The Ethics of IP Docketing Software

If you work in intellectual property law, your practice is ruled by deadlines. Missing one -- even by a day -- means more than the headache of reviving applications and paying extra fees. It could mean losing that customer, marring your reputation, or facing a malpractice suit. So, how do you ensure that your growing practice never faces these consequences? There are a variety of modern, efficient, and affordable solutions available to use in your practice. 

As an attorney, your primary goal should be to provide competent representation for your clients. Both the U.S. Patent and Trademark Office and state ethics rules mandate that lawyers commit themselves to competence. This means that attorneys must have the requisite “legal knowledge, skill, thoroughness and preparation” to handle each case, according to the American Bar Association’s Model Rules of Professional Conduct, Rule 1.1.

As technology continues to advance and spread, the ABA makes it clear that it won’t excuse those who find themselves left behind. Attorneys must maintain competence by “keep[ing] abreast of changes in the law and its practice, including the benefits and risks associated with relevant technology,” according to Comment 8, which was adopted in 2012. Twenty-five state bar associations have since followed suit and added their own technical competence requirements. The message is loud and clear: Technical ignorance is unethical, and it’s up to lawyers to stay up-to-date in legal technology.

These standards are more than idle talk: The USPTO has sanctioned attorneys who fail to maintain an adequate method for monitoring deadlines. Take, for example, the case of the California lawyer who used a Microsoft Word document and a whiteboard to track IP filings without an adequate calendar system. After missing patent maintenance fee deadlines for several clients, the Office of Enrollment and Discipline (OED) suspended his license to practice before the USPTO for five years. Even after this major faux pas, the USPTO discovered that the attorney continued to practice the next year, causing him to resign in 2014.

The USPTO, ABA, and state bars all hold attorneys accountable for missed deadlines, and especially when a lawyer is using a traditional, pencil-and-paper docketing system, there isn’t much room for leniency. Even in cases where an attorney’s license isn’t suspended or revoked, there is still a lot to lose. In a study conducted by the ABA, alleged failure to file documents, failure to calendar, or a missed deadline comprise 24.1 percent of legal malpractice lawsuits.

After allegedly missing a patent term extension deadline for a pharmaceutical product with $2 billion in sales, Fish & Neaves faced a malpractice suit of its own. MDCO, the plaintiff, asserted that Fish & Neaves’ mistake cost the product four and a half years of market exclusivity. Although the parties agreed to settle without damages to either side in August 2015, this was after a year of litigation, which could be too costly or hurtful to the reputation of a smaller firm.

Between the high-stakes threat of malpractice suits and ethical concerns for maintaining competence, intellectual property law practice certainly comes with its own set of challenges. IP docketing software helps attorneys navigate these risks and run efficient, reputable practices. Instead of the traditional system, where lawyers would determine deadlines by looking at paperwork and counting through the months or years on calendars, patent and trademark docketing software automatically calculates deadlines and provides periodic email alerts. This process gives attorneys peace of mind, as they’re not left to second-guess their own work.

Once the due dates have been calculated, docketing software makes it easy for lawyers to track their filings by keeping them updated. Although the USPTO sends notices as well, these are in the mail, and there are certainly no guarantees that they reach the attorneys on time. When considering docketing software, it's important to note though that not all docketing software is the same. Don't hesitate to ask exactly how it works, and choose your software carefully: Some companies will provide automation, granular statuses and deadlines and constant updates.

IP docketing software doesn’t just help you to track your filings, though. Many companies also provide secure client communication channels, which allow you to maximize productivity and collaborate with customers effectively. Client intake is just one process that benefits greatly from these tools. Traditionally, firms needed to spend time creating their own intake forms, which of course needs to be differentiated based on the type of services the client requested. Some software companies now provide customizable, cloud-based forms that allow for both attorney and client contributions in real time.

Legal technology is here to stay. Don’t miss out on the game-changing benefits various softwares and platforms could have on your firm. Your clients -- and your colleagues -- will appreciate increases in efficiency, and customer acquisition will follow suit.



Alt Trademarks: Episode 5 - Bill Samuels

Alt Legal presents the newest episode of Alt Trademarks, a biweekly podcast hosted by Hannah Samendinger. Alt Trademarks discusses the latest news in trademark law, features interviews with prominent trademark professionals, and contemplates the issues trademark professionals face. 

In this broadcast, Hannah speaks with Bill Samuels, a New York-based IP attorney who founded his own practice, WR Samuels Law, in the midst of the financial crisis. Bill discusses his practice, how he got to where he is today, and some considerations international IP attorneys might have regarding Brexit. 

