Attorneys – Tort/Negligence – Legal Malpractice Claim – Civil Practice – Federal Jurisdiction – Patent Law – Expert Affidavit

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Weil v. Killough (Lawyers Weekly No. 002-146-12, 10 pp.) (David C. Norton, J.) 2:12-cv-00856; D.S.C.

Holding: The plaintiff-client alleges that the defendant-attorney, who also served as the client’s attorney-in-fact, failed to inform the client when the Patent and Trademark Office sent the attorney notice that a 7.5-year maintenance fee was due on the client’s patent. Since the client’s legal malpractice claim raises issues of proper conduct before the PTO, this court has jurisdiction under 28 U.S.C. § 1338.

Plaintiff’s motion to remand to state court is denied. Defendant’s motion to dismiss is granted.

In alleging that the attorney breached a duty, the client claims that the attorney was responsible for notifying him of the 7.5-year maintenance fee. Determination of this claim requires interpretation of federal regulations.

Similarly, to prove causation and damages, the client will be required to show that the scope of his patent, had it remained valid, would have been broad enough to allow for a successful action against infringer. The client seeks to recover “money lost due to failed business transactions” and “losses plaintiff may suffer in the event other individuals and/or companies use and make a profit from his grill design.” The Federal Circuit has held that the issue of patent claim scope generally presents a substantial question of federal patent law.

The client’s state law cause of action necessarily presents disputed and substantial questions of federal law. Therefore, this court has jurisdiction over the complaint.

When the client filed his professional negligence complaint in state court, he failed to attach the expert affidavit required by S.C. Code Ann. § 15-36-100. Although § 15-36-100(C)(2) creates an exception for “negligence involving subject matter that lies within the ambit of common knowledge and experience,” this case involves substantial issues of federal patent law, an area that it outside of the common knowledge of many attorneys, let alone laypersons. Therefore, the common knowledge exception does not apply.

Dismissed.