Clients: if at all possible, please give your counsel adequate time to do the work you need to have done. Providing your attorney with 14 pages of single-spaced patent claims the day before he leaves for a planned weekend vacation, then following up with 275 pages of specification material while he's away for an application that needs to be filed the Monday he comes back is just asking for trouble.
Attorneys: Know when to say no to a client. Accepting 14 pages of single-spaced patent claims the day before you leave for a weekend vacation, then accepting 275 pages of specification material while you're away for an application that needs to be filed the Monday you come back is just asking for trouble.
The decision also provides some guidance on when patent prosecution malpractice claims can be removed from state to Federal court on the ground that the malpractice claims "raise a substantial question of federal patent law over which the district court ha[s] exclusive jurisdiction pursuant to 28 U.S.C. § 1338(a)."
The Federal Circuit determined that Ohio's "case-within-a-case doctrine" applied, which meant that the plaintiff needed to "prove, by a preponderance of the evidence, that she would have obtained patents on her inventions but for" the attorney's alleged negligence. Because the question of whether or not patents would have issued on the application was a question controlled by U.S. patent law, "patent law is a necessary element of one of the legal malpractice claims presented," and "the district court properly exercised jurisdiction pursuant to 28 U.S.C. § 1338(a)."
The other guidance that comes from the case is that, when attempting to establish that "but for" the attorney's negligence, a patent would have issued, it is important that the expert opining on behalf of the plaintiff provide an adequate foundation for the opinion; in particular, the court pointed out that the plaintiff's expert had not conducted a prior art search or a patentability analysis, nor had he identified particular claims that could be made for the plaintiff's inventions.
The Federal Circuit further pointed out that neither a patentability analysis nor claim identification were required at the summary judgment stage; it could have been enough, for example, had the expert analyzed the prior art cited by the PTO in an office action rejecting any of the patent claims and discussing their "effect on patentability."
While I am sure there is more to the story on both sides than what the Federal Circuit reported in its opinion, the larger point here is for both clients and attorneys to try to be reasonable wherever possible, recognizing of course that sometimes it's not possible. For the curious, copies of the underlying published patent applications can be found here, here, and here.