Risk Update

IP Practice Risks are Everyone’s Risks (KYC, Engagement Terms, Docketing, Dabbling & Subject Matter Conflicts)

Posted Dan Bressler

Michael E. McCabe, Jr. does a great job summarizing key risk issues of note for IP practices. So many of his cautions have generally applicability. Highlights below but the full article is well worth a read: “Avoiding USPTO Discipline: Five Recommendations for IP Practitioners” —

  • “Rule 1 – Know Your Client. This seems so self-evident. But it can be tricky when dealing with IP representation. This is because there can be different persons or entities who claim an interest in the intellectual property… Difficulties arise when IP practitioners fail to recognize who is, and who is not, their ‘client.’ Counsel would be wise to memorialize, preferably in the initial engagement agreement, who is the client so they know who they have a duty to communicate with.”
  • “Rule 2 – Document the Scope and Duration of Your Representation… Some practitioners prefer to limit the scope of the representation to a discrete task, such as filing a provisional application only but not a non-provisional. Other practitioners wish to exclude from the scope of representation any post-issuance duties, like maintenance fee reminders… Practitioners ordinarily should get the client to agree to any such limitation in the scope of services at the outset of the engagement, preferably in the engagement agreement.”
  • “Rule 3 – Implement a Reliable Docketing System… a blown filing date can literally cost a client their IP rights and may be grounds for malpractice as well as an ethics complaint… practitioners who use outdated modes of manual docketing run an exponentially greater risk of missing a date and causing harm to a client. If a bar complaint is filed in the USPTO, you can be sure OED will want to know all the details of the practitioner’s docketing system.”
  • “Rule 4 – Check for Subject Matter and Other Conflicts… In addition, ‘subject matter’ conflicts can arise when a patent lawyer is asked to obtain patent rights in an area of technology that substantially overlaps with the claim scope of another client’s patent or pending application. The OED expects IP lawyers to have a ‘robust’ conflict checking system in place that includes checking not just for traditional adverse party type relationships but also for closely related technology subject matter conflicts.Moreover, conflicts may arise unexpectedly after the representation commences. For example, you may be representing a client that gets acquired by your adversary in a litigation. Or you may learn about new relationships that you were not aware of at the start of the representation and that could be potentially adverse to a client. IP practitioners need to maintain an organized system for collecting that new information and renewing conflicts checks during the course of a representation.”
  • “Fifth – Don’t Dabble. IP law is complicated and constantly evolving. A non-IP lawyer who occasionally ‘dabbles’ in providing IP services runs the risk of getting in over their head, potentially causing harm to a client.”

On the topic of subject management conflicts, one of the organizations I work with has previously shared its insights on the practical details of using technology to tackle subject matter conflict management.