By Dennis Crouch
In a recent unpublished decision, the Georgia Court of Appeals affirmed summary judgment in favor of CPA Global Support Services, LLC (“CPA”) (now part of Clarivate) against a claim of negligent misrepresentation brought by inventor James C. Robinson, M.D. and his patent holding company (Spectrum Spine). Robinson’s firm FisherBroyles had relied upon the dates erroneously entered by CPA and missed the national stage filing deadlines. The parallel case against FisherBroyles is still pending in Georgia state court. Robinson v. CPA Global Support Services, LLC, No. A24A0405 (Ga. Ct. App. Apr. 8, 2024). CPA vs Robinson.
The case serves as an important reminder about the limitations on vendor liability for negligent misrepresentation claims in the absence of contractual privity — and how attorneys are often stuck in the middle.
What are your thoughts on how to avoid this situation?
Background Facts and Procedural History
The relevant facts are as follows. Dr. Robinson, a neurosurgeon, invented a type of spinal implant. In 2009, Dr. Robinson and Spectrum (collectively “Plaintiffs”) hired law firm FisherBroyles to file patent applications for his inventions. FisherBroyles filed a provisional U.S. patent application for the spinal implant in March 2013. It then filed a PCT application and a non-provisional U.S. application in March 2014 that issued in 2018. US11051951. Bottom line here for this case: the deadline to complete the international patent process was 30-31 months from March 2013 provisional, i.e. September or October 2015 depending on the specific country.
In February 2014, FisherBroyles contracted with CPA Global, the big IP management services company, to provide patent docketing services. CPA was given access to FisherBroyles’ IP management software to enter data relating to patent application deadlines. Importantly, the contract between CPA and FisherBroyles stated that the services “are supplied by CPA Global solely for use by [FisherBroyles] only” and “CPA Global expressly excludes any liability arising from the use of the Deliverables by any third party.” It also specified that CPA was acting as an independent contractor, not an agent or partner of FisherBroyles.
In March 2014, a CPA employee incorrectly entered the priority date for Dr. Robinson’s PCT application as March 15, 2014 instead of March 15, 2013. This caused the docketing software to miscalculate the international filing deadlines as September 2016 instead of September/October 2015. Unrelated to this particular typo, FisherBroyles terminated CPA’s services in May 2014 – just three months into the engagement.
The error was discovered in September 2016 when FisherBroyles attempted to file the national stage applications, after the 2015 deadlines had already passed. This caused the Plaintiffs to miss the filing deadlines in certain countries.
In September 2020, the Robinson sued FisherBroyles for malpractice and breach of contract. He also sued CPA for negligent misrepresentation, alleging CPA negligently supplied false information (the incorrect priority date) that CPA knew or should have known the Plaintiffs would rely on, resulting in economic losses of about $90 million.
The case against FisherBroyle is ongoing in Georgia state court, but the trial court granted summary judgment to CPA on the negligent misrepresentation claim. A Georgia appellate court recently affirmed that decision.
The Court of Appeals’ Decision
The unanimous decision began by laying out the elements of negligent misrepresentation in the state:
[O]ne who supplies information during the course of his business, profession, [or] employment . . . has a duty of reasonable care and competence to parties who rely upon the information in circumstances in which the maker was manifestly aware of the use to which the information was to be put and intended that it be so used. This liability is limited to a foreseeable person or limited class of persons for whom the information was intended, either directly or indirectly.
Robert & Co. Assoc. v. Rhodes-Haverty Partnership, 250 Ga. 680 (1983).
The Court noted that the key inquiry is whether the defendant (CPA) actually intended for the third party (Robinson) to rely on the false information:
[L]iability to [a] third party can attach [only if] it can be shown that the representation was made for the purpose of inducing third parties to rely and act upon the reliance.
Badische Corp. v. Caylor, 257 Ga. 131 (1987).
Applying these principles, the Court found the evidence did not support an inference that CPA intended for the Plaintiffs to rely on the incorrect priority date:
While the evidence in the record establishes that CPA knew that FisherBroyles had clients, it does not support an inference that CPA intended for the [Robinson] to rely on the incorrect dates… [T]here is nothing in the record to suggest that CPA inputted the dates ‘for the purpose of inducing [Robinson] to justifiably rely and act upon’ the data entry.
The Court emphasized that “CPA did not supply any filing dates to FisherBroyles and it never relayed any information to the Plaintiffs.” Rather, it was FisherBroyles that represented the incorrect deadline to Plaintiffs.
The Court also found the contract between CPA and FisherBroyles “further negate[d] any intention on the part of CPA for the Plaintiffs to rely upon their work,” given the disclaimers stating the services were for FisherBroyles’ use only and excluding liability to third parties. The Court characterized this as an “‘appropriate disclaimer[]’ which would alert those not in privity with [CPA] that they may rely upon [its data entry] only at their peril.”
Because the Plaintiffs failed to show CPA was actually aware of and intended their reliance, the Court affirmed summary judgment for CPA without addressing the other elements of negligent misrepresentation.
Key Takeaways for Patent Practitioners
This case illustrates the challenges of holding a docketing services provider liable for missed deadlines in the absence of a direct contractual relationship. While CPA’s data entry error was the root cause of the missed foreign filing deadlines, CPA escaped liability because it separated itself from the injured party and used contract terms to show that it did not intend for the inventor clients to rely on the information.
A few important lessons emerge:
- Disclaimers of third-party liability in docketing services contracts can shield the provider from negligent misrepresentation claims by inventor clients. Patent firms should be aware of and factor in such limitations when engaging docketing vendors.
