Chicago patent lawyer Richard Beem addresses Illinois Paralegal Association (IPA) on "Details, Mistakes & Cures in IP Law." Goal is zero defects, but everyone makes mistakes. Common errors. Prevention. What to do upon discovering a mistake. Ethics. IPA Fall Conference Nov. 20, 2014.

1. Illinois Paralegal Association
Fall Education Conference
November 20, 2014
Details, Mistakes & Cures
in
IP Law Practice
Richard P. Beem
BEEM PATENT LAW FIRM
www.BeemLaw.com
Chicago USA

2. My Mentor, Judge Edward S. Smith
U.S. Court of Appeals for the Federal Circuit
Slide 2

3. Are they honest?
Slide 3

4. Judge Smith’s Two Rules
1. Confidentiality
2. Mistakes
And a third…
3. Somebody (this might be you) should always
know where to find everyone and everything
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5. Goal is Zero Defects
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6. We All Make Mistakes
• Recognize
• Raise
• Remedy
Slide 6
Three R’s

7. Illinois Rules of
Professional Conduct
RULE 1.4: COMMUNICATION
(a) A lawyer shall:
* * *
(3) keep the client reasonably informed
about the status of the matter;
* * *
Slide 7

8. Dumpster Dive 1
• Lawyer loses file –
thinks it’s out the
window
• Sees dumpster below
and goes for a dive
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9. Four Ways to Deal with Mistake
1. Ostrich approach
2. Hide or deny it
3. Say it was someone
else’s mistake
4. Apologize on behalf
of firm & fix it
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10. Failure to Pay Issue Fee
• Phone calls (to straighten out
important details) don’t suspend
due dates
• Written action/payment is
required
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11. Close counts, in horseshoes
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12. A Client Named Howard
• Lawyer writes letter to Howard
• Assistant finalizes and sends letter
and goes home
• Howard calls lawyer: “Is this some
kind of Freudian slip?”
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13. Watch out for spell check
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14. Prevention
• Last look / print
• Read aloud
• Recheck names, dates, serial
numbers, docket numbers
• Docketing
• Send and document reminders
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15. Correspondence
• More on last look –
– Content
– Attachments
• Will it make sense to reader?
• Is all pertinent information included?
• Match addressee and salutation
• Check headers on all pages
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16. Slide 16
TRAIN FIRM

17. Slide 17

18. Slide 18

19. Dumpster Dive 2
• Lawyer prepares
boxes of documents to
produce in litigation
• Staff thinks they are
trash and throws them
out
• Lawyer traces boxes
to recycling center
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20. Names
• Dale Carnegie said, “A person’s
name is the sweetest sound.”
• Use names, get them right, and
spell them right.
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21. Which is correct?
HON Technology Inc.
or
Hon Technology, Inc.
(ca. 2000)
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22. Names (cont.)
• Name misspelled on printed
name tag at conference
• How should staff respond?
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23. Cures
• When you discover mistake, tell your boss
promptly and fully
• If you can, propose a solution
• Might be reportable to professional liability
insurer
• Prompt candid communication to client
– State situation and propose course of action
• Might cost the firm
– Fees and costs for petition to revive
• Better now than later
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24. Fear of
mistakes
can
paralyze
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25. Better to move
forward and
risk mistake
than do
nothing
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26. Questions?
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27. Thank you!
Richard P. Beem
Beem Patent Law Firm
www.BeemLaw.com
Slide 27