The USPTO’s Office of Enrollment and Discipline (OED) exists, in large part, to ensure that patent and trademark practitioner are practicing ethically and in accordance with the Office’s Rules of Professional Conduct. The OED’s staff includes a dozen attorneys, many of whom have practical experience in the area of IP law. Whether you have been practicing law for many years or are just starting in the field of IP law, here are five things you can do to reduce the risk of being on the receiving end of a bar complaint.
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. For example, in a common patent representation, a practitioner may be contacted by an inventor, but as the representation continues, it turns out there are several inventors. Perhaps some of those inventors are employed (and may have a duty to assign any patent rights to their employer), while others may be truly independent. Is your client the first inventor who contacted you? Is it all of the inventors collectively? Is it the employer of an inventor? Or is it some combination of inventors and owners?
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. Practitioners also may wish to avoid an “accidental” IP client by advising such non-clients of the fact that the practitioner is not their personal attorney.
Rule 2 – Document the Scope and Duration of Your Representation
A “typical” patent or trademark representation can last for months if not years. When a client says they want your help with securing a patent or trademark, it is generally understood that you are you agreeing to do more than simply filing the application. A full scope IP representation ordinarily means both filing as well as post-filing matters. Those post-filing matters can arise many years after the initial application filing.
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. A limited scope representation (also referred to as “unbundled” legal services) is permissible, provided the limitation is reasonable under the circumstances and the client gives informed consent to the limited scope. 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
IP practice is date intensive, often involving hundreds of small matters, each of which has its own dates for actions to be taken. And a blown filing date can literally cost a client their IP rights and may be grounds for malpractice as well as an ethics complaint.
Good IP practitioners, therefore, adopt a solid docketing system that reliably tracks deadlines and includes “tickler” reminders, and they regularly communicate with clients about due dates. Technology solutions abound for docketing, and 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
Conflicts of interest are the number one cause of legal malpractice claims against attorneys. The ethics rules require law firms to make reasonable efforts to check for conflicts. Such systems should be centralized and robust enough to capture information that can be compared against new matters that come into the firm.
Conflicts can arise when one client asks a lawyer to take a position that is adverse to the interests of another client. Another conflict can arise when a lawyer is representing one client but is being paid by someone other than the client. IP firms must have systems in place to track the identity of clients, opposing parties, and interested parties. 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.
If you or your firm are not set up to run an IP practice, complete with a strong docketing system, commitment to conflicts checking, and competency in the underlying subject matter, you may wish to decline the work. Counsel who insist on working on a matter that they are not competent in should, at the very least, co-counsel with someone who is. Otherwise, refer the matter to someone else—you will sleep better at night.