What is IP Docketing? Everything You Need to Know
What is IP docketing? Prior to the software explosion, the management of dockets was done manually, using a diary.3 min read
2. Managing Patent Applications
3. Patent Application Process
4. Importance of Patent Docketing
5. Access to Pertinent Documents
6. Importance of IP Docketing
7. Docketing vs. Data Entry
What is IP docketing? Prior to the software explosion, the management of dockets was done manually, using a diary. This diary was in the form of a large hard-cover date book or giant wall calendar. Legal secretaries turned in docket slips so that statutory deadlines could be recorded on the diary or calendar used by the firm for tracking due dates.
Numerous Patent Applications
IP owners relied on law firms to meet these statutory deadlines; however, the tech boom in the 80s saw an increase in the number of patent applications being filed. Consequently, this gave rise to the desire to better manage the process. In statutory practices such as intellectual property, due dates are extremely important, hence the docket rules.
Missing a due date points to an inefficiently managed portfolio. The question has been asked time and again, “Who should manage due dates and what is the best way of going about it?" If due dates are the sole focus, it then follows that the strategic management of other intellectual expenses will suffer.
Managing Patent Applications
Patent docketing refers to a method or system used to manage patent application processes. Docketing is an important tool for law firms that handle patent applications since it is inherently difficult to organize the application process for numerous patents without a software package or system that automatically keeps track of the documents and deadlines involved.
Patent Application Process
Most large patent law firms have docketing specialists who manage the docketing process for patents. This is because such law firms usually handle a lot of patent applications at a time. It could take a number of years for patent applications to go through the USPO (U.S. Patent Office) before being awarded the patent. As patent applications go through approval processes (referred to as patent prosecution), it is important to keep track of the numerous statements, drawings, forms, documents, and filing deadlines .
Importance of Patent Docketing
Patent docketing makes sure that documents are properly labeled and filed (to enable easy retrieval) and that all deadlines are met. A great deal of paperwork is generated during the patent application process. When they get to a law firm, it is the job of the docketer to assign a name and file number to each document and place them in the correct part of the paper or electronic patent file.
Access to Pertinent Documents
Patent docketing ensures that each document is entered into the firm's database so that attorneys can access all the pertinent documents in a patent application file as well as their due dates. For instance, patent attorneys need to know if there is an upcoming deadline for filing documents with the USPO.
A docketing database keeps track of due dates and sends attorneys an alert whenever there is a filing (or other) deadline. Docketers usually scan copies of relevant documents and forward them to other law firms, when required.
Importance of IP Docketing
Docketing is crucial and indispensable when it comes to IP prosecution. All trademark or patent applications have lots of due dates. Some missed dates can be recovered, while others cannot. If such dates are missed, it could cause the application to be abandoned. Even for recoverable dates, it is usually expensive to reinstate the application and will entail hours of extra work.
Docketing vs. Data Entry
Although this is a wrong notion, many persons equate docketing with data entry. Data entry requires little or no work and involves the transference of data from a source document into the relevant field. Once the data is saved by the computer software, the software continues as programed. However, in docketing, once the docketer enters the relevant information and the computer program calculates the due response date, the docketer must verify the correctness of the date.
There are numerous cases where docketing programs miscalculated and gave a response due date that was incorrect. This is why docketers must be familiar with the type of action(s) that can be issued on specific trademark or patent applications. Docketing requires a comprehensive knowledge of the basics of IP prosecution, attention to detail, skill and the presence of mind to look up the rules in ambiguous cases.
If you need help with IP docketing, you can post your job on the UpCounsel marketplace. UpCounsel accepts only the top five percent of lawyers on its site. Lawyers on UpCounsel's marketplace come from schools such as Yale Law or Harvard Law and usually average 14 years of legal experience, including work with or on behalf of companies like Menlo Ventures, Google and Airbnb.