Patent Ethics for the Paralegal Ways to Enhance the Patent Attorney/IP Paralegal Relationship

Summary Poll of Adolph Locklar Paralegals – “The attorney should not be a” jerk. Penalties to firms and clients when the relationship is less than optimal or problematic Ways to enhance the relationship – Communication – Accurate docketing – Changes in the law

When Firms Make Mistakes Missing deadlines Failing to follow-up that directed activities were performed Delays in prosecution All can and HAVE resulted in malpractice suits against firms.

When Firms Make Mistakes Missing a maintenance fee payment Improper priority claims Missing on-sale bar dates (even after AIA applies to publication dates) Missing deadlines to supply missing parts Who got blamed for the errors?

When Firms Make Mistakes In addition to potential malpractice suits: Extension fees Petition fees Costly rework Less than optimal priority dates Friction between attorney and paralegal All lead to - unhappy clients

Recognize Paralegal Role IP Paralegal Primary contact between firm and PTO. Primary contact between the firm and foreign associates. For sophisticated clients, primary contact between firm and client IP paralegal.

Effect of Paralegal Role IP Paralegal must remain current on changes in contact with PTO – Fee changes – Changes in filing procedures – Changes in forms – Changes in rules as they affect communication with PTO IP attorneys attend CLE presentations that provide NO information about these changes.

IP Attorney Role IP Attorneys: Draft applications Draft responses to PTO office communications Responsible for content Ultimately responsible to the client

Effect of IP Attorney Role IP Attorney must remain current on substantive changes at the PTO IP attorney must remain current on case law changes as they affect prosecution IP attorney must remain in contact with client

Effect of Delineation of Roles As a paralegal, do not expect attorneys to know changes in paralegal role rules As an attorney, do not expect paralegal to know changes in substantive law However, even IP attorneys should be able to perform basic e-filing activities.

Docketing: Best Tool for a Common Framework PTO and Foreign IP Offices run on deadlines Key to having a good relationship between paralegal and attorney – What must be done – When it is due Current and accurate dockets are a necessity

Docketing Purely electronic docketing system is non- optimal tool for furthering relationship between IP attorney and IP paralegal. Multiple inputs on the same matter often make for chaotic output Attorneys will never know how to operate the docketing system as well as the paralegal Idea of an older partner changing your docket should frighten you.

Docketing Suggestions for beyond the purely electronic docketing system Outlook calendar reminders – not practical for large dockets Periodic readable docketing system printouts Written or paper dockets (Manual calendar) Computers prone to viruses and electronic data easily accidentally deleted. Paper remains durable

Communication and Timing IP attorneys MUST keep current on the docket Weekly docket review meetings summaries from IP paralegal Informal reviews BOTH IP attorney and IP paralegal have responsibility for having understanding of a current and complete docket.

Communication and Timing Unknown Matters – those that are not on docket Transitions when taking on new client New matters from existing client Responsibility of both IP attorney and IP paralegal to keep other informed about non- docketed items and develop interim procedures

Periodic Improvement Reviews No system is perfect Semi-annually, IP paralegal and IP attorney should sit down and discuss opportunities for improvement/how to remedy errors Implement changes to correct/prevent

DON’T BE A JERK Good relationships are built on trust and understanding Everyone has a bad day, but don’t be a jerk.

Conclusion Thanks for your attention Q/A or how you think I got it wrong.