- Paul M. Janicke, The Patent Malpractice Thicket, or Why Justice Holmes Was Right, 50 Hous. L. Rev. 437 (2012).
When a state has created a cause of action for legal malpractice, does the presence of an embedded issue of federal law in such a case mean that any such action arises under federal law? If the answer is yes and the federal law is preemptive—as patent law is—that would mean only federal courts could hear the case. Justice Oliver Wendell Holmes, Jr. proposed the best and most workable solution: For purposes of determining arising under jurisdiction with regard to a statute or common law cause of action, a case arises under whatever law created the right. It is neat and clean. It also works well in the patent malpractice arena because many of the issues in such cases are actually ones involving state law. However, the Holmes view was consistently blocked by the seeming tendency of his colleagues to sweep into the federal judiciary all sorts of cases he thought belonged in state court. Any worries about uniformity in patent jurisprudence are misplaced in the realm of patent malpractice litigation and state handling of such cases will not upset national doctrinal uniformity for the patent system. Additionally, the supposed higher experience levels of federal judges in matters of patent law are not borne out by actual experience. This has even been the subject of recent legislation to ameliorate the problem through the designation of a few truly patent-experienced judges to a few federal districts. Moreover, indications to date do not suggest any endemic lack of ability of state courts to decide federal patent law questions correctly when they arise in state court lawsuits. Finally, the balance of judicial workloads would indicate a somewhat significant saving of federal time and effort in proportion to the overall federal judicial workload, while visiting only a very minor increase in average caseloads for the much larger state jurisdictions. The Holmes test is the best and would place state-created claims in state courts.