 411 [2d Dept 2006]).
An Invention Disclosure Form received July 16, 2012 by Einstein indicated that the invention was published on March 2012 (NYSCEF Doc. No. 27). As discussed above, after the Defendant began to work on the Application in the Fall of 2012, Dr. Ostrer and Mr. Loke also advised that the first date of publication was March 2012 (NYSCEF Doc. No. 20, ¶¶ 24-26). The Defendant responded indicating that the first online publication date appeared earlier — i.e., on January 11, 2012 — and that the Application needed to be filed within one year of that date (id., ¶ 29; NYSCEF Doc. No. 23, ¶ 36). At no point did Einstein advise the Defendant of the earlier publication or rectify the false information that was provided to the Defendant (i.e., the December 15, 2011 publication date in the “Early View” service).
Stated differently, the Plaintiff’s claim is doomed by the fact that the claim is premised on false information which the Defendant’s lawyers were allowed to rely on and for which they were not hired to investigate (i.e., that the article had in fact been published earlier). As such, the claim fails as a matter of law (see Green, supra). Accordingly, the Defendant’s motion to dismiss is granted.
In sum, the law firm was able to obtain a dismissal of the malpractice claim because the client failed to provide it with accurate information.
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