What is Patent Docketing?

Patent docketing is a method or system for managing the patent application process. Docketing is an important tool for patent law firms, as it can be rather difficult to keep track of all patent applications for customers. In fact, most law firms hire docketing specialists to manage the patent docket system. Since each patent application can take up to several years, more and more patents are entered into the docketing system to better manage each one.

The patent application process is not as simple as one single document being filed with the United States Patent and Trademark Office (USPTO). The application itself includes several other documents, including forms and drawings as well as deadline dates and fees associated with the application.

Most law firms want to ensure that they are paid their fees upfront with regard to patents. Since patents are a length process, those employing the law firm may seek another route or change their mind, thus failing to pay the attorney for his or her work. Therefore, along with the patent application being input into the docketing system, each application will also include information about the client, the fees that were already paid from the client, and the client trust account number. Note that the client trust account is an account set up for the purpose of the holding the client’s fees that have yet to be earned by the attorney.

Insurance Requirements

Patent law firms are actually required by their insurance companies to use docketing systems to prevent malpractice suits when the law firm misses a filing date or causes a patent application to be rejected. While insurance requires this, it is safe to say that most patent law firms would likely use a docketing system regardless. Some insurance companies even require such firms to use two different docketing systems to ensure that both are consistent with one another. In this case, two docketers would be employed to enter information into the system to cross check one another.

Most, if not all, patent law firms are members of the National Association of Patent Practitioners (NAPP), which is a nonprofit trade association. NAPP supports its members by providing information via newsletters and emails regarding the patent industry. The forum itself is a way for patent law firms to refer one another or discuss important topics in the industry.

Docketing vs. Data Entry

Many people assume that the docketing system is merely data entry. Therefore, it can be hard for a law firm to find a qualified person to work on the patent docketing system. While a significant amount of data does in fact need to be input into the patent docketing system, the system itself can be incredibly complex in terms of the amount of information being kept and the number of patent applications being stored. For example, once information is entered into the system, it is up to the docketer to compute the due date manually and enter that date into the system.

Importance of Docketing

Docketing is one of the most important aspects of patent prosecution. Without it, people who employ qualified patent attorneys will likely miss deadlines, and ultimately fail to receive patent protection. The fee to reinstate a previously failed application (due to a missing deadline) is $1620 for larger companies and around half that for smaller entities. However, once the attorney misses the deadline, the likelihood that the client will continue working with him or her is very little. So, for law firms operating in this area, the docketing system is the most important feature.

Law firms should take other factors into consideration when maintaining each and every patent portfolio:

  • Law firms should ensure that all legal fees associated with prosecuting and managing the patent application is entered into all portfolios.
  • Law firms should be mindful of the commercial value of the invention itself. If there is a very high commercial value, the legal fees associated with the patent application can be higher.
  • Standardization is important so that law firms can maintain a consistent workflow and update each and every patent application when applicable.
  • Improving data quality of each patent portfolio is very important. Employing docketers ensures that there are no errors, all documents are properly stored, associated fees are entered, and due dates are properly entered so that patent attorneys can know when deadlines are nearing.
  • Flexibility in terms of the docketing system itself should be kept under consideration. Patent law firms should look for a docketing system that allows free text so that notes can be entered into each portfolio explaining where the application is in the process.

Patent Docketing Process

As previously noted, a great deal of paperwork is involved in the patent application process. Once a client has hired the law firm to prepare the patent application, a new portfolio should be entered into the docketing system. The docketer should ensure that the information should be detailed and specific. Therefore, the client’s name, contact information, invention, type of industry it serves, and other similar information is entered into the portfolio. Also to be included in the portfolio are the legal fees due, legal fees paid, client trust account number, and any other filing fees related to the application. The docketer will then scan all copies of the application, including other forms and drawings. As additional documents come in, the dockter will scan those forms and add it to the client’s portfolio. Depending on where the client is in the patent application process, certain deadline and due dates will be added in to ensure that the firm is well aware of pending deadlines, filing fees coming due, etc.

Choosing the Type of Patent Docket Software

There are many different types of software available to manage the patent docketing process. Some programs allow for free text so that docketers can enter any information in there as they see fit. Other programs calculate the due dates for docketers so that they won’t have to manually do so. Other systems have audit logs to identify when the portfolio was edited. It is important for patent law firms to keep in mind the different software out there and choose one that is right for them.

Engagement and Disengagement Letters

Most insurance carriers also require that patent law firms use engagement and disengagement letters. An engagement letter sets forth the agreed upon work to be conducted on behalf of the client. It will also establish the terms of payment and likely indicate what is due to the attorney in the event that the client terminates the work mid-way. The engagement letter need not be in a specific format, and it is entirely up to the law firm to decide how to format the letter and how specific to be. What’s most important is to have the letter signed by the client so to prevent malpractice suits in the future if the patent application is rejected by the USPTO. 

If you need help learning more about patent docketing, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.