Patent Docketing – Mitigating risk through technology


Intellectual property is of global importance for fostering innovation and creativity, thus gaining competitive advantage in the market. Recent studies have shown that IP is a crucial factor for job creation and economic growth. The growing significance of IP is reflected in multiple uses of IP for business purposes. Intellectual Property Rights are not limited to patents but are also extended to trademarks, copyrights, trade secrets, and designs that are a part of the IP toolbox. Given the ever-growing importance of IP in the knowledge based economy, it is critical to understand the value of IP for commercial use. In the innovation-driven economy, the value of the company’s IP is the value of IP. Every entity now wants to build a patent portfolio that can be monetized and exploited in future. There is a need to manage the patent portfolio with minimum possible outlay. While managing the company’s patent portfolio, the company needs to keep in mind several things as mentioned under:

  1. Cost related to prosecuting and managing a patent portfolio
  2. Commercial value associated with the patents – patents which provide exclusivity to products, patents that can be licensed or block commercial activities of the competitors, patents that are of no value can be dropped

Patent Docketing

The patent portfolio can be managed through an automated patent docketing system. The patent application process is cumbersome and involves lot of paperwork. Therefore, the tool help law firms to docket hundreds of cases and track important documents along with timelines associated with the patent. There are many approval needed to obtain a patent, thus making it necessary to keep a track of filing deadlines, documents, forms, drawings, and other statements. Every patent application has certain due dates which if missed can result in abandonment/rejection of the application. However, some are recoverable but requires additional hours of work and extra cost associated for filing a patent application. It is also critical to label each document with the file number or name and place it in the correct file. This process also involves entering each document into the database so that the attorney can easily locate all documents in the file and view each deadline associated with patent filing process. This process will help in meeting deadlines for filing with the USPTO. To keep a track of hundreds of patent cases, many law firms employ in-house docketing specialists or outsource the patent docketing process to a leading firm specializing in docketing patent applications.

Importance of Patent Docketing System

Law firms deal with thousands of cases in a year and each patent application can take years through patent office for the grant of a patent. As the patent prosecution process starts, there are many deadlines, documents that are to be kept in the correct file so that they can be retrieved at a later stage. In the patent prosecution stage, a lot of paperwork is involved which can be reduced if the docketing personnel correctly label each document mentioning the file number and placing it in the correct part of the electronic patent file. The patent docketing process includes entering each patent document into a database so that the attorney can easily locate the documents and dates associated with each document. Additionally, the docketing system can alert the attorney for filing of patent application or other deadlines. The law firms also maintain a docket where the information is stored and alerts attorneys for any upcoming deadline. This process helps law firms not to miss any deadline related to patent application that can cause malpractice lawsuits and rejection of patent by the respective patent office. The docketing system can calculate due dates, track actions, audit logs, alerts while keeping track of all documents. Besides this, the platform is useful to customize dates, alerts or any document associated with the patent application in multiple countries.

Selecting Docketing Management System

There are several docketing platforms to help manage the running of any IP department and the docketing personnel involved in the IP process to perform their tasks efficiently and effectively. The growing importance of docketing platforms means that there is a need for better, powerful tools that can assist people who are directly or indirectly involved with the intellectual property matters. As IP needs and processes are unique, the enterprises or law firms should select the docketing tool based on the particular requirements and benchmark systems and tools against the competitors. Additionally, there are large entities that have a huge patent portfolio that might require different docketing systems and processes as compared to small firms that do not require significant investments and can be managed easily. Though, selecting the right docketing tool is a valuable exercise and involve company’s resources, time and cost, thus a proper due diligence is necessary to chose the best tool among the IP management system providers in the marketplace.

As IP professionals seek to improve efficiency and cost effectiveness, quality IP operations and docketing pose as a significant challenge for IP organizations. In a recent poll, more than 80% of the IP organizations see docketing as a significant challenge to their IP operations. These challenges manifest in a number of ways from poor quality of reports to lack of resources to manage the operations. However, these docketing challenges can be addressed through innovations that can improve how information, tasks, dates, and documents are stored, managed, and retrieved.

Minimize Manual Data Entry

In many law firms and IP organizations, docketing has been a labor intensive process that required the data to be stored and managed manually. In this process, the correspondences were received through email and a lot of human work was required to docket the patent applications. While the docketing process always require an in-house expert that minimizes the challenges related to data entry. The availability of electronic docketing platforms can further solve these challenges that reduce and eliminate data entry errors, for instance, many docketing tools now contain file wrapper tools that are able to download complete details including bibliographic data, prosecution transactions, and documents. Also, these tools can automatically download and docket IFW data. Some entities are also creating docketing hubs wherein counsel can submit documents and docket reports to centralized processing system. Then the hubs can easily extract data and documents and enter directly into clients’ docketing system. By leveraging these automated docketing platforms entities or law firms can reduce errors incurred in manual entry of deadlines and alerts when a critical date is approaching.

Centralized Data– The electronic docketing platforms provide visibility into entire patent family including the prior art and connections between patents, trademarks, and related litigation.

Standardization – The docketing platforms have defined standards and policies to maintain a consistent workflow and be client-centric in terms of workflow requests and are updated with global country laws.

Improve Data Quality – With electronic IP data, errors in large patent portfolios can be fixed. The prosecution data and full file wrapper can be easily be downloaded from USPTO and other patent offices. This helps in normalization, error cleansing along with format and tools to support the docketing process.

Reporting – IP docketing system continue to remain a challenge for many IP entities and law firms due to lack of ability to create reports and present information. To address the challenge, there are several docketing platforms that provide more advanced reporting and quality data that can be accessed from multiple sources in various formats.

Flexibility – The docketing tool should provide flexibility in terms of implementation of best practices rather than complying with rigid and predefined processes that are not even aligned with organization.

Management and PTO integration– The docketing software should be fully integrated with case files so that one can easily link from docket to case file and case file to docket.

Robust Analytics – The docketing system can create, manage, and analyze all aspects of patent portfolio and provide exclusive dashboard for access and retrieval information.

Many organizations keep a track of their patent applications such as dates, maintenance/annuity fees, licensing royalties to name a few. Businesses having international operations face multiple challenges such as where to file and how much to file in such jurisdictions and can be cumbersome task. As docketing is the most crucial function of intellectual property department, an excellent docketing management system is requisite for large organizations or law firms to reduce IP spending and act as virtual assistant to the department. The docketing tool can structure procedures such as keeps track of deadlines, outstanding payments for applications and annuities, enhance existing processes, and sends reminders to the IP team at a predefined schedule. Organizations that embrace electronic docketing systems will not only be able to better manage the documents but can utilize the system to full potential to organize information and IP records for future retrieval.

Article By: Effectual Knowledge Services , one of the leading Intellectual Property (IP) management advisory firm offering IP support solutions to Fortune 500 companies, law firms, research institutes and universities, and venture capital firms/PE firms. We partner with clients to design Intellectual Property solutions using out-of-the-box approach, solving critical problems, making informed decisions, and garnering enduring results. Our strength lies in providing innovative IP solutions performed by a specialized team of scientists, engineers, and patent agents. Along with these services, we also provide Intellectual Property Support Services (IPSS) such as proofreading, docketing, information disclosure statement, and patent term adjustment(PTA). With deep industry knowledge, superior IP expertise, innovative processes, and state-of-the-art technology, Effectual help patent owners, inventors, and licensees discover the inherent value and revenue potential associated with their intellectual assets.

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