Rich Products Corporation asked Kenyon & Kenyon to file applications in Mexico and Columbia. Apparently, the firm timely filed the Mexican application as of how the law was then-interpreted; but the law later changed, and the application was deemed filed too late. Rich Products then sued the firm for malpractice. The New York Supreme Court, Appellate Division, held that because malpractice is measured at the time of the events, the lawyer had breached no duty. The case is here.
This is something I often think about, given the changing nature of the “rules” about claim interpretation. For example, certain claim formats have grown less helpful over the years. I also wonder how much this defense works if it’s a foreseeable change in the law (it’s not clear here what, exactly, changed in Mexican law).
The case was remanded to figure out the Columbian claim.
I’ve always wondered whether patent attorneys who prosecuted patents many years ago (before muniauction) with divided infringement claims are liable for malpractice now. To draft such a flawed claim now is probably malpractice, no? But what if the patent was prosecuted more than 7 years ago?
BMC Resources is the culprit. Rader, whole cloth, with citing any legal support, misinterpreting the language of 271 to require that Whoever is but one person, pulled the divided infringement doctrine out of thin air, or from some other location.
Now, after remand, they follow BMC? Are you kidding me?
But I actually had a case where my client was accused of infringement of a process where the client performed the conventional steps having purchased an intermediate product from another company who did the novel steps.
We settled because it turned out that we needed the inventive steps to be performed and would have ordered them to be done had they not done it themselves.
But today, no one is liable. I think this is wrong. No. It is wrong. Morally. Legally. A contravention of the law of infringement as it existed in ’52. A joke on us from the Rader, from the Federal Circuit, and a great big middle finger to congress.
Who would have predicted BMC Resourses? Lemley. He wrote the law review article. He filed the Amicus in BMC.
Lemley. He is cause a lot of problems in patent law.
A comment from MaxDrei on Theron threads recently alluded to changes and that “we are paid to think twenty years ahead.”
The comment here about “foreseeable” reminds me of that frame of thought.
In my mind, the answer that I come to is that if I could “reasonably” see changes ahead of time (and that reason is tied to actual statutory law), then I would not be in patents, but would instead be playing the stock market.
Oops – correction for the auto-correct: change “Theron” to “the main”
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