Judgmental Immunity in Patent Malpractice Cases

I serve as an expert in patent cases, sometimes for clients and sometimes for lawyers.  Before offering an opinion, I look very closely at every case, but more closely before opining that a lawyer has violated the standard of care or breached a fiduciary duty to a client. Why?  First, it’s easy to second-guess decisions made in patent prosecution:  reasonable care is required, but what is reasonable under the budget and time constraints (and then-current knowledge) in patent practice may not stand up to the glare of fly-specking that goes on in malpractice litigation, just as a patent that is well-prosecuted may not withstand the scrutiny of litigation.  Second, and it probably is related to the first point, some decisions in patent practice are inherently judgment calls and so there’s a zone of “discretion,” if you will, that should be afforded to those decisions.

The law recognizes these notions in the form of a doctrine called “judgmental immunity.”  The D.C. Circuit recently applied this doctrine in a patent malpractice,  Seed Co. v. Westerman, (D.C. Cir. Aug. 12, 2016).

The malpractice claim arose out of an interference proceeding and has an interesting twist.  The lawyer needed to claim priority to an earlier-filed Japanese patent application that had been domesticated through a PCT.  The Japanese application and the PCT were in Japanese.  Regulations required that a motion to claim benefit had to include English translations of the earlier applications in the claim.  The lawyer filed a US translation of the (first-filed, obviously) Japanese application, but not the PCT.

The Board awarded the earlier Japanese filing date.  Seed won.

The Federal Circuit reversed.  It held that without the English translation of the PCT, the Board erred in awarding  giving the application the filing date of the Japanese application, and, as a result, Seed lost the interference.

Hence the malpractice case.

The district court granted summary judgment to the defendant lawyers, relying upon the “judgmental immunity doctrine.”  It reasoned that, because the law was not settled that a translation of the PCT was required, their decision not to file one was immune from second-guessing.

This court, however, reversed.  It stated that the judgmental immunity doctrine was limited to circumstances where “a lawyer makes a strategic choice between two options, each of which has costs and benefits.”  Thus, an interpretation of unsettled law that “manifestly risks the loss of a client’s claim for no plausible advantage” was subject to a jury’s inference that “a reasonable lawyer would err on the side of caution by filing the translation if the requirements were ambiguous and there were no reason not to do so.”

(The case also has an interesting discussion of the continuous representation rule, a rule that basically says so long as a lawyer is representing a client, limitations does not begin to run.  Here, lawyers who represented the client while at Firm A left and took Seed Co. with them; as to them, limitations continued to be tolled; but not as to Firm A.)


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

2 thoughts on “Judgmental Immunity in Patent Malpractice Cases

  1. 1

    David, what are your thoughts about including an arbitration clause in a retainer agreement for patent prosecutors? Good idea or bad?

    1. 1.1

      I have many. First off, it’s clear that lawyers believe they’re better off in arbitration. While that may be “okay” and not unethical, there are some results recently that make my stomach churn, because what is happening is the courts are no longer playing the role the once did in enforcing ethical issues in fee agreements, because of arbitration clauses and the impossible standard of review associated with an award. Bad thing. More on that shortly.

      Second, in my experience, arbitrators are less willing than juries to simply pour someone out, or award full value to a plaintiff. That’s not science, but that’s been my view of the world and seems to be conventional wisdom. That would seem to cut against their use in the patent arena since, if the same thing that happens in patent litigation — exaggerated damages models by both parties — happens in a malpractice case, that means in aggregate a lawyer will pay more with, than without, an arbitration clause.

      Third, though, they’re private. Unless there is an appeal. That could be worse for a firm, or better. Not sure how much it should factor in.

      Fourth, I don’t think arbitration is that much cheaper in the arbitration context than litigation, when it comes to malpractice in patent cases. Again, not science, just my gut feel.

      So, overall, a mixed bag. From my own key perspective, I don’t like them because they’re privatizing the court’s role — which is important — in enforcing ethical principles. More shortly on a pending matter, if I can find the time…

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