Federal courts have exclusive federal question jurisdiction over legal malpractice claims involving the prosecution of U.S. patent applications.

Davis v. Brouse McDowell, L.P.A., 2009-1395 (Fed. Cir. Mar. 2, 2010)

A patent applicant filed suit against her patent prosecution attorney for negligently failing to file applications under the Patent Cooperation Treaty (which provides a unified procedure for filing a single patent application in multiple countries) and for various acts of negligence relating to the preparation and filing of U.S. patent applications. The attorney successfully removed the case to federal court on federal question jurisdiction and the district court dismissed it on summary judgment.

The Federal Circuit affirmed. 28 U.S.C. § 1338(a) provides that federal district courts have exclusive jurisdiction over actions “arising under any Act of Congress relating to patents.” Specifically, such jurisdiction extends to those cases “in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.”

The malpractice complaint here presented two distinct claims: one relating to preparation and filing of the U.S. applications and one relating to the failure to timely file the PCT applications. Because the patentability of the inventions are controlled by U.S. patent law, patent law was a necessary element of the legal malpractice claims relating to the U.S. patent applications. The district court therefore properly exercised jurisdiction pursuant to 28 U.S.C. § 1338(a).

On the merits, a malpractice claimant’s ultimate burden is to establish a likelihood that the inventions would have been held patentable on examination in the PTO or any applicable national patent office, in accordance with the criteria of patentability applied during examination. Here, the plaintiff failed to provide any such evidence relating to the PCT applications, and only provided conclusory expert statements as to the U.S. patent applications. Thus, the district court properly dismissed all claims.

A copy of the opinion can be found here.