Sue patent lawyer obvious prior art

Question

I have been working with a patent lawyer who drafted my Idea into a patent and filed the patent. The patent went through a normal process of patenting such as search, reviewing by the examiner and finally it was granted (it is EU patent). In all stages, the patent lawyer was helping me and gave me advices to keep my claims and patents and answered the question of examiners. The whole process took me around 4 years and in each step I paid my lawyer.

One year after the time which my patent is granted, I accidentally came up with an older patent (EU and US) which is very similar to my patent idea and it actually claims the same claims as my patent. It is very strange for me why this patent has not been discovered during patent search. Since this patent is 5 years older than mine, it actually can invalidate my patent.

I am wondering if I can sue my patent lawyer for not doing his job well. I appreciate if you guys can give me some clue.

Answer 1

Short: you cannot.

Long:

If you paid your patent attorney for doing a search prior to drafting your patent (because if not then it wasn't even their job) then obviously they didn't do that to the best possible outcome.

But:

a patent search needs time and time costs money. If you want to find everything then you will find no patent attorney in his right mind that would promise this to you, as it is impossible to find every relevant document. There are always some that even the most thorough search does not turn up.

In every other case, the number of prior art documents found directly correlates with the money you are willing to invest. Would you have stayed with the patent attorney if they had said, hey, give me $30k I'll do 100 hrs of patent search?

Heck, that would cost more than the whole patent process, then I'd rather occasionally lose a patent.

Now all of this is assuming that the document you found is actually that relevant. Maybe it does not teach all limitations contained in your claims?

All that said, it happens. Be happy, it didn't turn up during the examination so you got a patent. Invalidating a patent can take longer than litigation and costs money too, so if the case arises, you might even use your patent. Though that strategy should be carefully evaluated by a professional. And in the end, if the process was perfect and every prior art document was found, there would never be an invalidated patent, invalidation wouldn't even exist.

Another point for you to consider, do you get sued every time somebody finds out that you could have done your job better? Do you want to? For good reasons only screwing up on purpose and sometimes through negligence is punishable. Beeing unlucky or just not beeing the best at your job is not (or not through the law).

Answer 2

While you can sue anyone for just about anything, I do not see any point in trying to recover losses by potentially expending even for money on a lost cause. As an inventor, you should have done your due dilligence to understand the space and art under the classifications in which you were filing. I spent almost an entire year researching prior art (both domestic and international), before filing my first patent (9,635,027). You cannot leave this duty up to your lawyer or whoever is helping in drafting your patent as there is an obvious conflict of interest. There are separate firms that can do prior art searches for you but again YOU have to make yourself an expert.

If this prior art was so obvious, why didn't you find it?