IP Management Software and Ethical Considerations
Alt Legal Team | February 19, 2023
Implementing technology can be a game-changer in terms of helping manage your IP practice, streamlining your workflow, and in many cases even fully automating tedious tasks. Technology enables attorneys to spend less time on repetitive, often non-billable work, instead allowing them to focus on handling complex, billable legal work, developing new business, and strengthening client relationships.
However, whenever attorneys make choices to adopt (or to not adopt) legal technology, they must always consider their state bar’s ethical considerations surrounding technology. The rules are complicated as most states require that attorneys be aware of both the benefits and the risks associated with technology. Many states require that attorneys be familiar with technology and others have made it an ethical violation to remain technologically incompetent. Therefore, as the ethical considerations around technology in the legal profession continue to evolve and as more legal professionals adopt legal technology in their practices, practitioners must educate themselves on the ethical pitfalls of technology and how to avoid them.
Where Legal Technology Fits for Modern Lawyers
Lawyers have been historically slow to adopt new technology. However, in recent years, as the pandemic forced remote working and as newer generations of lawyers rise through the ranks, technology has been making a greater impact on law practice. According to the ABA TechReport 2021, in 2021, 65% of law firms maintained or increased their technology budget. Additionally, the report revealed that 84% of attorneys have remote access software. Also, the percentage of lawyers who use cloud-based software has doubled between 2011-2015 and is up 60% in 2021. Another important result of the COVID-19 pandemic is that it led to 66% of law firms reporting that they will improve the way they virtually communicate with clients. Also, more than 40% of lawyers anticipate more remote, virtual hearings in the future.
As lawyers are increasingly adopting technology and innovation, it’s crucial that you, at minimum, keep up with the trend. In order to keep up, you should first learn how to use legal technology that is tailored to your practice. Meanwhile, if you are already using legal technology, keep in mind that there is constant innovation in the technology space and new software is always being released. Keep your technology and your practice at the forefront by continuously seeking out better technology for your practice. You can learn about new technology and read technology reviews using any of these helpful resources:
Legal tech marketplaces
Software review platforms
Practice area communities
Legal technology consultants
Legal tech news
Types of Legal Technology
Before digging into the ethical implications of legal technology, it’s helpful to first understand the types of legal technology that are available. Many tools relate to general practice management and are relevant to all types of attorneys, but there are IP-specific technology tools that are especially important for IP and trademark lawyers, including IP docketing software and trademark search and monitoring tools.
IP-Specific Technology
- IP docketing software (trademark-focused, patent-focused, general, or domains)
- Trademark and patent search/tracking tools (e.g., Corsearch, CompuMark, IPRally)
- Trademark monitoring tools (e.g., Alt Legal Trademark Protection, Corsearch, CompuMark, Markify)
- Brand monitoring tools (YellowBrands, Incopro)
- Patent intelligence tools (DocketAlarm, PatSnap, Juristat)
- Patent maintenance tools (Annuities and spend management)
- Patent drafting tools (Specifio, PatentPal, ClaimMaster, and Rowan Patents)
- IP licensing and contract management software (Brainbase, Ironclad)
Law Practice Management
- Practice management software
- Payments, invoicing, and accounting tools
- VOIP
- Virtual secretaries
- eSignature tools
CRM/Business Development
- Client intake
- CRM
- Client access portals
Legal Research/Knowledge Management
- Legal research
- Knowledge management
- Legal education & training
Litigation
- Docketing and e-Filing
- Court calendaring
- Service platforms
Discovery
- eDiscovery tools
- Legal holds
Contracting
- Contract lifecycle management
- Contract review and analysis
- Contract automation and drafting
Document Technology
- Document management
- Document automation and assembly
- Document review and analysis
Key Ethical Considerations for Lawyers Implementing Technology
There are several key ethical considerations that all lawyers must consider when implementing technology, regardless of their specific practice area. All states have adopted Model Rule 1.1, the duty of competence:
Competence: “A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness, and preparation reasonably necessary for the representation.”
Along with the duty of competence, 40 states have adopted Comment 8 to Rule 1.1, the ethical duty of technology competence.
Maintaining Competence: “To maintain the requisite knowledge and skill, a lawyer should keep abreast of changes in the law and its practice, including the benefits and risks associated with relevant technology, engage in continuing study and education and comply with all continuing legal education requirements to which the lawyer is subject.”