- Patent firms cannot partially outsource responsibility for docketing. The onus remains on the firm to maintain its own docketing system and attorneys must verify the accuracy of any data entered by third-party contractors. FisherBroyles’ failure to catch CPA’s error for over two years was fatal to its client’s case.
- To hold a docketing vendor liable for negligence, a patent firm may need to insist the vendor’s contract acknowledges the vendor’s work is intended to be relied upon by the firm’s clients. The contract should not disclaim third-party liability.
- Although it is not clear here, FisherBroyles potentially has a negligence and breach of contract claim against CPA.
- Clients should ask their patent firms what docketing redundancies are in place, but should also take steps to check the deadlines themselves.
What are your thoughts on this situation?
The obvious lesson seems to be points #2/#5 in this post. Deadline-tracking programs should be a check, not the main event. Read the rules, do the math yourself, and then look at the program to see if you might have missed something. If you and the program get different numbers, sometimes that means you’re wrong and sometimes that means the program’s wrong.
Sometimes the program has bad information or bugs. Sometimes people entering information into the program make mistakes. Sometimes the rules or the deadlines change and the program doesn’t know about it.
I know nothing about this case other than what’s in the post, but I’m inclined to think this is the right result. Attorneys are the professionals the inventor hires and justifiably relies on to get the law right. The buck stops with them. If the law firm hires a support vendor for something like this, and the vendor screws up, that would seem to be between the attorney and the vendor. This lawsuit by the inventor against the vendor seems to imagine the law firm as just a matchmaker between the inventor and the vendor, which seems wrong. (Maybe the law firm has an indemnity claim or something similar against the vendor?)
Another unconsidered risk in the corporate “outsource everything” movement? [The docketing-error liability did NOT “outsource.”]
The firms I’ve been with have always used third part software for docketing, but the firm has always been the one responsible for entering the information into the system for docketing purposes. Once an application is allowed, the firms have divested themselves of any future docketing. For example, payment of maintenance fees. We open a USPTO customer number for the client so that all future communications from the USPTO will go to them. We also provide them with a list of firms like CPA and others that will docket when their maintenance fees, etc. are due in the US and around the world. In other words, we do our best to close our files and get the heck out of Dodge once the patent issues. That being said, some of our clients have had issues with vendors failing to properly docket due dates or even docketing something they were supposed to docket. That’s why, in my experience, risk management best practices says to rid yourself of any post-allowance duties in relation to an issued patent.
I’m confused–it sounds like FisherBroyles hired CPA but fired them 3 months later, and initially gave CPA important dates but then later relied on the dates CPA gave them back?? If that is an accurate description, then it seems like the issue isn’t really about being able to rely on an outside provider, but that FisherBroyles was doing their own docketing at the time and should have checked the dates themselves.
“It then filed a PCT application and a non-provisional U.S. application in March 2014 that issued in 2018. US11051951.”
At least they obtained US coverage.
Positively frightening, however.
I once had the exact same thing happen to me. I visited the PTO (where we had filed the PCT) in person to discuss the issue and, after a bit of back and forth, we were allowed to change the date and move forward. Backdating the national phase applications was more work (and also required personal visits) but we succeeded everywhere except India and China.
Assuming you’re being serious, do you think that kind of backdating would hold up if litigation ensued over any patent in that chain? I’d be surprised if it did.
This was an April F-o-o-ls joke. Glad someone finally caught it!
If I were the law firm, I would look at CPA marketing materials to see if they refer to a law firm’s clients and how the clients can benefit (indirectly) from their services.
I have three docketing systems for my matters. Each docket is slightly different format: one is colored and physical, one is electronic, and one is colored, physical and linear.
>CPA escaped liability because it separated itself from the injured party and used contract terms to show that it did not intend for the inventor clients to rely on the information.
I’m a bit surprised; I didn’t think contractual limitations on liability affected non-party tort plaintiffs…on the theory that they weren’t a party to those negotiations e.g., if you are hit by a FedEx truck, you can still sue FedEx…even if FedEx’s contract with the contractor/driver disclaims liability.
That said, the data processor should be able to push that liability back onto the firm (assuming it still exists).
>Clients should ask their patent firms what docketing redundancies are in place, but should also take steps to check the deadlines themselves.
By hiring a different law firm to do due diligence on this firm’s data processing suppliers?? That seems unreasonable, particularly for micro inventors.
Agency…?
I am not a tort lawyer, but I always thought you could sue the agent for the agent’s own negligence (implicitly limited by proximate causation…though that seems satsified here).
Write up is unclear: was the law firm a plaintiff in this suit? If not, why not – did it sue CPA separately? If not, why not? I ask because it appears that the reasoning applied by the court here to get CPA off the hook vis-a-vis the inventor and his company wouldn’t apply vis-a-vis the law firm, which DID rely on the date provided by CPA. That fact alone doesn’t necessarily make CPA liable – one could ask, for example, why didn’t the firm double-check the dates that CPA entered? – but it’s jumping a step to say that *this* decision gets CPA off the hook against the law firm if the firm was not a party to THIS suit, as either defendant or plaintiff.
I don’t know anyone who uses CPA for docketing. I know some who use it for renewals (though I the last time I checked I found them to expensive), and I know a few who have left CPA for other renewal fee vendors.
Inventor/Owner Robinson sued both FisherBroyles and CPA Global. The case against CPA has been dismissed, but the one against FisherBroyles appears to be headed to trial.
Still not clear. Did FB sue CPA? If so, then CPA’s argument used against Robinson doesn’t hold water against FB, since FB was in privity with CPA. If FB didn’t sue CPA not, why not?