“What We’ve Got Here Is Failure To Communicate”  – Preventing The Most Common Cause For Attorney Discipline And Malpractice

Michael E. McCabe, Jr.Communications, Failure to Communicate, Malpractice, Patent Ethics2 Comments

It is one of the most iconic lines in the history of American cinema.  Spoken by “The Captain”–the sadistic prison warden portrayed in the 1967 film Cool Hand Luke—the “failure to communicate” passage near the top of the American Film Institute’s list of top 100 movie quotations, nestled between “I love the smell of napalm in the morning” (Robert Duvall, Apocalypse Now) and “You talkin’ to me?” (Robert De Niro, Taxi Driver).  For lawyers, “failure to communicate” takes on a whole different meaning.  Attorneys are professional communicators.  You might say effective communication skills are a cornerstone to the successful practice of law.
Failure to Communicate
USPTO Discipline And Duty To Communicate

In case you have not been paying attention, here is a news flash – as lawyers, we are targets. The bigger the lawyer (or law firm), the larger the target.  But who is shooting?  Unfortunately, in most cases, it is the very clients who hire us.  The reason?  Almost every case can be traced back to a communication failure.  If the client does not get what they thought they were entitled to get (based on their communications with the lawyer), the target grows larger.

For IP practitioners, a failure to communicate can lead to a client’s loss of potentially valuable intellectual property rights.  USPTO ethics rule 11.104, which is modeled after ABA Model Rule 1.4, states that a lawyer “shall explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation” and shall:

  1. promptly inform the client of any decision or circumstance with respect to the client’s informed consent;
  2. reasonably consult with the client about the means by which the client’s objectives are to be accomplished;
  3. keep the client reasonably informed about the status of the matter;
  4. promptly comply with reasonable requests for information; and
  5. consult with the client about any relevant limitation on the lawyer’s conduct when the lawyer knows that the client expects assistance not permitted by the Rules of Professional Conduct or other law.

Because the duty to communicate is so important for lawyers, a “failure to communicate” can have grave consequences.  Indeed, a large percentage of USPTO Office of Enrollment and Discipline (OED) and State Bar disciplinary complaints, as well as claims for legal malpractice, are fundamentally the result of a breach of the ethical duty to communicate.  In OED disciplinary matters, legions of cases exist arising from the failure to communicate.

For example, in In re Shaffer, No. D2014-18 (discussed in our post click here), a trademark attorney was suspended by the USPTO for failing to inform his clients about important correspondence from the Office and allowed trademark applications to go abandoned without client consent. The attorney also failed to respond to client communications regarding the status of the trademark applications.

In another OED disciplinary matter, the USPTO Director issued an Order suspending Seattle, Washington-based patent and trademark attorney for allowing multiple patent and trademark applications to go abandoned without client knowledge or consent.  In re Nam D. Dao, No. D2015-23 (discussed in our post click here). In one case, the attorney failed to respond to an Office Action in a client’s patent application.  The application went abandoned without the client’s knowledge or consent.  When the client asked about the status of the application, the attorney advised the client against filing an appeal and failed to reveal to the client the fact that the client’s patent application was abandoned.

In the malpractice context, a failure to communicate was at the heart of Protostorm LLC et al. v. Antonelli Terry Stout & Kraus LLP, No. 1:08-cv-00931 (E.D.N.Y. June 5, 2015) (discussed in our post click here).  In this action, an IP law firm with a pending international application ceased work for its client because of unpaid legal fees.  The law firm, however, failed to communicate this fact to the client, which believed all was well with the patent application work.  No communications took place between the law firm and its client for several years.  After the client learned of what it believed was an infringement, the law firm advised the client that it had not filed the client’s application in the USPTO.  End result—a jury entered judgment for the former client for $8 million, and the IP firm went out of business.

paper filePaper Is A Lawyer’s Best Friend

Clients do not like to be ignored.  Whether it is a realistic expectation or not, most clients believe that they are the attorney’s only client and they wish to be treated accordingly. A lawyer’s failure to timely and regularly communicate can, at the very least, lead to client frustration, distrust, and hard feelings.  Especially now in the day of instant communications, the time lapse between when a client sends an email about their case and when they expect a response from their counsel has decreased accordingly.

