The Ethics of IP Management Software
Nehal Madhani | October 02, 2017
Nehal Madhani is the founder and CEO of Alt Legal, whose software makes it easy for law firms to create and manage IP filings. Before starting Alt Legal, Nehal practiced as an attorney at Kirkland & Ellis, LLP. He is a self-taught Python/Django programmer, and he served as a CodeX fellow at Stanford Law School. Nehal has a J.D. from the University of Pennsylvania Law School, a Certificate in Business and Public Policy from the Wharton School of Business, and a B.A. from Northwestern University.
If you’re an intellectual property attorney, you know that punctuality for filings is central to your firm’s success. You’ve likely lost sleep worrying about your client’s filing deadlines and knowing that a missed deadline would be a nightmare in more ways than one. We have outlined some ethical considerations and solutions that will help ensure you never miss a deadline and consequently have an efficient, stress-free practice.
As an attorney, you are required to provide competent representation for your clients. Your commitment to competence isn’t merely one you make to yourself — it’s an ethical obligation required the U.S. Patent and Trademark Office and state ethics rules. Under the Model Rules of Professional Conduct, created by the American Bar Association, Rule 1.1 defines “competent representation” as “legal knowledge, skill, thoroughness and preparation.”
With the advent and spread of legal technology, that requirement has come to include technical aptitude. In 2012, the American Bar Association added Comment 8, which states attorneys should stay updated on the “benefits and risks associated with relevant technology.” Since then, 23 state bars have adopted the technical competence requirement into their own rules for professional conduct. Such a shift by the ABA and state bar associations illustrates the momentum of legal technology: It’s here to stay, and the onus is on lawyers to keep their practices up-to-date.
Indeed, the USPTO has shown its willingness to hold attorneys accountable to these standards as well. In 2013, the Office of Enrollment and Discipline (OED) suspended a solo practitioner for five years for missing deadlines for several clients’ patent portfolios. The California attorney used a Microsoft Word document and a whiteboard to track filings, but didn’t use a corresponding calendar system to manage deadlines. Ultimately, neglecting his IP docket resulted in a five-year suspension, which Tachner would be discovered violating in 2014, resulting in his resignation.
As an IP attorney, docketing correctly and accurately is a meaningful aspect of your practice. The USPTO leaves little or no room for missed filing deadlines, a mistake which could cost your client — and you — thousands or millions of dollars. Alleged failure to file documents, failure to calendar, or missing a deadline account for a combined 24.1 percent of legal malpractice lawsuits, according to a study by the ABA.
Fish & Neaves, a law firm sued by MDCO for allegedly missing a patent term extension deadline, knows this threat well. In its suit, MDCO alleged Fish & Neaves’ failure to file a patent term extension (PTE) application resulted in the loss of four and a half years of market exclusivity for its pharmaceutical product, which represented about $2 billion in sales. The parties ultimately settled with no damages paid to either side in August 2015, the year after the suit was filed. MDCO subsequently paid millions to hire a of number lobbying firms to have Congress adopt a provision requiring the USPTO to accept accidentally late filings.The firm wasn’t ordered to pay the company, but even so, it shouldered the burden of defending itself in costly, high-stakes litigation for a year — an expense that could be ruinous, both in cost and brand value, for smaller practices.
Using IP management software greatly diminishes the risk of missed deadlines by minimizing opportunities for human error. Some IP management software takes the guesswork out of the process by automating deadline calculation and sending periodic email alerts. Attorneys using traditional methods were compelled to determine the due date using the relevant legislation and the filing date and then enter that into a corresponding calendar. The success of this process depends on both the correct calculation of the deadline and that the firm consults its calendar for due dates regularly. By providing email reminders and deadline calculations, IP software companies remove the need to rely on manual updates and make it easier for lawyers to stay on top of client filings. More modern IP management software will even automatically identify your filings, update the status of your filings, and calculate your statutory deadlines.
Beyond calendaring, IP management software provides a myriad of other benefits, including secure and effective channels for collaborating with clients. Instead of going back and forth via email or phone during client intake or other routine procedures, software can provide you and your client with ways to contribute to the same document using cloud-based servers. This kind of flexibility maximizes your efficiency and ensures more productive time with your clients.
Ethics rules and best practice standards across the country are making it increasingly important for attorneys to inform themselves about advances in legal technology. With the advent and spread of these new systems, your firm stands to gain efficiency, confidence and productivity from adopting this technology into your practice.