The LEDES Oversight Committee Board has scheduled our annual members meeting for 11:00 a.m. Eastern on Tuesday, 31 January 2023. The meeting will be held via webinar only and registration is required. The meeting agenda includes reports from the Board and subcommittee heads and should run between 60 and 90 minutes. Several current projects are nearing completion, which means that the subcommittee reports will be informative. Click here to register for the meeting.
The LEDES Oversight Committee IP Subcommittee has proposed new UTBMS codes for Patent Prosecution matters, which have been posted for public comment. Please provide feedback from your review of the proposed changes here. The public comment period will close on July 25, 2022.
A copy of the proposed codes is available here: IP-UTBMS-Codes-Update-May-2022-Public-Comment.pdf
Flaws in the existing set of codes–that this set intends to correct—include:
- Assessment phase codes lifted from the UTBMS litigation set and not relevant to Patent Prosecution
- Unnecessary categories for the various application types, which are more appropriately a project-level designation and not task, and that do not render useful data in the context of a single patent application as it says nothing about the timekeeper’s work on the application.
While there are already UTBMS codes for various types of IP (e.g., Patents and Trademarks) and non-IP work (e.g., Litigation, etc.), the Subcommittee reviewed the UTBMS codes for Patent Prosecution work only. As a result, IP activities such as General Advice and Portfolio Assessment will be handled in future code set proposals.
In the proposed code set, the phases of Patent Prosecution are identified as:
- (Pre-Application) Invention Review & Filing Strategy
- Initial Application and Supplements
- Application Amendment (Corrections or Restrictions)
- (Express) Abandonment
- Post-Issuance Maintenance and Re-Issue
The new code set is based on the phases of Patent Prosecution and not the attributes of a patent application. Therefore, the following attributes of a patent application should be captured separately from timecards and timekeeper narratives:
- Application Type
- Subject matter of filing
Validating the New Codes
One of the benefits of the new code set is the potential to validate each code by looking at document activity at the Patent and Trademark Offices. The following section provides an example of how the validation can work.
Proposed USPTO PAIR Validation
One of the main purposes of our code changes is to align them more closely with the USPTO’s PAIR activity descriptors. This will help vendors provide services that were not possible with previous LEDES code sets. For applicants, the vendors can provide a service that flags invoice line items that were invoiced but do not appear to have been performed. For law firms, vendors can provide a service that identifies activity that either was or should have been performed but was not invoiced.
For example, if an invoice contains a line item for preparation and filing a PCT application, the vendor can check PAIR to ensure that an RO/101 was filed and flag the line item if not. Similarly, if a response to an office action was due in a given month, but the response does not appear in the invoice for that month, the vendor can flag the item for the law firm to determine why it was not invoiced.
Since there are over 1,000 PAIR activity descriptors, it was not possible to map our code set directly to the PAIR activity. Instead, we generalized the PAIR activity into categories and created a code for each category. In this document, we list our suggestions of what PAIR activity can be used to validate each invoice line item, however, vendors may choose to add or remove PAIR activity to our suggested list for each category. Because there isn’t a direct mapping between PAIR activity and LEDES codes, it will be impossible to validate line items with complete certainty. However, a vendor can flag certain line items as “suspect” if one of the suggested correlated activities does not appear in PAIR.
To conserve the size of the code set, we rely on the vendors’ ability to identify certain characteristics of each case to generate summary reports. For example, we do not have separate codes for the type of case such as PCT, re-exam, trademark or design application. We rely on the vendors being able to pull that information from the applicant’s IP management system to be able to summarize, for example, all the line items for responses to office actions for design applications, utility applications and re-exams separately.
Recognizing the global nature of legal ebilling, the LEDES Oversight Committee will shortly have available a version of the UTBMS code sets in simplified Chinese. The project includes a natural explanation of the different legal processes included within the code definitions so that they are more easily understood in jurisdictions outside of the United States. As soon as this first set is approved, we will quickly move to obtain translations into traditional Spanish, Arabic, traditional Portuguese, Russian, Japanese, German, French and Italian.
Look for this new information on UTBMS.com in the coming months.
This is the most expensive project undertaken in the organization’s history. Unlike other organizations, the LEDES Oversight Committee does not have vendor or law department sponsors that underwrite our expenses, our revenue is derived solely from annual member dues, ($95 USD/year). To support this project, consider joining the LEDES Oversight Committee.
In 2020 the LEDES Oversight Committee is focusing on usability. In this regard, we are working toward releasing versions of the UTBMS code sets better suited for use in non-US legal proceedings, meaning that we want to create versions containing descriptive language as opposed to using US-oriented legal procedural terms. Once this is complete, we will then translate the UTBMS documents into simplified Chinese, traditional Spanish, Arabic, traditional Portuguese, Russian, Japanese, German, French and Italian.
This project is being led by Director Jim Hannigan and is expected to take a year to complete. One hurdle in this project is that many code sets were ratified by organizations other than the LEDES Oversight Committee, and we need their approval to move ahead with altering their original material.
Our intention is to hire a legal translation company to assist with the translation. A member law firm has already agreed to help approve the Chinese translations, to ensure everything makes sense before it is published. Can you help us? If so, please contact us using this link.
