Past JLTP Abstracts - Volume 2004 Issue 1

                         Articles


Patent Attorney Malpractice: An Oxymoron No More

A. Samuel Oddi

 

With increasing frequency, clients are bringing malpractice claims against their patent attorneys. Malpractice and the risk of malpractice should be a matter of continuing concern to clients seeking patent services, individual patent attorneys, their firms and employers, the patent bar, and society as a whole, all of whom benefit from the fulfillment of the instrumentalist goals of the patent system. In this vein, one of the principal goals of tort law is to deter injurious conduct. For deterrence to occur, the actor must be able to anticipate that certain conduct may result in harm to others, so that such conduct may be avoided. A goal of this Article is to analyze the exposure of patent attorneys to malpractice claims and hence to promote deterrence of conduct that may result in economic injury to clients and others who may be affected. The Article first evaluates the theories upon which malpractice is based, principally professional negligence and breach of fiduciary duty. The respective elements of the professional negligence cause of action are analyzed with specific reference to the peculiarities of patent practice. The breach of fiduciary duty theory is similarly analyzed and compared. In the course of these analyses, the transferability to malpractice claims against patent attorneys of certain doctrines recognized with respect to other professions is considered. Common defenses to malpractice claims are then evaluated in the context of patent practice, in particular the functioning of statutes of limitations. Based on the preceding analyses, implications and conclusions are then offered.

A "Patent" Restriction on Research & Development: Infringers or Innovators?

Srividhya Ragavan

 

Acquiring a patent in today’s patent systems requires in-depth knowledge of the procedure for both product patenting and process patenting. When developing nations create or adopt new policies, they seldom take into account proper policies for patenting. Consequently, their industrial growth is limited by ineffective patent procedures. Recent treaties that address patent procedures, the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) and the Patent Cooperation Treaty, do not properly assist developing nations in forming adequate patent and claiming procedures. Developing nations must harmonize structural procedures with TRIPS and develop effective patent procedures to achieve stronger industrial growth. India is used as a case study to show how developing nations have unsuccessfully instituted patent procedures in contrast to developed nations such as the United States and, to a lesser extent, the European Union. Until developing nations have proper patent procedures, their industrial growth will be limited. These nations should be given the proper tools to effectively patent new products and thereby stimulate local invention.


                         Essay

Markman Misses the Mark Miserably

Edmund J. Sease

 

The Court of Appeals for the Federal Circuit has held that claim construction is a legal question, reviewable de novo. However, a trial court’s interpretation of claim terms in a Markman hearing cannot be placed before the Federal Circuit on an interlocutory basis. Therefore, patent cases often are tried on incorrect claim interpretations, which results in a high percentage of appellate reversals. This system is flawed and based upon an erroneous assumption: that courts of general jurisdiction have special expertise in interpreting patent documents. Markman also increases the cost and burden of already expensive patent litigation, dramatically changes the scope of and process for deciding patent cases, and could impinge on the Seventh Amendment right to a jury trial. The Markman experiment of the last nine years should be declared a failure.


                         Notes


The Digital Divide Dilemma: Preserving Native American Culture While Increasing Access to Information Technology on Reservations

Therese Bissell

 


Will Mickey Be Property of Disney Forever? Divergent Attitudes Toward Patent and Copyright Extensions in Light of Eldred v. Ashcroft

Jonathon Schwartz

 


Amateur Radio Emergency Service: Are Communication Lines the Missing 
Link to Homeland Security?

Warren R. Wilkosz