Patent Docketing: Everything You Need to Know
Patent docketing is a method or system for managing the patent application process. 7 min read
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.
Patent Docketing and Trust Accounts
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 requires several other documents, including forms and drawings. Patent attorneys also have to keep track of deadlines 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 lengthy 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.
It is vital that each patent agent or attorney keep a separate account strictly for holding client retainers, or deposits, that have not yet been earned by the services rendered. This must not be used for any other purpose. This client trust account cannot be used to co-mingle retainers with other business funds. Keeping a separate account is not optional.
Patent attorneys and agents will find out that if they don't get paid up front for their services — an arrangement that is referred to as accepting a retainer — they will likely need to spend a lot of time and effort keeping after their clients in the collections process.
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 so they can check that both are consistent with one another. In this case, two docketers would be employed to enter information into the system and cross-check one another.
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 as to prevent malpractice suits in the future if the patent application is rejected by the USPTO.
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.
Minimizing the amount of manual data entry that is needed by patent agents and attorneys can also serve to minimize the expense of maintaining client portfolios. There are several ways that docketing software and systems can assist with this.
- Electronic docketing platforms offer centralized data access, which allows patent agents and attorneys to see the whole patent portfolio. This may include prior patents, trademarks, copyrights, any related lawsuits, and the connections between them.
- Docketing platforms provide standardization between policies and workflow stages. This allows for greater consistency and efficiency, focusing on the needs of each client. The platforms are regularly updated as laws change globally.
- Electronic data on intellectual property can improve the quality of the data because it allows users to fix errors in large portfolios of patents. Patent attorneys and agents can download all prosecution data from the USPTO as well as other patent offices. Anyone with access to this information has the ability to eliminate errors and improve the formatting of each record.
- Patent attorneys and agents often find it challenging to create reports and access the information needed for presentations. Many docketing software systems allow advanced reporting on intellectual property issues, along with better-quality data, that can be accessed from more than one source, in different formats.
- Docketing software offers flexibility when it comes to best practices. With this specialized software, firms aren't restricted to pre-defined, rigid processes that may have been designed with other uses and applications in mind.
- Along with reporting capabilities, robust docketing software can provide the ability to analyze the patent portfolio as well as creating and managing it.
The amount of information that is kept by different organizations can vary. The information provided on patent applications, such as dates, fees, licensing royalties, and other issues, needs to be kept in an organized, accessible fashion. Many businesses, particularly those who work internationally, can face difficulties in knowing where to file this information and how much information to include in the first place.
Docketing is one of the most important facets of managing intellectual property. Therefore, organizations need to maintain a top-notch docket management system. Otherwise, the expenses of creating and maintaining patent records can skyrocket. Docketing tools efficiently keep track of fees, payments for applications, and deadlines. They even send reminders to all involved parties when needed.
Yet, one more reason to use an electronic docketing system instead of continuing to enter and track information manually is to prepare for the future of intellectual property protection management.
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 small. So, for law firms operating in this area, a docketing system is one of their most important features.
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 are 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 is 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.
Next, the docketer will scan all copies of the application, including other forms and drawings. As additional documents come in, the docketer 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, and so on.
Protecting Intellectual Property
The patent process is intended to protect intellectual property, which is very important for encouraging creativity, innovation, and invention. Without it, companies have a difficult time being competitive in their market. Intellectual property is also necessary for economic growth and the creation of jobs. It is used in many facets of business.
In protecting intellectual property, it is necessary to manage the portfolio of patents and patent applications with the least expense possible. Therefore, a company needs to keep many things in mind while managing this portfolio. These include:
- All costs that are incurred while managing and prosecuting the portfolio of patents.
- All patents' commercial value. These patents may guarantee an exclusive license to products and inventions to individual people or companies so that competitors cannot use them for their own commercial use. Patents that have no commercial value can be dropped, which saves on expenses.
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 into the system as they see fit. Other programs calculate the due dates for docketers so that they won't have to manually do so. Some systems have audit logs to identify when the portfolio was edited. It is important for patent law firms to research the different software that is available and choose the option that is right for them.
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, Menlo Ventures, and Airbnb.