Deadlines: Thoughts for Good and Bad Practices?

By David Hricik, Mercer Law School

Over the decades (sigh) I’ve been involved in various capacities in cases where practitioners have missed deadlines.  Sometimes, the client’s partly to blame. For example, imagine a client at the last minute dumping a lot of information they expect to be included in an application or any claim is barred (say by a prior publication).  At other times, the lawyer misses the date. For example, imagine key docketing personnel leave and that leaves a knowledge gap, or an unanswered email box, allowing a deadline to pass by.

Obviously, having dual docketing systems is important. Ensuring dates are entered correctly is important. Ensuring that there is a person responsible for the deadline, likewise important. And, of course, much of this is now automated.

I would be curious to rad what you believe to be “best practices” or mandatory minimum standards in this area. For example, I’ve seen some firms send notices to clients that in essence say “we’re not going to foreign file unless you tell us” while others insist on an affirmative “I don’t want foreign filings” written message from the client, and hound the client until they get it.

If you have “war stories” or thoughts or concerns, please share them in the comments. Obviously, everyone understands you’ll be telling us about someone else’s mistake, not yours!  :-).

FYI I am writing a short article on this topic and would love to share with other practitioners what you have learned. I’m thinking “where the landmines are” might be a good title for this one.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

7 thoughts on “Deadlines: Thoughts for Good and Bad Practices?

  1. 2

    1. Review the benefit information on the OFR ASAP, and correct it if necessary ASAP. If you make a mistake in your attempt to correct the OFR, the USPTO may or may not tell you. It is up to you follow up on getting the corrected OFR by the deadline.
    2. Keep a double docket with independent source information.
    3. If you have a large docket, pay attention (2 weeks – 1 month out) to when you have multiple items with due dates close together. So you can do some items early, or delegate work if necessary.
    4. Everything breaks, automation can suddenly stop working and you will not know it has stopped working until it is to late.
    5. It is fairly common for outside emails from from foreign counsel to blocked by a spam filter, which can change with you being notified. If you do not hear from foreign counsel in a while check in on it.

    1. 2.1

      Thank you. Yeah, I have seen that.

      So do you require your docketing people to have affirmative acknowledgments form foreign associates (and vice versa — they need to get positive affirmation back from you that you’ve filed something/etc.)?

  2. 1

    For your Best Practices hypo, I have developed different standards for different clients. For clients that are very interactive and engaged, I always ask for the affirmative email confirmation for the file: “I (the client) do (or do not) want to do X.” However, on the other extreme, there are many clients who are extremely unresponsive to inquires of any kind or importance. For those clients, the important email is the: “Unless I (the attorney) hear otherwise by Date X, I will (or will not) file Y (or respond to Y).” Of course, followed up by a reminder or 2 before that date but without the need (or stress) of “hounding” the client.

    1. 1.2

      Yes, that’s the general rule — you have to do what is reasonably necessary for this client (I always use my mom as an example: she would need hours to understand; while Dell’s counsel, not so much).

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