Professional liability in Denmark
In Denmark, professional consultants and advisors are liable for professional errors and mistakes according to general negligence principles. Generally, the negligence test is based on whether the professional’s performance falls below the standard of the common and reasonable professional within the same field of expertise.
Consequently, professionals such as lawyers, various health care professionals, auditors etc. become liable based on a more stringent negligence test than non-professionals.
Patent agent’s liability
Patent agents are professional consultants and are thus generally subject to the stringent negligence test. However, unlike lawyers and many other professionals, Danish patent agents are not automatically subject to any relevant rules and regulations (although regulations issued by e.g. EPI (the Institute of Professional Representatives before the European Patent Office) may sometimes be used as guidance). Furthermore, Danish case law regarding patent agent’s liability is quite scarce, although several judgments have been passed during the last five years.
It is thus uncertain what types of mistakes or errors would give rise to liability and additionally what standard to use when determining patent agents’ liability.
In a recent judgment, however, the Danish courts have now given some guidance to patent agents’ performance and liability.
Maritime and Commercial High Court judgment of 24 June 2016
In a Maritime and Commercial High Court judgment (the Court), the Danish Patent and Trademark Office (PTO) notified the patent agent of a published English patent application during the prosecution of a Danish patent application. When applying for an American patent, the agent failed to disclose the English application in the American Information Disclosure Statement (IDS). Under a re-examination of the American patent, the US PTO indicated at first that the patent would be found invalid due to the contents of the English application, but the US PTO eventually upheld all of the claims in the American patent and even allowed some additional claims to be included.
However, irrespective of the outcome of the re-examination procedure, the patent agent was found liable under the stringent professional negligence test for failing to disclose the English patent application. The Court stated that it would generally not be negligent to fail to make reference to the English application in the patent description. However, it would be negligent to fail to disclose the English application in the American IDS.
In its reasoning the Court emphasized the American Code of Federal Regulation, stating a “duty to disclose information material to patentability”, which Danish patent agents should be aware of when handling American patent applications.
Furthermore, the Court found it negligent to leave out known information in the IDS when such information had been identified by the Danish PTO in a counterpart to the American patent application. Accordingly, such information should only be omitted when a positive decision to such non-disclosure is based on professional and technical discretion.
The patent agent was not able to prove that the non-disclosure in fact was based on professional and technical discretion, nor was Zacco able to provide any other circumstances admitting the non-disclosure.
The recent Maritime and Commercial High Court judgment confirms the tendency to apply the stringent negligence test in determining patent agents’ liability. The judgment has also clarified that a failure to disclose known and possibly relevant information will not automatically render a patent agent liable, but that patent agents are at least obliged to disclose all relevant information when filing US patent applications.
As mentioned above, Danish case law on patent agents’ liability is scarce, but the body of case law is evolving as at least two cases are currently pending before the Danish courts.