The implications of Comment 8 require that practitioners stay abreast of both the nuances of their practice area as well as some broader aspects of the legal practice, such as the development of new technology.
State disciplinary committees have interpreted Comment 8 to mean that not only must attorneys be familiar with new technology, but that technological incompetence is not an excuse for misconduct. In James v. National Financial, LLC, the Court of Chancery of Delaware determined that the bank’s counsel could not claim technological incompetence as an excuse for discovery misconduct involving failure to properly export all required fields from a software system into a spreadsheet and knowingly providing inaccurate information. Specifically, the court noted that if a lawyer cannot master the technology suitable for that lawyer’s practice, the lawyer should either hire tech-savvy lawyers tasked with the responsibility to keep current, or hire an outside technology consultant who understands the practice of law and associated ethical constraints.
Key Ethical Considerations for Lawyers Implementing Technology
The ethical considerations set forth in Model Rule 1.1 and Comment 8 apply to IP practitioners particularly when it comes to establishing a docketing system to keep track of important USPTO deadlines. Also important to remember, trademark attorneys practicing before the USPTO are subject to their state bar’s ethical rules as well as the USPTO’s Rules of Professional Conduct. The USPTO’s Office of Enrollment and Discipline (OED) ensures compliance with the USPTO Rules of Professional Conduct and investigates allegations of misconduct. There have been several instances before the USPTO OED where practitioners were sanctioned for failure to use technology to keep track of important USPTO deadlines.
In a case before the USPTO OED, In re Tachner (USPTO D2012-30), the OED found that technological incompetence was not an excuse for missed filings. The OED brought an action against a solo patent attorney after he missed several filing deadlines for clients’ filings. The attorney relied on an office manager and a manual docketing system. Through 2005, he docketed matters by recording dates in a notebook. After 2005, his office relied solely on a Word document that listed actions as single-line entries (no table and no calendar). The attorney admitted to a pattern of neglect of management of his law firm, including reliance on an “unsound calendaring system for tracking deadlines.” Ultimately, the OED suspended the attorney for five years for violating several provisions of the USPTO Code of Professional Responsibility.
There have been several similar cases before the USPTO OED where attorneys failed to use technology to keep track of deadlines, resulting in disciplinary action.
- In re Spradley – Attorney failed to respond to and report to clients’ office actions and notices of abandonments. As part of the settlement, the attorney was required to implement a software-based docketing system to alleviate docketing inadequacies.
- In re Park – Attorney allowed 7 patent applications to go abandoned. He claimed to be overworked and that the abandonment was unintentional. As part of the settlement, the attorney was required to set up a new electronic docketing system as the primary system, while a paper docketing system was used as backup.
- In re Kroll – Patent attorney suspended for 2 years for failure to timely file a new application and failure to respond to a related office action. Attorney maintained a paper filing system that was not well-organized and had no system to alert him and the team of unmet or upcoming deadlines. Attorney also maintained an electronic system as a “backup” which consisted of either a document or spreadsheet, but that was not interactive and did not inform the attorney of deadlines.
Conclusion
Lawyers are increasingly adopting technology out of necessity due to changing post-pandemic work conditions and due to state bar requirements that they effectively use technology. Adopting and using technology requires that attorneys understand how to use the technology and that they keep abreast of new developments in technology. If a lawyer fails to meet these obligations, they can be subjected to disciplinary proceedings by their state bar association. Trademark and IP attorneys face another layer of ethical obligations imposed by the USPTO Rules of Professional Conduct and the OED. Trademark and IP attorneys must be particularly mindful to adopt a sound trademark docketing system in order to keep track of important trademark deadlines.
Having a sophisticated, high-tech trademark docketing system like Alt Legal can help you better manage your trademark docket and deadlines. Learn more about what features to look for in the best, most high-tech trademark docketing software.
- Trademark Docketing Software Features Checklist: Organize Your Evaluation
- Top 5 Trademark Docketing System “Must Haves”
If you have any questions about how to choose the best IP docketing software for your organization, our knowledgeable team is here to help. Reach out to us at [email protected]. Also, we would be pleased to offer you a free trial or demo of Alt Legal IP Docketing Software. To sign up, click here.