My friend Mary Adams of the Smarter Companies blog posted a brief article about Atul Gawande’s recent book The Checklist Manifesto. I agree with Mary that checklists can be a powerful way to improve the work product quality of experts, and wanted to expand on her discussion as they relate to intellectual property, in particular patents. Also, I think that corporate managers who rely on the expertise of their company’s patent lawyers can gain insights into the quality of their team’s work product, even when they do not themselves seemingly hold the requisite skills to make such assessments just by starting a conversation about checklists.
MY CHECKLIST STORY
I read Dr. Gawande’s original New Yorker article that formed the basis for the book at the same time I a good friend of mine–with whom I practiced law at a prestigious IP boutique–lost her corporate job in about December 2007. While there were many reasons why she was let go, the growing economic crisis and her high salary being major factors, my friend was open to the fact that the head of the patent department and she clashed repeatedly about about her view that the patent group needed to establish processes and procedures to ensure that the patent work product our group pushed out was not flawed. One way my friend suggested to do this was to have checklists, which she and I had used at the law firm where we had been trained. From the way we were trained, it seemed so obvious that the patent department should follow established procedures, but her boss disagreed vehemently and even seemed offended that she would suggest that he and his team could not do their jobs without checklists.
My friend’s boss proved the point made in Dr. Gawande’s writings that knowledge workers often think they are “too important” for something as mundane as checklists. To this end, the department head rejected my friend’s suggestion, saying “it is the attorneys’ responsibility to make sure they are doing their jobs right.” This was magical thinking: without proper training and/or proper procedural safeguards, no attorney can do his or her job correctly. Speaking for my friend, she certainly possessed a high level of training after working for many years at a prestigious law firm, and yet she knew with virtual certainty that mistakes were being made by her and her support staff on a regular basis. Put simply, there is far too much minutiae in patent practice for anyone to keep up with in the absence of a checklist. And, since my friend’s lawyer colleagues possessed much less training than she did, one can come to their own conclusions about whether mistakes were made throughout the department.
So the question is why would a highly skilled and well-compensated person–such as the department head of a major corporation–push so hard against having a checklist? The answer is pretty clear: transparency and accountability.
WHY CHECKLISTS MATTER IN CORPORATE PATENT PRACTICE
First, a checklist presents for all to see what is required to do their job correctly; in other words, it opens up the “black box” of patents to those who normally are not exposed to the details. Putting down the tasks required to complete a job reveals that what we patent experts do is, in large part, not rocket science. In truth, most of the tasks that patent attorneys do on a daily basis are highly routine and can be accomplished by people who are less highly trained and paid far less than we normally are. But, by keeping the specific aspects of our tasks opaque to others, patent attorneys are able to make others think there is no way that others can handle the job. This is a classic example of the corporate survival strategy of “knowledge is power.”
Second, checklists make us accountable for our actions (or lack thereof). When something is written down a task that must be completed to ensure that a valid and enforceable patent is obtained, the failure to do so is illuminated for all to see–even to those who otherwise would have no clue about what constitutes “quality work” in the patent context. Interestingly, there was no push back from my friend’s law firm’s partners–of whom I was one–when we prepared checklists for the attorneys and staff to follow. Indeed, such checklists were implicitly required under the terms of our malpractice insurance. I went to bed many nights as a partner wondering whether a mistake by me or someone else in the firm that day could result in my losing a significant part of my income–which is quite a bit of accountability that made me adhere closely to the relevant checklists, and I know my friend felt the same was.
HOW CHECKLISTS CAN PROVIDE INSIGHTS FOR MANAGERS INTO THE QUALITY OF THEIR PATENTS
For those managers who have wondered whether patent matters are being handled competently by their in-house legal staff, the presence or absence of checklists in their own corporate departments can provide relevant insight into the quality of patents coming out of their organizations. If you ask your IP department head whether his or her group operates using checklists and the response is “no, we do not need them,” you can be reasonably assured that mistakes are happening on a regular basis. As with the doctors and pilots detailed by Dr. Gawande, there are just too many tasks for an patent specialist to remember, where the absence of any of them could have highly detrimental consequences to the patent owner.
Significantly, these mistakes, which usually amount to errors or omissions of routine administrative tasks, can result in your company’s patent rights being negatively affected in at least the following ways:
- Reducing the apparent external value of your patents for licensing or sale: Many mistakes are readily apparent to the trained eye. Like a luxury car with a missing door, a patent with visible defect in your patents may substantially reduce another’s perception of value. The potential licensee or buyer may substantially discount the offering price or pass altogether.
- Providing competitors with the ability to knock-off the product or technology covered by y0ur patent: Your competitors cannot incur liability for infringing an invalid or unenforceable patent.
- Substantially increase the cost of enforcing your patents: Even minor mistakes can provide fodder for litigation attorneys and each of such arguments can cost tens of thousands of dollars to defend against.
At a minimum, avoidable mistakes are just that–avoidable. There is no reason for a corporate leader to accept sub-par patent efforts, especially given the money most companies pay for patent counsel. To the extent that such mistakes can be mitigated or eliminated through use of simple checklists, business managers should make sure their patent teams are willing to consider embracing this simple solution. This is not to say the absence of a checklist procedure in your patent group means that your company’s patents are not quality assets. However, if your patent team does not follow checklists, you should be prepared to drill down to discover the reasons why those responsible for generating your company’s patent assets do not find them to be necessary.
photo: Flickr/Xtreme Xhibits