Unauthorized Practice of Law and an Evolving Legal Landscape

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By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (originally posted here on Oct. 31, 2018)

Numerous third-party legal software providers have been recently accused of unauthorized practice of law (UPL). In 2011, LegalZoom, a trailblazer in personalized online legal solutions and documents for consumers, was entangled in a class action lawsuit alleging the service provider was engaged in UPL, which eventually led to a settlement. Some, including the North Carolina State Bar, have argued that by providing guidance and reviewing documents, LegalZoom serves as more of a legal advisor than a simple document provider, thus creating a UPL issue. In 2016, however, the North Carolina legislature ruled that the practice of law does not include software that generates legal documents based on a user’s response to a legal questionnaire. DoNotPay, a digital platform used for submitting small claims that has taken the legal industry by storm, has been accused by many of violating the UPL rule. However, many have argued that the UPL rule is simply a well-disguised barrier or tactic utilized to protect a traditionally risk-averse legal sector from innovative technology and other market disruptions.

We are already seeing focussed interest and new legislation aimed at addressing the high volume and precedence of UPL issues within non-law-firm legal services providers. In 2007, the United Kingdom (U.K.) liberalized their legal services market by passing the Legal Services Act. Practicing as part of an alternative business structure (ABS), nonlawyers are permitted to hold ownership interest and participate in the delivery of legal services. In 2014, the ABA Commission on the Future of Legal Services was created and tasked with examining how legal services are delivered and holding open forums for how to alleviate UPL issues in third-party services. In 2016, the ABA Commission initiated a debate on whether to request that the ABA House of Delegates passes a resolution encouraging state courts to liberalize ethical rules forbidding nonlawyer participation in legal services. However, the bar did not agree with changing regulation, which many critics, including academics, believe is because of “lawyer exceptionalism” and “lawyer-centric” thinking that may be eroding the core values of the profession. [Judith A. McMurrow, UK Alternative Business Structures for Legal Practice: Emerging Models and Lessons for the US, 47 Geo. J. Int’l Law 665, 673 (2016)].

“barring business from engaging in the practice of law severely limits innovative change from occurring in the industry.”

More recently, the California State Bar has implemented a Special Task Force, which will have a primary focus to investigate whether the current rules of UPL should be modified. The California Task Force was motivated by arguments that UPL issues have a strong influence on the structure of the legal landscape, unfairly limiting the opportunity and incentive for nonlawyer entrepreneurs to enter the legal market. Additionally, some argued that barring business from engaging in the practice of law severely limits innovative change from occurring in the industry.

In the current regime, attorneys must remain vigilant of the lingering liability of unintentionally assisting in UPL.The Model Rules on UPL mentions that “a lawyer shall not aid a non lawyer in the unauthorized practice of law.” [Model Rules 5.5(b)]. While specific laws for UPL vary by state, the definition may be generalized as illegally providing legal services or advice, such as preparing any document to affect or secure legal rights for a specific person or entity, negotiating legal rights or responsibilities, and expressing legal opinions.

Generally, nonlawyers are allowed to perform legal tasks, such as document creation, as long as the lawyer assigning the task is ultimately responsible for the work product (see our previous post on attorney oversight with third-party services) [ABA Standing Committee on Ethics and Professional Responsibility Formal Ethics Opinion 08–451]. Likewise, document automation software, for example, may perform certain legal tasks, given that the outsourcing lawyer is responsible for the work. More specifically, outsourcing attorneys must have “in effect measures giving reasonable assurance that a non-practitioners compatible conduct is compatible with the professional obligations of the practitioner.” [37 C.F.R. § 11.503(a)].

In the context of patent drafting, unregistered individuals (i.e., those who have not passed the patent bar or met other requirements) are not authorized to practice before the United States Patent Trademark Office (USPTO), including the representation, preparation, prosecution, and advisement of patent applications. Registered individuals include only patent attorneys and patent agents recognized to practice before the USPTO. [37 C.F.R. §11.14(b)]. According to the USPTO, there is a supervisory liability for UPL when outsourcing legal work. [C.F.R. § 11.503(a)]. Patent practitioners are charged with liability of a non-lawyer’s actions if they “know of the [unethical] conduct at a time when its consequences can be avoided or mitigated but fails to take reasonable remedial action.” [37 C.F.R. § 11.503(c)(2)].

