Has your organization adopted an enterprise-wide Notice of Allowance (NOA) diligence program? More and more of our clients are and there are some very compelling reasons for you to consider it as well. We live in an environment where there is ever increasing pressure to reduce costs and improve quality. One way to align those two seemingly conflicting goals is to ensure you don’t pay for RCE’s, extensions of time or certificates of correction that are both embarrassing and costly. We must also examine the opportunity cost of a “re-do”. Fixing mistakes siphons off valuable billable hours. Here are some factors to consider when adopting a diligence program:
Adopting a consistent and well communicated approach across the firm is key to ensuring it is done correctly, every time. Guardrails must be put in place to verify a process is followed when the NOA comes in and well before payment of the issue fee. You want to avoid the ugly surprises mentioned above. Managing all the contingencies you can at the front end will significantly reduce risk across the organization and eliminates downstream work that often fails to get done at all. Perhaps the most attractive aspect of such a project is it will boost client and organizational confidence and send a message that you take great care to produce the highest quality work. Tip: Just like status checks, NOA diligence checks are not optional.
Improve the Quality of the Patent
Developing and implementing a checklist is critical to a robust diligence program. It must be used by every attorney, for every client, every time. It should be integrated into the file itself, creating a record just as you would with a filing or incoming correspondence. A solid checklist should cover things such as:
• Bibliographic details
• Terminal disclaimer needed/not
• References – are they all in the record
• Assignment/chain of title
• Annuity/Maintenance Fee Management going forward
Who Performs the Work
Most firms assign the work to a qualified and experienced IP paralegal, whose work is overseen by a registered practitioner. Most firms do a cost/benefit analysis around the program and determine how to get the work done at the highest quality and lowest cost. As mentioned previously, an important consideration is opportunity cost. You can free up your staff for more sophisticated work that is billed at higher rate.
When the Diligence Check is Conducted
The checklist should be performed immediately after receipt of the NOA. If an error is found, your field of options for correcting it is vastly improved when you have time on your side. Issue Fees should not be paid until the check has been performed. It is a best practice to docket the NOA diligence check with a hard and fast deadline as you would for any due date and actively chase it down if it isn’t performed. Suggestion: One month from receipt is adequate time to perform the work and offers plenty of time to correct any issues.
Firms should measure the results of the program periodically. Analyzing RCE, extension of time and certificate of correction costs as well as related time-spent and comparing that to the same fees in a future period is concrete. It proves the health and well-being of your program. What can’t be measured in exactly the same fashion is the boost in confidence your clients will feel. It should be communicated to them that you perform this work for all your clients, because it’s important and it matters. Finally, it infuses your organization with a message that you are a high performance and excellence driven team and that you’ll stop at nothing to please your clients.