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Abstract:
There appears to be some consensus that there are three identifiable jurisprudential periods in American law. These are: the first formative period extending from the ratification of the Constitution to about the Civil War; a second formalist period extending from about the Civil War to between the World Wars, and a third modern period from the demise of the formalist era. Whether we may now be in the post-modern era is well beyond the scope of the present inquiry, which is limited to patent law and a single - albeit important - issue within patent law.

The working hypothesis is that patent law would generally follow the same jurisprudential patterns in the same general time frames as other areas of law. Indeed, this assumption would seem justified by the use of broad, general language in patent statutes over the entire period in question and hence by leaving it to the courts to interpret and elaborate upon undefined terms of art. One might, however, be somewhat suspicious that formalism might play a significantly greater role in patent law because of its technical nature - technological and legal. To test this and the base hypothesis of the correspondence of patent law to general American law in its evolution through the identified jurisprudential periods, one particular issue in patent law has been selected. The issue is: What constitutes patentable subject matter "- the patent eligibility issue. That is, what may be patented irrespective of the subject matter's substantive merit in terms of novelty, utility, nonobviousness, or value to society."

From analyzing the principal cases dealing with patentable subject matter in the respective periods, the working hypothesis that patent law would follow general law appears to be sustainable, however, with the caveat that a strong strain of formalism was not detected even during the formalist era. Rather, there appears to be a regenerative, self-correcting mechanism at work over time with respect to decisions restricting the scope of patent eligibility. These regenerations appear to represent repeated reversions to the policy-driven, decision-making process of the formative period.

patent, jurisprudence

Abstract:
Until the last decade or so, malpractice suits against patent attorneys were virtually unknown. Mallen and Smith in their treatise on Legal Malpractice attempt to explain this: "Because patent law practice is so technically sophisticated, even to the ordinary attorney, few clients recognize when a patent attorney erred." This is not an entirely convincing explanation. Technical sophistication would seem to be a two-edged sword in patent law. On the one edge, it may, as has been asserted, tend to minimize claims against patent attorneys for malpractice because of a general lack of understanding of the technology itself, or of the law relating to patentability, or both - thus making malpractice difficult to detect and to prove. While, on the other edge, technical and legal complexity would seem to multiply the opportunities for mistakes to be made by patent attorneys.

A more plausible explanation for the relative dearth of patent attorney malpractice cases may be due to the difficulty of clients' prevailing in malpractice claims against their patent attorneys because of the ethereal nature of patent rights and the case-within-a-case (often referred to as "trial-within-a-trial") requirement in legal malpractice cases.

Nonetheless, whatever reasons existed in the past, times and attitudes have changed and continue to change. Clients, with increasing frequency, are bringing malpractice claims against their patent attorneys. They seem to have become better at detecting error, particularly in hindsight blessed with 20/20 vision.

Irrespective of whether there has been a substantial increase in the number of malpractice claims against patent attorneys, for whatever the reasons, malpractice and the risk of malpractice should be a matter of continuing concern to clients seeking their 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 can be avoided. It is a goal of this article 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 affected by that conduct. This will be done by first evaluating 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 will be analyzed with specific reference to the peculiarities of patent practice. The breach of fiduciary duty theory will be 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 will be considered. Common defenses to malpractice claims will then be evaluated in the context of patent practice, in particular the functioning of statutes of limitations. Based on the preceding analyses, some implications and conclusions will then be offered.

malpractice; patent; tort; fiduciary duty