Outsourcing patent attorneys should proceed with caution and remain overly and properly informed when selecting a third-party outsourcing relationship and throughout the entire outsourcing process. Maintaining an appropriate amount of supervision and control throughout the process is important to mitigate the risk of assisting in the illegal practice of law. Specifio, for example, provides the first and only fully-automated patent drafting service that begins and ends with the attorney, thus avoiding UPL by design.

“UPL changes will favor the public sector by improving access to justice for poor and middle income populations that may not be able to afford adequate legal assistance and guidance.”

The legal sector in many jurisdictions seems to be on the right track towards modernization and liberalization. By expanding the participation of legal services to nonlawyers, the U.K. has taken the global lead in opening up an exclusive industry to a plethora of productized legal solutions that will benefit all parties. In the United States, task forces have already begun investigating potential UPL rule changes and improvements to legal service delivery. In addition to advancing the legal sector, UPL changes will favor the public sector by improving access to justice for poor and middle income populations that may not be able to afford adequate legal assistance and guidance. The future of law is bright, but that may depend in large part on changes to UPL rules.

For more information on Specifio’s automated patent drafting service, visit our website or email us at info@specif.io.

DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.


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Attorney Supervision and Legal Document Automation

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By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (originally posted here on Oct. 12, 2018)

It is crucial for outsourcing attorneys to competently review the work product generated by any third-party service. This, of course, is also true when the third-party service leverages automation to complete the outsourced work. Below, we discuss the necessary steps for assessing this ethical obligation in the context of third-party legal document automation services.

The analysis can be broken down into two steps. For the first step, the lawyer must ensure that the third-party service complies with the ethical obligations that govern human lawyers. [See our previous posts, here and here]. Just how attorneys must ensure that ethical violations, such as breach of client confidentiality and conflicts of interest, do not occur with non-lawyer employees or independent contractors, they must do the same with third-party services, including automated services.

The main concern with outsourcing is “to ensure that tasks are delegated to individuals who are competent to perform them.”

The second step in assessing competent attorney oversight involves evaluating the competency of the third-party technology. In other words, is the work product of the third-party service comparable to that of a competent human lawyer?

Attorneys are generally allowed to contract work to third parties “provided the attorney is competent to review the work [and] remains ultimately responsible for the final work product,” among other guidelines. [Los Angeles County Bar Association Professional Responsibility and Ethics Committee Opinion No. 518]. Stressing the importance of competency, the ABA says, “the lawyer who is responsible to the client satisfies her obligation to render legal services competently.” [ABA Standing Committee on Ethics and Professional Responsibility, Formal Opinion 08–451]. In the case of patent drafting, for example, it would be understandable to question competency where an attorney assigns the task of drafting a patent application to an associate lacking the necessary training or technical background. The main concern with outsourcing is “to ensure that tasks are delegated to individuals who are competent to perform them.” [Id.]. According to the Model Rules on the client-lawyer relationship, the outsourcing lawyer “must reasonably believe that the other lawyers’ services will contribute to the competent and ethical representation of the client.” [Model Rules 1.1].

Applying the above reasoning to outsourced services rooted in technology, such as document automation, attorneys must ensure that the output of the technology reflects a certain level of competency. That is, one ensuring the final work product embodies the same competencies required of the attorney responsible to the client.

Specifio’s fully-automated patent drafting service begins and ends with the attorney (or patent agent). Attorney-written patent claims (2–3 pages) are converted into a first-draft patent application with basic figures (20–30 pages). However, by clearly presenting these auto-generated patent applications as strictly first drafts (as opposed to ready-to-file), Specifio sets the appropriate expectation to encourage the level of attorney oversight that should exist with all legal document automation services.

For more information on Specifio’s automated patent drafting service, visit our website or email us at info@specif.io.

DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.


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Avoiding Conflicts of Interest When Leveraging Third-Party Legal Document Automation Providers

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By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (originally posted here on Oct. 1, 2018)

As outsourcing certain legal work to third-party service providers gains popularity within law firms, it is important for lawyers to fully understand the potential risks of conflicts of interest, as well as guidelines for avoiding these issues in the future.

