Patent Registration - A Procedure As Valuable As Your Tips

Even though legal malpractice claims arise out of state law, the CAFC said, they require interpretation of federal patent law and therefore fall within the federal courts' exclusive jurisdiction.

Question of Patent Law

In Air Measurement, the plaintiff, Air Measurement Technologies (AMT), filed its malpractice complaint in state court but the law-firm defendants removed the case to federal court. AMT sought to return the case to state court, alleging that the federal court lacked subject-matter jurisdiction. "Because proof of patent infringement is necessary to show AMT would have prevailed in the prior litigation, patent infringement is a 'necessary element' of AMT's malpractice claim and therefore apparently presents a substantial question of patent law conferring § 1338 jurisdiction," the CAFC reasoned.

Claim Drafting Mistake

Immunocept sued its lawyers for malpractice in federal court, alleging the patent statute as the basis of jurisdiction. Immunocept could not prove its case without addressing the issue of the scope of the patent claim, and that brings the case under federal jurisdiction, the CAFC said.

"Because patent claim scope defines the scope of patent protection ... we surely consider claim scope to be a substantial question of patent law," the CAFC said.

Patent Malpractice Belongs in Federal Court

However the first step to get the patent is to get a patent application and do the patent registration. After patent registration, we can use the term ‘patent pending' to imply that the given product is registered for a patent.