Risk Management and Your Foreign Associates

By: Leslie Brittman and Sandra Haberman

1) Compare the client intake process for domestic and foreign cases. If differences exist, why? (Watch for variations in the definition of "client entity.")

a) Conflicts checks in general:

i) How fully automated is the conflicts process?

ii) Does the firm conduct a subject matter conflicts check in each case?

iii) Who is authorized to clear conflicts?

iv) How does the firm provide disclosure and obtain informed written consent?

v) How does the firm track outstanding conflicts waivers to ensure timely return by clients?

b) Conflicts relating specifically to foreign filings:

i) Who is the client entity?

(1) Does the firm run conflicts on the name of the foreign associate?
(2) Does the firm run conflicts on the client of the foreign associate?

2) Filing US cases for foreign IP lawyers and their clients:

a) Who receives these filings and how are they processed?

i) Is a target file date docketed immediately upon receipt?

ii) Does the foreign filing department work off dates and information contained in the foreign associate's cover letter, or does the firm require that such information be taken directly from the document(s) involved?

b) Priority information is frequently missing. How does the firm establish the appropriate filing date?

c) What is the firm's policy for filings received from foreign associates at the eleventh hour?"

i) How does the firm deal with filings that contain bad grammar, incorrect translations and other errors?

(1) Does the firm have authorization to rewrite portions of the specification if necessary, to meet US filing requirements?

3) Sending US cases to foreign IP lawyers for filing in foreign countries:

a) What is the firm's procedure for sending materials to foreign associates, e.g., mail, fax:

i) How many matters are contained within one transmittal?

ii) What is the firm's rule for confirming that the materials it sends are received timely and filed by the foreign associate?

(1) If the firm asks the foreign associate to confirm receipt via fax, who is responsible to ensure that a confirmation is timely received for each matter outstanding?

4) Rule and country law updates:

a) Who is responsible for obtaining and implementing computerized docketing system rule and country law updates?

b) If your docketing system is not supported by a software vendor such as CPA, CPI, MDC or Pattsy, how does the firm obtain and verify rule and law updates?

5) What attorney in your firm is responsible for:

a) Oversight of the foreign filing department?

b) Obtaining and disseminating rule and law changes regarding foreign countries?

i) What does the firm do to ensure that attorneys and appropriate staff are knowledgeable about country law changes?

c) What mechanisms are in place to ensure that the most recent forms are in place and in use?

d) Selecting and prioritizing foreign associates to be used?

i) Does the firm have one database listing for the preferred associate (and at least one back-up) in each country? Does it matter whether they have E&O insurance?

e) Determining whether certified translators will/will not be used and under what circumstances?

6) Annuities:

a) What steps has each of your foreign associates taken to ensure that it can send accurate reminder notices to your firm post Y2K?

i) What steps has your firm taken to avoid reliance on receiving timely notices from foreign associates?

ii) What steps has your firm taken to obtain a certificate of Y2K compliance from your annuity payment vendor?

b) Does the firm instruct foreign associates to forward to the firm any notice received from a foreign Patent Office that indicates an annuity is not paid?

7) Does the docketing department run and review an "audit trail?"