Legal Question in Intellectual Property in Missouri

Re: Attorney Malpractice

You are obviously upset with the present state of your patent application. Please note that it never hurts to get a second opinion regarding the status of your case. However, I am curious as to whether you are upset because your attorney overlooked something in drafting the claims or was it the patent examiner that overlooked something in rejecting the claims? Many times it is the Examiner, not because of any fault of their own, but that the system does not allow them to spend too much time on a case. Examiner's receive bonuses based on quantity of cases reviewed not quality. When an examiner errors in a claim rejection, it is the attorney's job to point out those errors or if the rejection points out issues in a new light, the attorney should consider new alternative approaches for the claim construction.

The reference must be very close to what you are trying to patent; otherwise, you would not have considered it during initial preparation nor would you have considered a non-infringement opinion. Please note that a non-infringement opinion presents issues and legal standards that are very different from patentability and a finding of non-infringement is unrelated to patentability issues considered by the Patent Examiner. You can infringe a patent and still be patentable over it and, alternatively, not infringe a patent and, yet, be denied you own patent because of it.

From your facts, I believe that you have not stated enough information to define a malpractice cause of action; however, if you believe that your case is being mishandled I urge you to seek a second opinion from a local patent attorney that can review all the facts of your case. Additionally, consider that patents and non-infringement opinions and such are business tools. You wouldn't go out and buy a table saw for your business unless you knew what you are going to do with it -right? May be now is a good time to consider what you are going to do with the patent when you get it and whether such a use justifies the cost and effort you are putting into it.

Regards,

Don Cox

Re: Attorney Malpractice

I too do not believe that you are a stage where you can claim your attorney committed malpractice. The may, and often are, wrong and only after that is sorted out will you be able to determine whether there has been any kind of malpractice.