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[Yak]

As a backdrop, a small IP firm has a single equity owner (patent agent) who makes all final decisions regarding which clients to accept and what services to offer.  That practitioner also makes all decisions regarding potential patentability and offers the opinion to the potential client.  Practitioner signs all engagement agreements. 

Say for instance, that a potential client submits an invention disclosure to the firm. There are some questions regarding first use/disclosure of invention outside the 12 month period.  These questions are not fully explored and subsequently the inventor submits a document saying there has been no public disclosure.  Associate practitioner somewhat disagrees with practitioner's opinion/understanding of public disclosure and suspects there may also have been a "wink and nod" understanding after practitioner "explained" public disclosure bar to the inventor. 

Now associate practitioner is assigned to draft the application, for the above referenced invention, by practitioner.  Associate has an EFS account linked to the firm's customer number and typically the applications drafted by associate are e-filed by the legal secretary who logs in under the associate's account. 

If it was inevitably determined that there was a public disclosure and the patent is one day invalidated or some issue of inequitable conduct or lack of candor to the PTO, etc., does associate have any liability apart from the firm?

[blakesq]

If the inventor says there has been no public disclosure, then I can't see how there is any malpractice liability for filling a Patent App outside the 12 month period.  If you suspect there may have been a "wink and nod" between inventor and your boss, it sounds like you do not KNOW that there was a wink and a nod.  And even if you KNOW there was a wink and nod, do you KNOW what the wink and not was about? 

On the other hand, if you KNOW that inventor made a public disclosure more than 12 months prior to the patent application filing date, then you should not file it. 

[klaviernista]

inevitably determined that there was a public disclosure and the patent is one day invalidated or some issue of inequitable conduct or lack of candor to the PTO, etc., does associate have any liability apart from the firm?

Interesting question.  I'm not sure the firm would be held liable for malpractice period, given the facts provided.  The discussions between the agent and the client were not recorded (presumably), and the only hard evidence would be the document signed by the client indicating that no public disclosure was made more than 12 months before the filing date.  Given those circumstances, I think it would be pretty hard for the client or another entity to prove that the agent somehow acted improperly.

For the sake of argument, lets assume that the firm could be held liable for malpractice.  The question of whether an associate could be seperately held liable is another interesting question and the answer may depend on the state in which the firm is located.  In Massachusetts, for example, the answer seems to be that the associate could be seperately liable from the firm.  "I was just following orders" is not considered a defense.  See http://www.mass.gov/obcbbo/supervis.htm

Seperately, agents and attorneys filing documents in the USPTO have a duty to bring information material to patentability to the attention of the patent office.  A public disclosure more than 12 months prior to the filing date would certainly be material to patentability.  And if the associate is found guilty of failing to comply with that disclosure, OED could certainly take action.

Of course, all of this depends on the level of proof involved.  Is the associate "certain" that the Agent's conclusion is improper.  Or can an reasonable argument be made that the agent arrived at the correct conclusion?  If the latter, I think that moving forward with drafting and filing the case is the right thing to do.  Either way, the associate might want to discuss the matter with the agent.  

[Yak]

Thanks everyone.