Image from ClearAccessIP’s docket visualizer
Over the past decade, I’ve met with hundreds of patent clerks and paralegals. By and large, I’ve found that these professionals exhibit incredible commitment to the data integrity of their organization’s docketing systems. Despite their commitment, however, they continue to struggle with accuracy and efficiency.
Docketing is a function many IP professionals view as a need, but generally don’t spend much time thinking about until a deadline is missed, or a clerk decides to resign on short notice. These moments can be catastrophic, and in today’s era of on-demand intelligence, completely unnecessary.
Here are some stats on docket error risk:
- Malpractice claims involving administrative errors and matters involving client relations continue to rise nationally, accounting for over 40% of all claims asserted against lawyers. (source: ABA Profile of Malpractice Claims 2015)
- There are several factors driving malpractice lawsuits against patent prosecutors, the top being:
- Overestimating the value of a patent application or issued patent.
- Charging high fees for prosecution which enhances the expectations of a patent’s value.
- lawsuits against disgruntled clients for attorney’s fees which provoke counterclaims for malpractice (source: Oddi, Samuel. Patent Malpractice: An oxymoron No More” University of Illinois Journal of Law, Technology and Policy).
Past lawsuits involving docketing errors:
- $30 Million against Fish & Richardson for missing a foreign filing deadline.
- $100 Million sought against Foley & Lardner for failure to file a foreign application.
- $143 Million sought against McDermott Will & Emory for missing a PTO response deadline.
- Aidentity Matrix Entertainment sued DLA Piper alleging that Piper had a duty and failed to properly docket “all deadlines, domestic and foreign, for its clients’ patent applications.”
The 2015 Profile of Malpractice Claims, the ABA reports that there is a growing number of administrative errors leading to malpractice suits.
Today’s industry professionals look back to the 1980s as a turning point when patent prosecution transitioned from being considered a “low hazard” area of practice to one of high risk, says Larry Hilton, President of Dominion Insurance, the leading provider of malpractice coverage for patent practitioners. A new era marked by the recent surge of multimillion dollar malpractice lawsuits and subsequent settlements is upon us.
Most malpractice insurers require patent prosecutors to keep at least one docketing redundancy (i.e. a backup docketing system, or managed calendar). ClearAccessIP’s automated patent management solution provides a redundancy with incredible ease and implementation. Our daily reports also allow clerical staff to quickly audit each day’s docket report, with a click of a button.
 Hilton, Larry. Phone Interview. 9 Apr. 2014.
Posted by Nicole Shanahan on November 10, 2016.