Patent Docketing: All The Information You Need -Menteso IP
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01 Oct, 2022 0 Editorial Team

Patent Docketing: All The Information You Need

The process of administering the patent application process is known as patent docketing.

  1. Docketing for patents and trust accounts

2. Requirements for Insurance

3. Docketing vs Data Entry 

4. Docketing Importance

5. The Process of Docketing Patents

6. Guarding your intellectual property

7. Selecting the Software for Patent Dockets

The process of managing the patent application process is known as patent docketing. Docketing is a crucial tool for patent law firms because it can be challenging to maintain track of every patent application on behalf of clients. Most law firms employ docketing experts to run the patent docket system. An increasing number of patents are being added to the docketing system to handle each patent application, which can take up to several years.

Docketing for patents and trust accounts

However, filing a single document with the USPTO does not represent the whole of the patent application procedure (USPTO). Other paperwork, such as forms and drawings, are necessary for addition to the application itself. Attorneys for patents must also keep track of application fees and deadlines.

When it comes to patents, most law firms want to make sure they get paid in completely full advance. Since getting a patent might take a long time, the client of the legal firm may decide to take a different path or change their mind, failing to compensate the lawyer for their services.

 Therefore, each application will also include information about the customer, the fees the client has previously paid, the client’s trust account number when it is placed into the docketing system, and the patent application. It should be noted that the client trust account was created to keep the client’s fees that the attorney has not yet earned.

Every patent agent or lawyer must maintain a separate account designated only for holding client fees, or deposits, that have not yet been paid for the services provided. This can’t be utilised for anything else. Retainers cannot be combined with other business monies in this client trust account. It is mandatory to have a separate report.

Patent attorneys and agents will learn that they will probably need to spend a lot of time and effort following their customers in the collections process with other business money if they don’t get paid in advance for their services, which is known as receiving a fee. It is compulsory by law to have a separate account.

 Requirements for Insurance

To avoid malpractice claims if a patent law firm misses a filing deadline or results in rejecting a patent application, these businesses require their insurance providers to use docketing systems. Most patent law companies would probably employ a docketing system regardless of whether insurance needed it, it is safe to say. To ensure that both docketing systems are identical, some insurance companies even require that these businesses use two different docketing methods. Two docketers would be used to input data into the system and double-check each other’s entries.

Most insurance companies also require using engagement and disengagement letters by patent law firms. The work agreed upon to be done on behalf of the client is outlined in an engagement letter. Additionally, it will specify the payment terms and probably state what is owed to the lawyer if the client discontinues the work in the middle of it.

There is no required format for the engagement letter, and it is entirely up to the law firm to choose how formal and particular to be. The letter must be signed by the client to avoid malpractice claims if the USPTO rejects the patent application.

The National Organisation of Patent Practitioners (NAPP), a nonprofit trade association, is a membership organisation that includes the majority if not all, patent law companies. NAPP helps its members by educating them about the patent market through emails and newsletters. The meeting gives patent law companies a platform to recommend one another or discuss crucial issues facing the sector.

Docketing vs Data Entry

The docketing system is sometimes mistaken for a simple data entry system. It may be challenging for a legal firm to locate a skilled individual to work on the patent docketing system. Even though the patent docketing system does require a large quantity of data to be supplied, the system itself can be very complex due to the volume of data it stores and the number of patent applications it manages.

It is up to the docketer to manually calculate the due date and enter it into the system once information has been entered into the system, for instance.

Patent agents and attorneys can reduce the cost of maintaining the gallery by decreasing the required manual data entry. Docketing software and systems can help with this in several different ways..

  • Patent agents and attorneys can view the whole patent portfolio thanks to the centralised data access provided by electronic docketing technologies. This might cover previous patents, trademarks, copyrights, disputes that might be connected, and so forth.
  • Platforms for docketing offer clarity between workflow phases and policies. Concentrating on each client’s needs enables more consistency and efficiency. As international rules change, the media are updated frequently.
  • Because it enables users to correct problems in large patent catalogues, electronic intellectual property data can enhance data quality. The USPTO and other patent offices allow patent attorneys and agents to deal with the level of investigation data. Anyone accessing this data can fix mistakes and improve each record’s formatting.
  • It might be difficult for patent attorneys and agents to put together reports and find the data they need for presentations. In addition to better-quality data that can be accessed from several sources and in different forms, many docketing software solutions enable advanced reporting on intellectual property issues.
  • When it comes to best practices, docketing software is flexible. Thanks to this specialist software, businesses are no longer restricted by pre-defined, rigid processes that may have been created with other uses and applications in mind.
  • Robust docketing software can offer the capacity to examine the market presence, develop and administer it, and reporting features.

