Intellectual Property docketing, which is the management of essential dates, data and documentation from IP offices, as well as the tracking of crucial deadlines during the application process, is often viewed as an afterthought. However, without proper docketing techniques, interested parties run the risk of losing their rights or the rights of their clients, and having no payoff for the immense investment of both time and money. We are sharing our top 10 rules of IP docketing in the hopes that they prove useful to your company or law firm's docketing procedures.
1. Never assume anything
Just because you believe you or your firm have collected all of the patent office correspondence and entered all of the important dates into a docketing software solution, that does not necessarily mean those deadlines are correct. Do not assume that a software platform will do all of the work and notify you of the exact date when you have to respond to office actions. Spend time performing regular reviews because the only thing to assume in docketing is that everything is fiction unless you have the facts.
2. Never close a hard deadline without proof
When managing a large number of IP assets, you might take it for granted that you have met precise response due dates. It is easy to think that your team would have filed a response to a non-final rejection, met an appeal deadline or filed that application claiming priority. However, without proof of filing, it is the same as wishing it were true, and that is not a recommended strategy for managing your highly valued IP.
3. Give your who, what, when and why in your docket notes
Too often, inexperienced docketers do not take the time to utilize the notes fields in their docketing software. This section is the perfect place to provide your colleagues with the context of what was docketed as well as creating a historical marker of that particular IP asset and makes it easier to cross-reference other items or situations in the docket.
4. Do not inactivate a record without explicit client instructions
At one time or another, you may have to decide on whether or not to respond to a deadline for an IP asset that your company or client may want abandoned. While the desire to save time and effort may lead you to exercise what feels like common sense, unless your client expressly tells you that they have moved on from that application, it is too risky to make a judgment call based on anything less than a clear directive. Even if you receive a notice of abandonment, make sure that you have an explicit statement from your client before you decide to close the record in your docket system.
5. Keep an open deadline for all active applications
A responsible, and sometimes life-saving strategy is to always have a deadline for the active applications in your or your client's portfolio. Even if you do not have an official due date generated from IP office correspondence, setting an arbitrary status deadline will help to ensure that assets do not fall through the cracks. Without these showing up on your docket reports, by the time you remember about an application, it will be too late to do anything. Consider setting a status check action six months from when the last date the record was updated, if there is no outstanding deadline listed for a particular asset.
6. Docket from official documents, not internal emails
People make mistakes. When you are docketing any information, make sure you have collected that information from official records or official correspondence and not from an email or someone's say-so. It is too easy for human error to seep into such communications, which can lead to big problems down the road, ones that could have easily been avoided. If you do not have those official documents in your possession, request them from an associate or get a copy from the IP office.
7. Double-check your work after updating the record
Human error is not something that only happens to other people. After you have finished docketing a record, it is always a good idea to give it a quick once-over before moving on to something else. Entering the wrong numbers, the wrong dates or the wrong actions can have disastrous consequences and the time it takes to proofread versus the time it will take to fix the issues your docketing mistakes may cause later on makes the former an obvious choice.
8. Write accurately and succinctly
Time is money, they say, and nowhere is that more evident than when an attorney is reviewing their docket and they want to know what is going on with a particular case. Docketers, do yourselves a favor and avoid lengthy and wordy docket entries. Be as concise as possible when writing notes.
9. Help your readers find the most information fast
Always consider that you are not the only one who will read the docket record. Write notes, name documents, docket entries and actions all in such a way that leaves no guessing to be done by anyone who wants to glean some information from the record. Be specific and, of course, be accurate.
10. Never assume anything!
You might think that we are just repeating ourselves, but this is a point that cannot be stressed enough: You need to have a proof for every bit of data that you enter into your docket. You need to double-check the information, as well as the data that was entered by someone else, against the official documents. Docketing is a high-stakes game with some life-altering consequences for those who do not take their responsibilities seriously enough.
Many firms choose to outsource their IP docketing because the cost of having personnel with enough IP experience to docket proficiently is becoming more and more prohibitive. Docketing costs money but does not generate revenue. Outsourcing to Dennemeyer, with our knowledge and experience, is the best value. It is like having your docketing department down the hall without the cost burden of having your docketing department down the hall.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.