Client Practice Pointer: Deadline Management

This short section of the website doesn’t relate to a service provided by the firm, but it’s so important to the services obtained by the client that it’s appropriate to mention it here as a “client practice pointer.”

The processes at the U.S. Patent and Trademark Office (and, indeed, at most of the Trademark Offices around the world) are deadline driven.  That is, when the Trademark Office issues an official communication, it also usually issues a deadline for response (typically, the deadline is six months after the mailing date of the Office communication).  Failure to respond within the stated deadline results in abandonment of the application (necessitating a new filing if you continue to desire the rights).

Because of the presence of deadlines, most law firms use computerized docketing systems to facilitate the management of deadlines.  And the vast majority of the time, these systems work very, very well.

However, the best docketing systems in the world sometimes fail, whether due to human error or computer program malfunction.  Ultimately, while it might be a matter of some embarrassment to the law firm, it is the client who loses, as it is the client individual or entity that has lost its intellectual property rights.

How can a client protect itself against missed deadlines?   By doing the following three things.

First, contact your intellectual property attorney once every six months after filing and inquire about the status of your application in writing (whether by letter or email) and follow-up until you get a response.

Second, if your intellectual property attorney advises that an Office communication has been received, and that this communication bears a deadline, docket any deadlines for response yourself.  Don’t rely upon any third party law firm or corporation (including ours) to remind you of the deadline date.  Again, most law firms (ours included) will work as hard or harder than the client to ensure that deadline dates are met; however, the astute client (and all large corporations) always assume personal responsibility for deadline management, as they want to do everything possible to ensure that important deadlines are met.

Third, after issuance, consider hiring a professional docketing service, as the due dates for the fees that follow don’t arise until years later.  The first patent Maintenance Fee, for example, isn’t due until the third anniversary after the patent’s issuance.  The federal trademark’s Declaration of Continued Use isn’t due until the fifth anniversary after its issuance.  Because these dates lie a substantial time in the future, it makes sense to use third party service providers to augment your company’s internal docketing processes.