IP Profs: Inequitable Conduct doctrine needs rethinking

Q:  When does a lawyer's ordinary negligence, judged in hindsight by the client's enemy, constitute actual fraud?  

A: When the Federal Circuit is applying the "inequitable conduct" doctrine against patent prosecutors.

Over at Patently-O (one of the great topic-specific law blogs) here's news of an amicus brief by IP profs asking the Federal Circuit to stop the insanity.  (Disclaimer: David Hricik, one of our own, is on the brief, as are profs I know and respect like Lisa Dolak, Bill Gallagher, and Michael Risch.  As long as I'm on the topic, it's worth mentioning that among Bill's many accomplishments, it's my understanding that he is the world's leading authority on intellectual property and bobblehead dolls.  No joke.)

Comments

[Judith]

Thank you for this write up.

A somewhat related question just came up for me. You might have heard of Encyclopedia Britannica suing Dickstein Shapiro for malpractice. One of their claims is that the fact that Dickstein notified their malpractice carrier, without notifying EB of this, was in and of itself a breach of its fiduciary duty. I have never seen an argument like this. I would love an opinion on it. Especially since most practicing attorneys I have talked to will notify their malpractice carrier any time a client is upset about anything, because of the worry of a denied claim for failure to notify.

You can find a write-up of the case here: http://ip.law360.com/articles/156532

[John Steele]

Judith,

Thanks. You were posting this comment while I was doing my insomniac post above. I can't seem to get ahold of the complaint itself. Do you have access to it? I'd like to read it.