A new book on using the Mergers and Acquisitions Codes is now available. Authored by Aileen Leventon and Jenny Ann Horst-Martz, who led the effort to create the M&A codes, this modestly priced resource illustrates how the codes can be used to help price or evaluate fees and value of a matter, identify where you are in the matter/plan budget, identify out-of scope work that may need to be addressed and enable corrective action as needed to meet deadlines and budgets. More information on the book can be found here.
It is our understanding that as the judiciaries of England and Wales move ahead with the electronic form bill of costs, it is no longer required that attorneys use the J-Code task and activity codes when recording their time or in the new model form bill-of-costs itself (the nBOC). HOWEVER attorneys are required to use the hierarchy established in the J-Codes (in other words, use the J-Code task and activity code headings) in the nBOC, or use an alternate time categorization system for litigation in England and Wales in the nBOC that is permissible by the court, in the same way as the J-Codes are and that it is at least as good as the J-Codes. The J-Codes are inherently permissible, being drafted by the judiciaries own Hutton Committee in collaboration with the LOC and authorized by three leading judges.
While firms can establish their own code numbering schema using the J-Code hierarchy, THEY MUST ALSO provide a worksheet in the electronic form bill of costs that translates the codes used into the headings.
The LEDES Oversight Committee recommends that firms simply use the J-Codes as elaborated here, as most firms will be familiar with the phases and tasks and also using UTBMS codes when recording their time.
More on the timescale for mandatory use of the nBOC: Our last information is that the usage of the nBOC was to become mandatory at the beginning of October 2017 and it will need to be used for all work done after that date. However, it is also understood that the Ministry of Justice (MoJ) have advised it to become mandatory beginning 06 April 2018 (to allow for the mandatory use of the nBOC in county courts as well as high court). Given this, we advise firms to check for themselves on the go-live ‘mandatory use of the nBOC’ date.
Irrespective of the actual go-live date of the nBOC, it is going to happen soon. It would be prudent for law firms to consider implementing the J-Codes or an alternative but equal system as soon as possible, so that time is recorded using appropriate task and activity codes, which will in turn enable the easier production of the nBOC at the close of the case when it will be required (assuming of course, the case is won). This will then wield the advantages of the nBOC in terms of time and cost savings in its production.
Law firms are encouraged to find out more about the new model form bill of costs for themselves. Please visit the judiciaries website for official information before making any decisions.
LEDES Oversight Committee Standards Board Member David Nelson reports:
For all law firms that conduct civil litigation in England and Wales, Lord Justice Jackson delivered a keynote speech at the Law Society’s Civil Litigation conference yesterday (Thu 21st April 2016) regarding the new Bill of Costs and the J-Codes. The text of Lord Justice Jackson’s speech is available here: Jackson talk on new bill of costs.21.4.16
Background for your information:
As you may be aware, the judiciary in England and Wales asked Lord Justice Jackson to conduct a review of the way costs are presented to and assessed by the courts. There are often difficulties for law firms to get the right funding for cases and need to bring in a Costs Management firm to help them. It is hoped this review will help make it easier for the law firms to manage their court costs. This was known as the Jackson Review of Civil Litigation Costs in England and Wales, simply referred to as the ‘Jackson Review’.
Several recommendations were made by Jackson LJ in his final report in the area of the inter-parte Bill-of-Costs, with the aim of reducing the preparation lead-times involved in producing the bill and improving the assessment of it (and reducing the time it takes to assess).
A committee was set-up to work on realising these recommendations, now known as the Hutton Committee – it is chaired by Alex Hutton QC and its members consist of representatives from a broad section of the legal industry, including Costs’ Lawyers, a Costs’ Judge; Legal Firms and company directors, and a representative from the ACL. The LOC participated by virtue of having David Nelson (LOC standards director) serving as the project coordinator on the Committee.
The committee delivered two work products – 1: the J-Codes and 2: the new model form Bill-of-Costs (for inter-parte costs to be presented to the court at the conclusion of the case). The J-Codes were ratified by the LOC in September 2014 and are a valid UTBMS standard. They can be used for eBilling if the client requires them and the vendor has them configured (the LOC hopes that they have by now). The new Bill-of-Costs is currently under voluntary pilot in the SCCO (Senior Courts Costs’ Office) until October 2016.
Much has appeared in the legal press about both the J-Codes and the new Bill-of-Costs, and there has been controversy which is too much to cover in this announcement.
The important take-away is that the new Bill-of-Costs is on the horizon, so law firms in England and Wales need to review it accordingly and consider how and when to start using it. Reviewing LJ Jackson’s speech may help in this decision making process.
The LEDES Oversight Committee is pleased to announce the ratification of a new Mergers and Acquisitions UTBMS code set.
The new code set was originally proposed by a task force on legal project management within the ABA M&A Committee in 2015.
The final code set ratified by the Board of the LEDES Oversight Committee in February 2016 represents a joint effort between the ABA M&A task force and the LOC M&A UTBMS Standards Development Subcommittee and includes input from law firms, corporate legal departments, legal technology vendors, and consulting firms around the world.
The codes are available here.
The final version of the ratified UTBMS standard for Governance Risk & Compliance is now available. See here for more information.
The Jackson Steering Committee has issued a press release on the J-Codes for England and Wales. Jackson-Steering-Committee-J-Code-Press-Release-23-Sep-2014.pdf