Malpractice & IP: Are Things Getting Worse? Patent Challenges in Prosecution

Malpractice & IP:Are Things Getting Worse?

Patent Challenges in ProsecutionMercedes K. Meyer, Ph.D. Drinker Biddle & Reath LLP │ Washington, DC

October 2014

LEGAL DISCLAIMERI am Not Your Lawyer

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These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the speakers and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, Drinker Biddle & Reath LLP and the speakers cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with Drinker Biddle & Reath LLP and the speaker. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.

And nothing represents the views of Drinker Biddle & Reath, its attorneys, or any sentient life form on the earth or universe, or any parallel universe, alive or dead, fictitious or real! This is for entertainment purposes only!

Law Firm Understanding

Change― AIA & The Supremes & The Executive

Branch Six Sigma

― Process― Docketing ― Software & Keeping with the Times

Education Professionalism Conclusion

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Changing Times & Changing Law

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Change - Date Insanity

6/8/95URAA

11/29/99AIPA

12/10/04 9/16/2011 9/16/2012 3/16/2013

• Best mode• Virtual & false marking• OED Stat. of limitations• Micro entity status• PTE

9/26/2011

• Oath & Dec• Preissuance submission• Supplemental exam• IPR• PGR for business

methods (CBM)

• 17 years from grant to 20 years from filing

• CONS/DIVS/CIPS

• Claim of benefit – 1.78• Publication after 18 mos.• Inter partes reexamination• RCE v. CPA practice

Prioritized Exam

5/29/00

PTA 154(b)

• CREATE Act 103(c)

• Final rules for interferences and appeals (9/10/04)

Myriad6/13/13

• FITF• Derivation• Loss of interference• Repeal of statutory

invention registration• PGRPrometheus

3/21/2012

New PTO Ethics Rules

2 sets of statutes next 20 yrs

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Supreme Court Decisions by Decade 1900-1919: 13 1920-1949: 6 (including Funk

Brothers) 1950-1969: 11 (Graver, Graham) 1970-1979: 8 (Gottschalk,

Wertheim, Flook) 1980-1989: 5 (Chakrabarty,

Diehr) 1990-1999: 8 (Markman,

Warner-Jenkinson) 2000-2004: 7 (Festo) 2005-2009: 17 (Lizard Tech,

Ariad, KSR, Bilski) 2010-2014: 7 (Mayo, Myriad,

Alice) Doesn’t include remands etc.,

e.g., Classen or Lab Corp.

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AIA & The Supremes

2 sets of statutes – 1 was enough Supreme Court “making law”

― KSR, Bilski, Ariad, Myriad, Prometheus USPTO “making law”

― New ethics rules― New 101 Guidelines – makes Myriad &

Prometheus look pleasant

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Statistics

Last 25 years, IP has gone from geek status to HOT with Congress, The White House and The Supremes

Malpractice trends – see E. Coe article― 382 claims reported 1996-1999― 528 claims reported 2000-2003― 685 claims reported 2004-2007― ~16% going to the court to decide

Big firm names and multimillion dollar claims

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Law Firm State

Increasing billable hours – the 1990’s shift Decreasing education / mentoring hours No metrics – metrics are law firm oriented not client

oriented (Billing Rate)x(Hours Billed) ≠ Qualitative Metric― Quality Control - Silos and generally lack of enforcement

for uniform procedures Moving Lawyers -tracking Industry mergers and breakups – tracking Gaping Gaps – Prosecutor to Litigator to Judge

― Copying / plagiarism – accepted patent drafting practice – Judge: “dubious at best, and at worst, an insult to the professional standards of the patent bar.”

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Process, Docketing, Software & Keeping Up With The Times

Six Sigma

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Six Sigma for Service NOW

WHO? - DuPont, GE, and many corporations WHAT?