There is always the potential for conflicts of interest and misuse of private information when legal work is outsourced to a third-party lawyer or law firm representing an opponent or competitor of the lawyer’s client. Likewise, there is also the risk of these issues when outsourcing work to non-attorney service providers, including automated services, which is the focus of this conversation. For example, a conflict may arise when two parties use the same document automation service and the system uses confidential information from one party to help complete the work product for the other party.

Attorneys cannot outsource their ethical obligations.

Similar to how an attorney must ensure there is no conflict of interest that would prevent representation, lawyers are responsible for confirming third-party services do not perform work in a way that creates a conflict. It is important to minimize the risk of conflicts by making a reasonable effort to learn about the service provider’s assurances. [ABA Standing Committee on Ethics and Professional Responsibility, Formal Opinion 08–451.] For example, the outsourcing lawyer should investigate the service’s procedures for managing and obviating conflicts.

There are a couple questions an attorney should ask prior to outsourcing work to a legal document automation company. What are the handling and storage procedures for client information? And are there any employees of the service provider that may have access to this information? If such access exists, there is a potential for conflicts and, in such cases, background checks, non-disclosure agreements, and other precautions may be advisable.

Various bar associations have concluded in their official opinions that:

“The attorney must also recognize that he or she could be held responsible for any conflict of interest that may be created by the hiring of [a third-party] Company and which could arise from relationships that Company develops during the attorney’s relationship with Company.” [Florida Bar Opinion 07–2 (2008); also see Los Angeles County Bar Association, Opinion 518 (2006).]

As document automation technology grows more prevalent and sophisticated in the legal sector, it is becoming more important for automation providers to develop their own set of high ethical standards around preventing conflicts. For a company that handles sensitive information, like patent applications, these standards are even more acute.

Full automation is among Specifio’s answers to avoiding potential conflicts and other ethical issues. Specifio’s fully-automated patent drafting service has no human intervention, meaning no person at Specifio is ever exposed to confidential information, preventing conflicts of interest from occurring at the human level. In addition, due to the fact that we do not train our machine learning models on confidential information or store information long-term, there is zero chance of one party’s confidential information being used in another party’s patent application.

Legal ethics guidelines are still catching up to today’s dynamic legal sector, which is rapidly evolving due to advancing technology. However, it is crucial that both the outsourcing lawyer and third-party service providers observe ethical guidelines that help protect confidential client information and avoid conflicts of interest issues.

For more information on Specifio’s automated patent drafting service, visit our website or email us at info@specif.io.

DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.


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Legal Document Automation and Client Confidentiality

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By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (originally posted here on Sept. 24, 2018)

Attorneys are increasingly adopting artificial intelligence to streamline the drafting process for various legal documents, but are they currently meeting the ethical guidelines for protecting private client information? Below, we discuss the role and ethical responsibility of attorneys using third party document automation services and recommended measures to protect confidential information.

The Model Rules of Professional Conduct 3.3 state that lawyers must make “reasonable efforts” to protect client information, which includes understanding the sensitivity of the information, potentiality of disclosure without employing additional measures, and cost of these measures. Lawyers are responsible for maintaining the confidentiality of the information to and from the document automation service. Hypertext Transfer Protocol Secure (HTTPS) and email with encrypted text or attachments are the two most secure methods for transferring information online.

The ethical obligations relating to lawyers outsourcing work to third party attorneys similarly applies to non-lawyers, such as machines. According to Model Rule 5.3, attorneys are responsible for ensuring that the ethical conduct of non-lawyers are identical to professional attorneys.

While reviewing written confidentiality agreements and security policies is recommended, the Model Rules make it clear it’s important lawyers understand what happens to confidential client data (1) when it is transmitted to a third party, (2) while the third party is in possession of the data, and (3) when the third party returns work product back to the lawyers.

Specifio is the first and only fully-automated patent drafting service. This means there is no human intervention, which addresses potential confidentiality and conflicts issues. In addition, all documents transmitted between the service and the user are password-encrypted.

At Specifio, we transparently address how information is processed and protected by the company. As outlined in our Terms of Service and Privacy Policy, Specifio does not store any confidential client information. Instead, confidential information is immediately and permanently deleted from the system after each application is processed.

In order to provide customer service and improve our technology, however, Specifio does keep metadata associated with the client information. The metadata includes a “content-stripped” version of the confidential information in which content words are replaced with nonspecific symbols, making the meaning of the text uninterpretable. These disguised content-stripped texts are only used to analyze document structure, word form, word count, and other metrics that are useful without knowing the underlying contents.

