Filing a Patent Application at the USPTO Sufficient to Subject the Filling Attorney to Personal Jurisdiction in a Malpractice Claim

Touchcom, Inc. v. Bereskin & Parr, No. 2008-1229 (Fed. Cir. Aug. 3, 2009):

Holding:

“[T]he act of filing an application for a U.S. patent at the USPTO is sufficient to subject the filing attorney to personal jurisdiction in a malpractice claim that is based upon that filing and is brought in federal court.” Slip op. at 6.

Relevant Facts:

The patentee sued its patent attorney in a federal court in Virginia for malpractice because of missing source code in the PCT application and the resulting US patent. The patent attorney has no other contacts with Virginia other than filing the patent application at the USPTO. The Federal Circuit found that personal jurisdiction exists.

Comments:

The Federal Circuit recognizes that the patent attorney could avoid personal jurisdiction in Virginia by offering a suitable forum under Rule 4(k)(2):

“[I]n federal cases, the purposes of Rule 4(k)(2) are best achieved when the defendant is afforded the opportunity to avoid the application of the rule only when it designates a suitable forum in which the plaintiff could have brought suit.” Slip op. at 16.

Rule 4(k)(2), entitled “Federal Claim Outside State-Court Jurisdiction,” states, in relevant part: “For a claim that arises under federal law, serving a summons . . . establishes personal jurisdiction over a defendant if: (A) the defendant is not subject to jurisdiction in any state’s courts of general jurisdiction; and (B) exercising jurisdiction is consistent with the United States Constitution and laws.” Fed. R. Civ. P. 4(k)(2).