Tech Transfer eNews Blog

Law firm sued over missed publication date, potentially costing a school millions


By Jesse Schwartz
Published: February 12th, 2020

When it comes to patenting new inventions, the publication date is critical because it starts a one-year clock for filing a patent application. But in the digital world, what constitutes a publication date may get confused, particularly for those who’ve long assumed the meaning to be associated with a print publication.

Unfortunately, a pair of inventors and a prominent medical college have learned this the hard way. As their patent application was being prepared, the question about a publication date was answered incorrectly, or it was asked incorrectly, depending on whose version of events you believe. In either case, the result is the potential loss of tens of millions of dollars in revenue for the inventors and the school, and a $10 million legal malpractice case they brought against their law firm in New York state court.

Two researchers from Albert Einstein College of Medicine invented an exciting and likely lucrative new genetic testing technology. They drafted a manuscript about the innovation and it was accepted for publication in the journal Clinical Genetics. A preview of the article appeared online in December 2011. Then, what they call a “final” version was published electronically in January 2012 and in print in March 2012.

The two inventors founded Morgan and Mendel Genomics, Inc., to take the invention to market, and licensed the technology from Einstein College. Einstein hired the law firm Amster Rothstein & Ebenstein, LLP, to handle the patent application process.

The inventors told their attorneys about the print publication, but did not mention — and say the law firm was negligent for not asking them — about the earlier online publication dates. The U.S. Patent & Trademark Office rejected the patent application because it was filed more than a year after the appearance of the first online version of the article.

In the suit, Morgan and Mendel Genomics, Inc., v. Amster Rothstein & Ebenstein, LLP, the plaintiffs maintain that the firm “breached its duty of care to Einstein in a manner that will result in tens of millions of dollars in lost revenue to Einstein and MMG.”

The lawsuit alleges that the firm “failed to advise these inventors (neither of whom are lawyers, let alone patent lawyers) that any earlier on-line publication or disclosure date should have been viewed as the critical publication date in determining the deadline for filing the Application.”

As a result, the plaintiffs state, the PTO found the researchers’ invention “was obvious and unpatentable in light of their own work,” which became the prior art that barred their own application.

Internationally recognized intellectual property author, consultant and expert witness Eric E. Bensen explained that inventors and attorneys have to pay attention to all forms of distribution. “As one might expect in the Internet age,” he said, “a description of an invention need not be physically printed to be a ‘printed publication’ for the purposes of section 102(b). Rather, the question is whether the description was sufficiently accessible to the public. Public accessibility is a fact-specific question, but at least where the description can be found on the Internet using routine search terms, the description will likely be deemed to be accessible to the public.”

A detailed article about the case appears in the January issue of Technology Transfer Tactics. For subscription information, click here.

Posted under: Tech Transfer e-News

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