Below is an example of what content-stripped information may look like:

Original:

“The present disclosure relates to systems and methods for facilitating review of a confidential document by a non-privileged person by stripping away content and meaning from the document without human intervention such that only structural and/or grammatical information of the document are conveyed to the non-privileged person.”

Content-Stripped:

“The p0018 d0017 r0019s to systems and methods for f0000ing r0001 of a c0002 d0003 by a n0004 p0005 by s0006ing a0007 c0008 and m0009 from the d0003 without h0010 i0011 such that only 20012 and/or g0013 i0014 of the d0003 are c0015ed to the n0004 p0005.”

Finally, with no training on its machine-learning models on confidential information, there is never “cross pollination” between patent applications we generated. In other words, text from one auto-generated patent application will never appear in another auto-generated patent application.

For more information on Specifio’s automated patent drafting service, visit our website or email us at info@specif.io.

DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.


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How to Draft a Software Patent Application in 5 Hours (or Less)

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By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (originally posted here on Sept. 17, 2018)

Patent application drafting is an art form. Or at least parts of it are. Take claims for example. Some describe claims drafting as a cross between writing computer code and poetry. There’s certainly a significant aspect that is syntax driven, but the rest can be very nuanced being driven largely by creativity and judgment. A rule of thumb is that it takes around four years of apprenticeship for a practitioner to gain a solid command of claims drafting.

To craft commercially-valuable claims, the practitioner must have a firm grasp of the invention, requiring technical expertise in the area. But that’s not the end of it. Patent law is constantly evolving, so precedent is also a major factor in developing claims, which is where legal expertise then comes into play. The practitioner must have a sense for things like the client’s business and how the invention fits into their business strategy. There can be many other factors considered by the practitioner when writing claims.

The claims define the legal right being sought during prosecution and, as such, are by far the most important part of a patent application. Great claims, however, can fall flat if they are not sufficiently supported by the specification. MPEP 608 provides:

To obtain a valid patent, a patent application as filed must contain a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C. 112(a). The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent.

Section 112(a) states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

Not all, but much of the process for preparing a specification that meets the Section 112 standard is more mechanical-writing in nature and, therefore, is ripe for automation. Below, we’ve laid out the steps practitioners can follow to leverage Specifio’s automated patent drafting service to minimize drafting time without diluting quality or the unique impact skilled practitioners bring to the work product.

Step Zero: The Doc Plan

It all starts with a solid Doc Plan. This is what controls the appearance, content, and structure of the auto-drafts generated by Specifio. In addition to stylistic preferences, a practitioner will want to build in any contextual-but-non-invention-specific material. Traditionally, this might include template language and stock figures, which can all be incorporated into a Doc Plan. Once a Doc Plan is designed, it’s kind of like “set-it-and-forget-it.” So, this part doesn’t count toward the five hours.

Step One: The Pre-App

A pre-app is a technique for rapidly developing content for claims. It’s a way to outline an invention using claim-style language, but in a more intuitive and easy-to-follow format than starting with the claims themselves.

Here is a simple example for creating a pre-app covering a software-related invention:

First, identify the main thrust of the invention and write it out in this form:

Second, think of the main steps the software performs, and write them out like this:

Finally, flesh out the concepts in the IND lines and use indentation to keep track of dependency:

Step Two: The Claims

Once the pre-app is complete, it needs to be converted to normal claim format. Copy the PREAMBLE and IND lines to create the independent claim. Add numbers and preambles to the DEP lines to create the dependent claims. And you’re done with the claims!

Step Three: The Auto-Draft

This is the best part. Simply put the claims into a Microsoft Word document and send them to Specifio. In only a couple minutes, you’ll receive a first draft application complete with basic figures. Two or three pages of claims (almost) instantly becomes a 20–30 page first draft.

Step Four: Bolster and Finalize for Filing

Once the auto-generated first-draft patent application is received from Specifio, it’s time to add in descriptions of specific examples, flesh out key terms and concepts, and add in descriptions of any additional invention-specific figures. After that, the application should be done and ready to file.

For more information on Specifio’s automated patent drafting service, visit our website or email us at info@specif.io.

DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.


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