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.



1 response
Nice post. In addition to the points you raise, the legal malpractice underwriting community also pushes for IP law firms to have state of the art docketing software. One of the biggest threats, both ethically and malpractice-wise, is blowing a deadline. In 2017, it is expected that patent and trademark practitioners use more than just "old school" paper and pen to track due dates.