Different companies may keep various amounts of data. Dates, costs, licencing royalties, and other details included in patent applications must be preserved in a structured, easily accessible manner. It can be challenging for many firms, especially those that operate worldwide, to know where to file this information and how much information to include in the first place.

An essential part of managing intellectual property is docketing. Organizations must therefore keep up a high-quality docket management system. If not, the costs of establishing and maintaining patent documents may rise. Docketing technologies ensure that fees, application payments, and deadlines are appropriately tracked. Even when necessary, they remind all parties involved.

To be ready for the management of intellectual property protection in the future is yet another reason for using an electronic docketing system instead of manually entering and tracking information.

Docketing Importance

One of the main aspects of patent proceedings is docketing. Without it, those that hire competent patent attorneys will probably miss deadlines and ultimately lose their chance to get a patent. The reactivation charge for larger businesses is $1620, while the cost is roughly half that for smaller organisations. However, there is very little chance that the client will keep hiring the lawyer after they miss the deadline. Therefore, a docketing system is one of the most crucial aspects for legal firms practising in this field.

Law firms need to consider other factors when keeping up every market presence.:

  • The investigation and management of the patent application’s legal costs should be included in each portfolio, according to law firms.
  • The financial value of the invention itself should be kept in mind by law firms. The legal costs of the patent application may be higher if there is a very high real value.
  • Standardization is necessary so that legal firms can maintain a uniform process and, as necessary, update every patent application.
  • Every patent portfolio should work to improve the data quality. Using docketers, patent attorneys can be informed when deadlines are near since they can be confident that no errors exist, all papers are kept correctly, relevant fees are submitted, and due dates are entered correctly.
  • It is essential to keep functionality in the docketing system on its own in mind. A docketing system with free text input should be looked after by patent law firms so that notes can be added to each portfolio describing the application’s current status.

The Process of Docketing Patents

The patent application process involves a significant amount of paperwork, as was previously mentioned. A new portfolio must be added to the docketing system whenever a client has engaged the legal team to prepare the patent application. The docketer must make sure the details are precise.

As a result, the client’s name, contact details, invention, the industry it serves, and other relevant data are added to the portfolio. The client trust account number, legal fees owed and paid, and any additional filing fees associated with the application must be included in the presentation.

The docketer will then scan all copies of the application, including attachments and additional papers. As new paperwork is received, the docketer will review it and add it to the client’s collection. Depending on where the client is in the patent application process, a few deadlines and due dates will be included to ensure the firm is aware of upcoming deadlines, filing fees that are about to be expected, and so on.

Guarding your intellectual property

To promote creativity, innovation, and invention, it is crucial to protect intellectual property, which is the goal of the patenting process. Businesses find it challenging to compete in their markets without it. For economic expansion and job creation, intellectual property is equally essential. It has numerous applications in the commercial world.

It’s essential to manage your patent and application portfolio as cheaply as possible to secure your intellectual property. As a result, a business managing this portfolio must differentiate considerations in mind. These contain:

  • All fees associated with maintaining and pursuing the patent portfolio.
  • The worth of all patents commercially. To prevent rivals from using the discoveries and goods for their financial benefit, these patents may provide exclusive licences to specific individuals or businesses. Cost-saving measures include removing patents with little practical uses.

Selecting the Software for Patent Dockets

To manage the patent docketing process, numerous types of software are available. Some software solutions permit free text entry, allowing docketers to add data into the system as they see fit. To save docketers from having actually to calculate due dates, other tools do it for them. To track when the profile was edited, some systems feature audit logs. Patent law companies must investigate the many software options and select the one that best satisfies them.

On UpCounsel’s marketplace, you can post your legal need to learn more about patent docketing. Only the top 5% of attorneys are admitted to the UpCounsel database. With an average of 14 years of legal expertise, the attorneys on UpCounsel have graduated from prestigious law schools like Harvard Law and Yale Law. They have worked with or for businesses like Google, Menlo Ventures, and Airbnb.