If you would like to contact Bill, he can be reached on his website: wrsamuelslaw.com, on Linkedin.com/in/wrsamuels, or on Twitter at @wrsamuels.


Alt Trademarks: Episode 4 - Ed Timberlake

Alt Legal presents the newest episode of Alt Trademarks, a biweekly podcast hosted by Hannah Samendinger. Alt Trademarks discusses the latest news in trademark law, features interviews with prominent trademark professionals, and contemplates the issues trademark professionals face. 

In this broadcast, Hannah speaks with Ed Timberlake of Forrest Firm in Durham, North Carolina. They talk about Ed's time as a trademark examiner at the USPTO as well as his work at the Copyright Office.They talk about Ed's time as a trademark examiner and at the Copyright Office. Ed also discusses several interesting trademarks and explains why what is often called "non-traditional trademarks" aren’t so different from more common forms of trademarks.

Click on the links below to find out more about the marks discussed during this episode: 
Duck March: tsdr.uspto.gov/#caseNumber=27104…Type=statusSearch
Goat Restaurant Mark 1: tsdr.uspto.gov/#caseNumber=74646…Type=statusSearch
Goat Restaurant Mark 2: tsdr.uspto.gov/#caseNumber=77936…Type=statusSearch

If you would like to contact Ed, he can be reached by email at ed@forrestfirm.com, on Linkedin.com/in/edtimberlake, or on Twitter at @TimberlakeLaw.


Alt Legal Wins Innovation Award

Alt Legal is proud to announce that it has won an innovation award. Above The Law's Academy for Private Practice (APP) last month announced the winners of its “Shark Tank”-style startup competition: “The alt.legal Innovation Awards Company Showcase.”

The competition featured submissions by 66 legal technology startups. Of the applicants, the 15 top contenders each presented to a panel of judges a 3-minute pitch. The judges then selected the best in each category. Alt Legal won in the Intellectual Property category.

In a statement, Alt Legal founder and CEO Nehal Madhani said that he was both "excited and humbled" to receive the award. "We are working hard to revolutionize intellectual property software by making sophisticated, easy-to-use, automated software to save lawyers time and money. My team is proud to see their efforts recognized, and we greatly appreciate the judges' time and consideration. We look forward to continuing to serve IP attorneys and drive innovation."

Judges of the competition included Joe Borstein (Thomson Reuters & ATL alt.legal columnist), Mary Juetten (CEO & Founder of Traklight), Nicole “Niki” Black (Legal Technology Evangelist at MyCase), and Monica Bay (CodeX fellow, California attorney, and ATL columnist). 



Trademark Applications Get Nasty as the Election Approaches

As The Fashion Law blog reported this week, some of Trump’s controversial comments have moved off of TV screens and Twitter feeds and into the USPTO. After the third and final presidential debate, a handful of entrepreneurial individuals filed potentially hastily prepared trademark applications, including for the phrase “nasty woman.”

The Fashion Law detailed a selection of these applications that are seeking to protect the phrase for use in connection with t-shirts and other apparel. Interestingly in this realm, Nasty Gal is one of the companies who has released a t-shirt with the phrase, but their company name may make it impossible for the other applicants to obtain protection altogether. You can read more about that dispute in their post here.

There are also some trademark applications seeking protection for the “nasty woman” phrase in connection with items other than t-shirts. Applicants have filed for use in connection with coffee mugs, scented body spray, and online retail services featuring t-shirts and the like.

Two applicants took a more pointed approach to their filings, honing in on the election cycle. One application has been filed for Nasty Women Vote and another for Nasty Women 2016. All of these marks, from the fashionable to the more election focused were filed between October 20th and 31st, with the first use in commerce date starting on October 19th.

Perhaps the most interesting element of these applications is the specimens provided for the use-based ones. As Ed Timberlake highlighted on Twitter, the applicants provided some, well, interesting examples of bona fide use in commerce. The specimen for “Nasty Women Vote” is perhaps the most benign, with a picture of a tag, tied to a hair tie, lying on top of a t-shirt. Two of the nasty woman marks claimed use in connection with coffee mugs and a variety of bags. Both of these specimens are photographs of the specified items with the phrase scribbled in marker on the item.

But two specimens really take the cake. The first is the specimen intended to show the use of nasty woman in connection with spiral bound notebooks. The specimen is a notebook, notably not spiral bound, with the phrase written on the cardboard backing in marker, also helpfully labeled “notebook.” Finally, one of the applications for use of the phrase in connection with t-shirts (or more exactly “t-shirts with the logo on it..”) neglected to include a t-shirt in the specimen at all. Rather, the application contains a picture of an unidentified object that resembles a metal hook or snake.

