Commercial Division Blog

Posted: March 2, 2021 / Categories Commercial, Professional Malpractice

Loss of Patent Protection Caused by Client's Failure to Give its Counsel Correct Facts Cannot Be Basis for Malpractice Claim

On February 18, 2021, Justice Borrok of the New York County Commercial Division issued a decision in Morgan & Mendel Genomics v. Amster Rothstein & Ebenstein, LLP, 2021 NY Slip Op. 30465(U), holding that the loss of patent protection caused by the client's failure to give its counsel the correct facts cannot be the basis for a legal malpractice claim, explaining:

The branch of the motion to dismiss under CPLR § 3211(a)(7) must be granted as the Defendant's representation consisted of filing a patent application and did not include an undertaking to verify that the information provided to it by its client was not false. Although an attorney is responsible for investigating and preparing a client's case, the attorney should not be held liable for ignorance of facts which the client neglected to tell him or her.

An Invention Disclosure Form received July 16, 2012 by Einstein indicated that the invention was published on March 2012. As discussed above, after the Defendant began to work on the Application in the Fall of 2012, Dr. Ostrer and Mr. Loke also advised that the first date of publication was March 2012. The Defendant responded indicating that the first online publication date appeared earlier - i.e., on January 11, 2012 - and that the Application needed to be filed within one year of that date. At no point did Einstein advise the Defendant of the earlier publication or rectify the false information that was provided to the Defendant (i.e., the December 15, 2011 publication date in the "Early View" service).

Stated differently, the Plaintiff's claim is doomed by the fact that the claim is premised on false information which the Defendant's lawyers were allowed to rely on and for which they were not hired to investigate (i.e., that the article had in fact been published earlier). As such, the claim fails as a matter of law. Accordingly, the Defendant's motion to dismiss is granted.

(Internal citations omitted).

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