X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Deadlines can be a killer. Last year, a judge sided with a client that claimed Fish & Richardson missed a patent filing deadline that could cost it $30 million. Now, patent lawyers at the former Crosby, Heafey, Roach & May face a similar claim. And that could be bad news for the entire patent bar. The potential for big payouts has already made malpractice insurance more costly and difficult for patent lawyers to obtain. “One or two bad results rebound throughout the industry and create an aura,” says Ronald Mallen, author of “Legal Malpractice.” “I don’t know of a firm that doesn’t have human errors,” said Mallen, who represented Fish & Richardson in the case last year. But with patent lawyers, “the frequency isn’t very high.” Still, an April 13 suit in San Francisco Superior Court claims lawyers at Crosby, Heafey, Roach & May — now Reed Smith — missed a patent deadline. According to the complaint in Deposition Sciences Inc. v. Reed Smith, 04430516, someone at Crosby Heafey recorded that the patent’s “maintenance file” had been transferred, indicating the firm was no longer responsible for it. Deposition Sciences Inc. contends the mistake caused it to lose the rights to its patent in eight European countries. “We haven’t seen a copy of the complaint, so we’re in no position to comment,” said Jack Nelson, the managing partner of Reed Smith in California. DSI attorney Jeffrey Shopoff, of San Francisco’s Shopoff & Cavallo, could not be reached for comment. Based in Santa Rosa, Calif., DSI makes thin film coatings and optic filters for the military, aerospace, lighting, telecommunications and medical products industries. The patent at issue covers a so-called “sputtering device” and a process for the reactive deposition of thin films. DSI’s complaint said it learned of the filing mishap in April 2003 when Reed Smith notified the company that “the patent has ceased.” Since then, DSI said it has restored the patent in Germany and is attempting to regain it in the United Kingdom, but has irrevocably lost it in six other countries. “From 1992 through 2001, DSI expended more than $200,000 to obtain, defend and maintain the European patent,” the complaint says. “As a result of defendant’s negligence, DSI has nothing of value from those expenditures, and DSI seeks restitution and damages in an amount to be proven at trial.” Patent lawyers say patent filing mistakes are infrequent, but do occasionally happen. “There have been other allegations that a firm has not paid a maintenance fee on a patent that caused [a client] to lose rights,” said Martin Majestic, a partner in the Palo Alto, Calif., office of Washington D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner. “But they are very rare.” Last year a San Mateo County Superior Court found Fish & Richardson liable for missing a deadline for filing a foreign patent application for client Kairos Scientific Inc. Mallen, a partner at Hinshaw & Culbertson, declined to comment on the Kairos case since it is still pending. San Mateo County Superior Court Judge Carl Holm has yet to determine the amount of damages.

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.