As the election approaches, this is likely the last flurry of presidential trademark applications that will be filed for some time. Between the quality and quantity of applications including the phrase “nasty woman,” the trademark dispute will likely continue after the election has been decided.

Alt Legal Product Manager Profiled in Legal Technology Publication

The most recent publication of Legaltech News features Alt Legal's legal product manager, Hannah Samendinger. In the article, "Women of Legal Tech: Hannah Samendinger, Diving Right Into Technology," Monica Bay profiles Hannah and discusses her past experiences and motivations.

Addressing everything from her employment history to her mentors and dress code, the profile shows Hannah's fascinating path from law school to legal technology. Hannah pridefully describes her history with Alt Legal and her latest project: developing Alt Trademarks, Alt Legal's new podcast. 

The article is the sixth installment in the Legaltech News series "Women of Legal Tech," which began earlier this year. Past articles have focused on attorneys, CEOs, entrepreneurs, and other women whose experiences, expertise, and innovations are shaping legal technology.

Alt Trademarks: Episode 3 - Andrea Evans

Alt Legal presents the newest episode of Alt Trademarks, a biweekly podcast hosted by Hannah Samendinger. Alt Trademarks discusses the latest news in trademark law, features interviews with prominent trademark professionals, and contemplates the issues trademark professionals face. 

In this broadcast, Hannah speaks with Andrea Evans, a former trademark examiner and patent attorney for the USPTO. Evans currently owns her own IP practice outside of Washington, DC.  An avid social media user, Evans discussed how she uses tools like Periscope to expand her practice but also to be a resource to those who are looking to protect their IP. Evans also works to promote STEM with her organization KidGINEER.

If you would like to contact Andrea, she can be reached at evansiplaw.com, facebook.com/evansiplaw, or on Twitter @EvansIPLaw.


Music: "Off to Osaka" by Kevin MacLeod, licensed under a Creative Commons Attribution License. The song was edited for use in this podcast.

Introducing Everything IP

Earlier this month, Alt Legal hosted its new webinar program. Hosted by Hannah Samendinger, the Legal Product Manager at Alt Legal, Everything IP explores different aspects of intellectual property law. 

For Everything IP's first broadcast, “Everything You Need to Know about Trademark Protection North of the Border,” Canadian IP attorney John Lee explained nuances and strategies for securing trademarks in Canada. 

Attended by in-house corporate counsel, solo and boutique IP professionals, and company owners and leaders, the webinar provided tips and information for U.S. attorneys representing Canadian clients or to extend their current clients’ trademark protection north of the border. Check out the webinar here and see the slideshare here

To request a topic for Everything IP, to volunteer to serve as a subject matter expert, or to request more information about the webinar, email Hannah (hannah@altlegal.com). Stay tuned for future webinars!

Alt Trademarks: Episode 2 - Cliff Kuehn

Alt Legal presents the second episode of Alt Trademarks, a biweekly podcast hosted by Hannah Samendinger. Alt Trademarks discusses the latest news in trademark law, features interviews with prominent trademark professionals, and contemplates the issues trademark professionals face. 

In this broadcast, Hannah speaks with Cliff Kuehn, an international trademark lawyer and brand strategist. They discuss Kuehn's practice, which is largely virtual and based out of both San Francisco and Alicante, Spain. Kuehn also talks about his previous work at OHIM (now the EUIPO). Finally, they consider the effects of unauthorized trademark filers and how the practice harms both filers and attorneys.

If you would like to contact Cliff, he can be reached at kuehnlawip.com, at linkedin.com/in/cliffkuehn, or on Twitter @CliffKuehn.

Music: "Off to Osaka" by Kevin MacLeod, licensed under a Creative Commons Attribution License. The song was edited for use in this podcast.

Alt Trademarks: Episode 1 - JoAnn Holmes

Alt Legal is proud to present Alt Trademarks, a biweekly podcast hosted by Hannah Samendinger. Alt Trademarks discusses the latest news in trademark law, features interviews with prominent trademark professionals, and contemplates the issues trademark professionals face. 

For its inaugural broadcast, Hannah speaks with JoAnn Holmes, who has been practicing IP for 17 years. They discuss JoAnn’s transition from big law to in-house to solo practice. She also discusses the importance of technology in her practice and some tips for building a tech stack of your own. If you would like to contact Jo, she can be reached at holmesatlaw.com, at linkedin.com/in/joannholmes, or on Twitter @HolmesAtLaw.



Music: "Off to Osaka" by Kevin MacLeod, licensed under a Creative Commons Attribution License. The song was edited for use in this podcast.