In nearly every bar disciplinary investigation in which I have been involved, client communications have been critical evidence.  The paper trail in many cases is the most powerful evidence to rebut a client’s claim of attorney malfeasance.  The absence of a paper record can make establishing a defense much more difficult, turning the case into a match of “he said, she said,” with “ties” normally going to the client.

In light of these considerations, IP lawyers and their firms should consider instituting systematic processes and controls to ensure that client messages are responded to promptly and that client are kept well-informed of developments in the representation.  This should involve maintaining these communications in writing to ensure that if a client complains about a non-responsive lawyer, the lawyer has a “paper trail” to rebut a charge of failure to communicate.

great wallPractice Defensive Lawyering

Doctors practice defensive medicine.  In light of today’s climate, lawyers must practice defensive lawyering.  This is an unfortunate necessity.  But if things go wrong during a representation, counsel and the law firm employing counsel had better take steps to ensure that they can defend their actions or inactions to a judge, a jury, or disciplinary counsel.

Some suggestions for helping to make sure that a client file is adequately “papered” include:

  • Ensure a signed written engagement agreement is in place. The engagement agreement should define the scope of the representation and make clear the basis for determining the fee.  The engagement agreement should also define the client’s goals and expectations for the representation.
  • Copy all letters to the client. By sending clients copies of all correspondence that pertains to their case, clients can be satisfied that their lawyer is attending to their case. This procedure also eliminates possible future questions as to whether or not the client was informed of crucial case activity.
  • Contact the client periodically even if it is to report that “nothing is happening.” In patent prosecution, for example, it is not uncommon for months to go by without action from the USPTO.  A simple report, in writing, about the status may assuage client concerns and reminds them that they are important to you.
  • Return all telephone calls and respond to all e-mail from the client. A breakdown in communications as the result of a lost or forgotten e-mail or an unreturned telephone call can be the beginning of irreparable loss of client trust.
  • If you cannot substantively respond promptly, at least advise the client that you got their message and that you will endeavor to respond as soon as possible. Many clients will be understanding and appreciative of the acknowledgment of their message.
  • Provide the client with an alternative attorney contact as a “back-up” who can at least hold the client over until the primary attorney is able to respond.
  • Train your staff to ensure that all client communications are timely reported to you. This is especially critical if the responsible attorney anticipates being out of the office for an extended period of time.
  • Keep copies of all client communications.
  • Take detailed notes of all oral communications with the client, including the date, time, and participants.

Managing Client Risks And Expectations With Regular Communications

The amount of communication required by the rules of ethics cannot be measured objectively.  What is significant to note, however, is that the ethics rules focus on ensuring that the client participates in the means and strategies to be used during the representation to accomplish the goals of the representation.

This makes communication between the attorney and client far more important because the client is to be consulted with and given the appropriate information to assist the client in helping determine the means and strategies that will be used during the representation.  Such communications in real-time also will reduce the likelihood that the client or disciplinary counsel can advance a meritorious claim predicated on an alleged failure to communicate.

 

2 Comments on ““What We’ve Got Here Is Failure To Communicate”  – Preventing The Most Common Cause For Attorney Discipline And Malpractice”

  1. Michael –

    Thanks for your informative blog post of September 21. Another disciplinary order that emphasizes the criticality of client communication in the patent prosecution context is In re Hultquist D2014-23. http://e-foia.uspto.gov/Foia/RetrievePdf?system=OED&flNm=0790_DIS_2014-12-09

    The disciplinary order noted that Hultquist failed to communicate with his client before intentionally filing a nonprovisional patent application and a PCT application without claiming priority to the provisional application and outside the 12 month deadline for filing. The respondent represented that he proceeded with the filing of the nonprovisional application and PCT application without claiming priority to the provisional application in good faith, and that he believed he had the client’s authority to act with the client’s best interest, but his conduct was found to have violated 37 C.F.R. §§ 10.84(a)(I), (a)(2), and (a)(3) of the USPTO Code of Professional
    Responsibility.

    1. Thanks for the comment. This is another excellent example of how critically important it is to have well-documented client communications especially in the practice of IP prosecution, which as you know is very document intensive.

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