A Fact Sheet on Disputes Involving Intellectual Property Professional Malpractice


There are generally four types of intellectual property professional malpractice disputes:

Complexity of Malpractice Litigation

The majority of intellectual property malpractice cases fall under into four separate categories: patents, trade secrets, copyright, and trademarks. These kinds of cases often involve complex case analysis and a thorough understanding of what qualifies as intellectual property. Expertise in these areas is essential for your case if you have concerns about an unfolding legal issue involving professional malpractice. It’s in your best interest to act swiftly and to retain legal counsel to protect your interests, whether the case is already in court or appears to be headed to court.

Evaluation of Potential Claims

Your first stop should be to contact an attorney with experience in these areas to get your questions answered about your own case, and to determine whether the lawyer is a good fit for your claim. Your attorney should be essential in providing advice and advocacy for a pending or ongoing professional intellectual property malpractice case.

Patent cases involve infringement opinions, defending infringement lawsuits, determining patentability, prosecution of patents, and determining the inventor. Copyright cases are those that involve obtaining, using, and analyzing expert opinions, defending or prosecuting infringement actions, applying for the actual copyright designation, and determining whether matter is copyrightable. Trade secrets involve those cases with issues of protecting trade secrets, managing ongoing trade secret disputes, alleged actionable conduct, and infringement opinions. Finally, trademarks are those cases that involve infringement opinions, trademark registration applications, analyzing confusion surveys, reviewing clearance opinions, and representation in an ongoing trademark dispute.

Malpractice can occur at anyone of a number of phases during the representation of a client:

  • Counseling of the client to pursue or forego a certain course of action, e.g. deferring or postponing taking an action to protect his interests and/or pursuing a course of action that is counterproductive, in that it exposes the client to risks and/or its intellectual property to attack or scrutiny which undermines it competitive position;
  • Inadequate due diligence prior to the assertion of the clients intellectual property rights and thereby failing to appreciate, or to correct (reissue), a defective intellectual property (e.g. patent) before the exposure of such intellectual property interest to adversarial scrutiny and attack;
  • Incompetent representation of the client’s interest because of the failure to prepare to assert or to defend an interest in a client’s intellectual property asset. Such failure may occur during the solicitation a client’s intellectual property asset (before the United States Patent & Trademark Office), and/or thereafter when a client’s intellectual property asset has been obtained.
  • Conflict of interest with interests or objectives of a client can typically surface in contingent fee litigation and/or where an attorney assumes responsibility for legal representation at a fixed fee, and the representation balloons out of proportion to the fees. In each instance, the attorney interest in concluding the litigation may become paramount and in conflict with the client’s desire to proceed to trial.
  • Fee agreement disputes can, under certain circumstances give rise to attorney-client conflicts; and, unfortunately most frequently surface after the client matter has been successfully resolved and the attorney fee is challenged as excessive.

“Inadequate Due Diligence” is generally the most neglected theory of action for professional malpractice because the client typically actively participates in the decision making process for asserting its rights. Thus, when his attorney’s enforcement efforts are ineffective, because of some inherent defect in the asserted intellectual property assets, the attorney tends to plead ignorance of such defect, or endeavors to shift responsibility for such defect to another who may have acquired the asset (patent, trademark or copyright) on behalf of this client.

In intellectual property litigation, the inherent defect in a patent, trademark or copyright is often remediable; and, thus, the litigation is responsible for identification of such defect, advising the client of its existence and suggestion remediable measures. The failure to identify and recommend remedial action before the onset of litigation makes the attorney not only potentially liable for the losses incident to pursuit of a failed lawsuit, but also the loss of the intellectual property asset – which loss may dwarf the losses sustained in the failed litigation.

No matter where you’re at in your case- it’s crucial to have an experienced intellectual property professional malpractice attorney on your side. In person consultation and review of the client malpractice claim is available at the Faro & Associates office in Miami, Boca Raton and Naples, Florida. There are many ways that the outcome to your case could influence your life, so reach out to an attorney immediately to get your questions and concerns addressed.