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Craig Baillie, Stephen Lambert, Jameson Technologies, Dualglo Ltd, Lacomp Plc, Lacomp Ltd and DualGlo Technology Plc v Bromhead & Co, Bromhead Johnson and Michael Spencer, High Court, 2 July 2014, [2014] EWHC 2149 (Ch), Birss J

The claimants were made up of individuals who had developed some glow-in-the-dark plastics with high daytime visibility, companies set up to exploit their ideas and investors in those companies. They sued a patent attorney, Dr Spencer, and his firms, for negligence on several counts arising from: Dr Spencer’s investigative work preliminary to the prosecution of patent applications; advice given in relation to potentially relevant prior art; and advice given in relation to the possible infringement of, and commercial strategy regarding, a third party’s patent filing.

While the High Court judge, Birss J, considered a number of the claimants’ criticisms of Dr Spencer to be well-founded, for each of the pleaded particulars he held that the elements of a claim for negligence were incomplete and, therefore, the claimants’ claim failed. The defendants’ counterclaim for unpaid professional fees succeeded.

Birss J discussed the modern approach to determining whether a defendant owes a duty of care to a claimant. On the facts, no duty of care was owed to the claimants who were prospective investors in the claimants who instructed Dr Spencer, or to the instructing claimants for losses resulting from the failure of their commercial products business. A duty of care did extend to commercial advice on the purchase of the third party’s patent, but the advice provided in that context was not negligent since the patent was not worthless. Dr Spencer was not negligent in relation to an unusual priority situation for the Claimant’s PCT application, which was not brought to his attention, or in relation to certain other advice concerning patent prosecution and validity. Birss J also gave a concise summary of international patent treaties and the partially harmonised nature of worldwide patent law and practice which impacts the role of professional advisors.

Read the entire decision here.

Head note: Alisa Carter