― Standardization - Forms, procedures for handling papers given new laws

― Consistency for applications, opinions, litigation, education, licensing

― Docketing – missed dates― Partners coming & going

HOW?― Analytics – quantitative and qualitative metrics

are coming and getting better• LexMachina, LexisOptimizer, PatentAdvisor, IPDAS

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Paper Process

Records to Docketing to Attorney – paper flow & docket clearing

Inbound & Outbound Partners― New docketing systems & data

transfer Paper to Paperless

• Clients are going paperless….• Ownership of paper and

electronic files• What are your procedures?

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WHY? - 2 Cases

In re Druce (2014)― Missed dates― Back dating a series of documents over 2-3

years― Blaming the paralegal― Where were the procedures? Why didn’t

docketing, billing, an admin, or the lawyer detect it?

In re Kelber― Hiring systems – warning letters from OED &

OED process

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Changing Your Focus – The Why

Education, Silos, Culture & Professionalism14

Education, Silos & Culture

New attorney education― 1970’s, 1990’s, Today― The reality― Mentoring – a dying art― Paralegal / Support education

Integration into system – silo issues― My way is better― Our malpractice is still cheaper than doctors’

Risk Management & Law Firm Culture― Reporting / Depression / Substance Abuse / Life

style― 360 Reviews of ALL professionals – Silo

minimization

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Professionalism

2 Buckets― The embarrass your grandparents /

common sense rule In re Caracappa, D2014-02 (2014) – one

bucket In re Tassen – both buckets

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Conclusions

Reaping the “reward” of the 1990’s legal shift

We need better qualitative metrics that reflect value to the clients― Social media connections, conflict checks /

month, dollar tracking annually / client over time, Roadshow number, paper number, client turnover,

― Promoting roadshows which educate your own lawyers while educating others

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THANK YOU!

Mercedes K. Meyer, Ph.D., J.D.Drinker Biddle & Reath LLP

[email protected]

202-842-8821

References for Your Educational Entertainment In re Caracappa, D2014-02 (2014)

In re Druce, D2014-13 (Sept. 5 ,2015)

Erin Coe, “Firms Face Rise in High Stakes IP Malpractice Suits, Law360 (March 2, 2012)

Cold Spring Harbor Laboratory v. Ropes and Gray, 11-10128RGS (D.Mass. Jan 13, 2012)

Jess Davis, “Baker Botts Dodges $41M Verdict in IP Malpractice Trial,” Law360 (May 15, 2014)

Michael Ena “Jurisdictional Issues in the Adjudication of Patent Law Malpractice Cases in Light of Recent Federal Circuit Decisions, 19 Fordham Intellectual Property, Media and Entertainment Law Journal 220 (2008)

Anthony K. Greene, Trends in Intellectual Property Lawyers Professional Liability Claims 1983-2010, ABA 37th Annual Conference on Professional Liability (June 3, 2011)

David Hricik, “Lawyers, Clients, and Money” May 2014, excerpt from David Hricik & Mercedes Meyer, Patent Ethics: Prosecution (LexisNexis 3d ed. Forthcoming 2014)

In re Kelber, D2006-13

Malpractice – Panel Examines Several Problem Areas Specific to Intellectual Property Practice, 27 Law. Man. Prof. Conduct 372 (2011)

Mercedes K. Meyer, “Professionalism Before the Office: Some Issues,” AIPLA 2014 Annual Meeting, October 25, 2014

Samuel Oddi, “Patent Attorney Malpractice, An Oxymoron No More 2004 U. Ill. J.L. Tech. Pol’y 1 (2004)

Supreme Court List: http://en.wikipedia.org/wiki/List_of_United_States_patent_law_cases

Jennifer Smith, “The Wrong End of Lawsuits,” The Wall Street Journal (Feb. 6, 2012)

C. Scheinfeld and Parker H. Bagley, “Beware: Patent Malpractice Suites Are on the Rise,” 249 New York Law Journal

In re Tassen, No. 2013-07) (Dir. USPTO 2013), available at http://e-foia.gov/Foia/RetrievePDF?sytem=OED&flNm=0094_DIS_2003-09-098

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