The Court of Appeal has upheld the revised ruling of the lower court that an Israel Patent Attorney and Advocate was not guilty of malpractice in failing to uncover Prior Art that raised Freedom to Operate issues when conducting a Prior Art search.
In 2001, Dr Mark Friedman, a US and Israel licensed patent attorney who is based in Israel, was approached by a client interested in developing an optical system for mapping blood vessels.
A patentability search was ordered, and Dr Friedman engaged Sol Sheinbein, a searcher who went through the card indexes at the USPTO, it being before computer database searches were readily available. Some prior art was found, but nothing was deemed overly problematic, and, it was decided that a patent application could be filed.
When the application came up for examination, the US Examiner found five US publications that Sheinbein missed. The original court ruling suggests that he’d apparently not covered all relevant sub-classes. It is also possible that one or more card was missing from the card indexes. Apparently one of the US publications was an allowed patent that would effectively prevent the marketing of the product being developed.
The applicant sued Friedman for malpractice along with Adv. Neil Wilcoff, then one of Friedman’s partners but not involved in the case at all. Friedman joined Sheinbein as a third-party to the suite. The court of first instance found Friedman and Sheinbein guilty and ordered them to pay compensation for the aborted development project of NIS 700,000 to be divided 65% : 35%, Friedman being held responsible for the work Sheinbein performed as a sub-contactor. Damages claimed included the money spent on development of product up until that time.
Dr Friedman appealed, claiming that he always explained the difference between a patentability search and a Freedom to Operate search to his clients, and could not be held responsible for Freedom to Operate issues if he was engaged to perform a relatively cheap patentability search.
The Court of Appeal pointed out that the basic Jewish principle of the plaintiff being required to prove his case applied – .המוציא מחברו עליו הראייה
The onus was on the Plaintiff to prove that Friedman had not explained the difference between the two types of searches.
The Court of Appeals returned the case to the lower court which reversed its ruling. The reversed ruling was appealed again, and now the Court of Appeals has upheld the dismissal of all charges.
The patent attorney is not responsible for freedom to operate issues unless a freedom to operate search is ordered. Patentability and Freedom to Operate are not the same thing. The patent attorney should educate his clients about this, however the clients have to prove that the patent attorney failed to do so and was negligent.
For Friedman’s sake it is a relief that this case of rolling over bad decision makings by client has now been dismissed. As a matter of course patent attorneys can be expected to explain the difference. There is no reason to assume that Friedman did not give such an explanation.
The Court of First Instance was wrong in convicting Friedman, and the original ruling provides further evidence that specialist IP courts are needed, or at least IP training for judges is sorely required. That as may be, nearly a decade after the complaint was first filed, it is to be hoped that the issue is now closed.
Civil Appeal: 3620/07 Bio Nir LTD. vs. Dr. Mark Friedman, Dr Neil Wilkoff and Sol Sheinbein.