By Rich Baker

As much as we don’t like to think about it, none of us will live forever. To protect our legacies, we can buy life insurance for our families, and prepare wills for the orderly transition of our financial affairs to our loved ones. But as a patent practitioner, each of us has an obligation to care for our clients. There are maintenance fees to pay, patent applications to file, and office actions that need to be submitted before the deadline. Our clients count on us to properly handle their patent matters.

But what if we are unable due to death or incapacity?

Members of multi-practitioner law firms or large in-house IP departments generally have this taken care of in the partnership agreement. Paralegals or other partners will take over the docket and notify clients of the situation. Someone in the firm will make sure the items in the docket are timely handled. A replacement will be hired, and the client’s needs handled.

But for sole proprietors and members of small in-house legal departments, a bit more planning is required. We need to arrange to have someone quickly transition our docket to another.

The transition requires several steps. Clients need to be notified. Docket events need to be addressed. Client matters need to be temporarily or permanently transferred.

As an in-house attorney, succession planning should begin by identifying a point person, the human resources manager, a paralegal, or a secretary, as the point of contact. The business needs to know to contact this person promptly should the practitioner stop showing up for work without explanation. The point person should have instructions on how to transition the job. These instructions should include how to reassign docket events and to transition the USPTO customer number to another practitioner[1]. The instructions should describe reassigning email and phone numbers to the new practitioner. In some cases, this means that outside counsel is hired to quickly step into this role. The advantage of using outside counsel is that conflicts should be clear, and that they should know about the company and its technologies.

For a sole practitioner, the situation is not as simple, as the resources of a company are not available. More planning is required.

The first issue is selecting a backup practitioner. This could be an agreement between two practitioners to cover each other’s docket. NAPP has developed a backup practitioner template agreement (download here), that addresses many of the issues associating two independent practitioners. However, this agreement needs to be negotiated between the practitioners, and needs a thorough legal analysis to tailor the agreement to the needs of the two practitioners. The agreement should address the notification of clients, access to dockets and USPTO customer numbers, how to handle money in escrow, confidentiality, and pre-paid prosecution work. Additionally, some compensation to the estate of the practitioner for the new clients could be included.

The second issue is how the backup is notified that the practitioner is incapacitated. The family could be instructed to promptly notify the backup. Alternately, the docket system could be modified to automatically send an email to the backup if not reset, a type of “deadman” docket event. NAPP has developed an Appcoll task that will automatically send an email. The instructions are here.

Third, the docket and USPTO customer numbers need to be set up for easy transition. This could mean that the backup is included as an authorized user on the docket system, and that the backup is listed on the customer number (although this could create some level of responsibility). Alternatively, the practitioner could sign, but not file, USPTO form PTO/SB/124A, Request for Customer Number Data Change. The Backup will file this form when necessary to transition the customer number to allow the prosecution of the docket items.

In some cases, it may be easier to take on a partner than go through the backup arrangement. Or a family may decide to immediately send out client termination letters to all clients when a death or incapacitation event occurs.

However it is handled, the responsible practitioner needs to put as much time into the orderly transition of client accounts as they put into wills and life insurance.

[1] The USPTO should also be notified of the death of a practitioner.