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What is IP Docketing?

IP Docketing
IP Docketing

Intellectual Property (IP) Docketing assists in obtaining the protection of IP. Each type of IP has to undergo the different prosecution processes and following the guidelines of the authorized officer. For e.g. the Patent and Trademark Office (PTO) in the case of Patents and Trademarks. During the prosecution process, there are a number of communications in terms of queries, notices, etc. from the authorized offices to the inventor. These communications need to be responded well in-time by the inventor/author to avoid the financial forfeits or rejection of IP sometime.

Intellectual Property (IP) Docketing relates to the process of maintain records for the prosecution of IP Assets such as Patent, Trademark, Copyright, and Trademark. Additionally, we keep track of the infringement cases, Opposition, etc. All the documents related to the prosecution of IP is maintained in the Docketing software. The Docketing software can be web-based software or cloud-based software as per the requirement. To identify which docketing software suites requirement, check 4 Best IP Docketing Softwares For Small And Medium Law Firms

I will be introducing each IP Docketing in brief:

1. Patent Docketing: The Patent Docketing relates to the maintaining of the documents and docketing appropriate deadlines associated with it. In this, all the communications are thoroughly reviewed and the tasks are generated according to the Docketing system. Once the Tasks are docketed, the appropriate due dates are docketed with its reminders (if required). The details recorded for the Patent Application with the PTO (Patent and Trademark Office) are verified. In case of any discrepancies, the client is immediately notified.
The Docketing software also dockets the infringement and opposition cases related to the Patent Application in the system. This ensures that all the documents and other related information to the proceeding are readily available in one place.

2. Trademark Docketing: The Trademark Docketing relates to the maintaining of the documents and associated deadlines related to the registration of the Trademark. Each information related to Trademark is verified with the details recorded with the PTO. The Docketing software also generates deadlines related to Opposition watch.

3. Copyright: The Docketing software also maintains records related to the copyright. It keeps track of the time limit of the copyright and formalities required to maintain the rights.

4. Trade Secret: The Trade Secret is no protected by the law similar to Patent or Trademark. However, Trade Secret can be included in the software to maintain the documents such as confidentiality agreement, Non-disclosure agreement, etc.

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Articles IP Docketing General

How much IP Docketing Services cost?

IP Docketing Services
IP Docketing Services

IP Docketing Services are required when you are super busy with your day to day business activities. I am an attorney myself, and I understand attorneys keep themselves extremely occupied. At times, the attorneys keep admin staff to help them, however, the IP docketing and paralegal work become too much quite often. Therefore, it is required to utilize outsourced IP Docketing Services.

It’s a headache to contact a number of service providers and zero down their strategy to understand how do they charge.

Typically, the price for a 2000 matters portfolio management costs in the range of 3000 – 6000 US dollars per month. The pricing pretty much depends upon the pricing model we use. If you have a small portfolio of around 200 patents and trademarks, these docketing services might cost you around 500 to 800 US dollars per month.

Pricing Models for IP Docketing Services

Service providers keep a standard pricing model for its clients. So that it is easy for them to cater to the inquiries. There are multiple methods of pricing IP docketing services. Let’s look at all of them one by one:

Matters Based Model

In matter based pricing model, the docketing service provider counts the number of matters available in the docketing software. They keep a fixed multiplier for domestic matters and a different multiplier for foreign matters. For domestic matters generally, the pricing is 2 USD to 4 USD per matter. And for foreign matters, the cost is generally, 3 USD to 6 USD depending upon the negotiation. Further, at times, the service providers charge a flat rate for both domestic and foreign matters. The flat pricing typically range in 3 to 5 US dollars per matter.

Now, when there are 2000 matters in the system and if we chose the lowest flat price here, the cost becomes USD 6000.

The cost of docketing services increases when we enter a new matter in the docketing system. Generally, docketing service providers count matters every month. Also, the billing contains only active matters in the system. There are fewer emails associated with inactive matters, and hence they are not billed.

Email Correspondences Based Model

Another popular model of docketing services is counting the email correspondences model. In correspondences based models, the service providers count the received emails on a daily basis. These email correspondences include emails from the patent offices, foreign agents, internal attorneys, external counsels, unsolicited emails and other emails.

The service providers categorize correspondence in to docketable and non docketable emails. They bill for docketable matters only.

The pricing for docketable matters typically ranges from 10 USD to 15 USD. Here again, at times the docketing services provider counts the domestic and foreign matters.

For 2000 matters, typically, we receive around 20 correspondences every day. The monthly load becomes around 400 correspondences. If we consider the average pricing of domestic and foreign matters, the monthly for docketing services become USD 5000. Of course, the pricing will depend upon the negotiation and the monthly correspondences.

Also, sometimes, there is a charge for non-docketable emails as well. There is genuine reason for it. The IP docketers invest time into analyzing these correspondences. At times the non docketable correspondences are charged at 1-3 USD per correspondence.

Personally, I don’t like this pricing model. There are few reasons for it.

  • For docketing email in the back of my mind, it goes that the pricing is increasing,
  • I feel like why am I paying for non-docketable matters? Also, equally important is why I am not paying for the efforts of the docketing person?
  • Many times, this creates distrust because you can’t count the correspondences every month.

Full Time Equivalent (FTE) Based Model

In FTE based model, we decide a fixed monthly at the beginning. The IP Docketing Service Provider analyzes the docketing services requirements depending on the number of matters, number of daily correspondences, number of expected daily hours, and experience of docketing time investment by the client.

FTE Models, keep one or two-level docketing. In one level docketing, only the single person performs the docketing. The quality check is performed by a single person only. In two-level docketing, a QC manager works with a docketing team member. Once, the docketing and first quality check are complete by the docketing team member, the QC manager performs the second quality check. It makes docketing a Four-Eye quality check process.

Both the docketing member and the QC manager are charged differently. The charge rate of docketing team members ranges in 23 USD per hour to 35 USD per hour depending upon the location of the team. Further, the charge rate for the QC manager varies from USD 28 to USD 45 per hour.

Let’s take the example of 2000 matters again. Let’s assume you negotiate half FTE and 1 daily hour of QC manager on a monthly basis. 1/2 FTE charges at USD 23 per hour becomes 2024 USD per month. QC Manager charges at USD 28 per hour becomes 616. The total monthly billing becomes 2640 USD per month.

How to calculate FTE requirements?

First and foremost, check how much time you or your admin member is investing in docketing. If you are investing around 3-4 hours in docketing daily, go for half FTE i.e. 4 hours daily. Remember, the FTE might take little extra time than yours considering he/she needs to reverify the docketing again. The QC manager time is generally the 25% of the FTE time. In this case, the QC manager you hire will invest 1 hour on a daily basis.

Another method of calculating the FTE requirements is counting the number of daily email correspondences. If you are receiving around 40-50 daily correspondences, you’ll need one complete FTE i.e., 8 hours daily and corresponding 2 hours of the QC Manager daily.

What is common in all pricing models?

The common thing in all the pricing models is that every model charges a monthly fee. You’ll have to be ready to invest a monthly amount in maintaining the docketing work.

Which model is best?

Out of three models, I believe FTE model is best. There are several benefits of this model.

  1. You won’t have to count the matters every now and then as it is required in the matters counting model.
  2. You won’t have to worry about the number of daily email correspondences, non-docketable matters dilemma, and distrust issue.
  3. You’ll focus on the business process and the team will work with you as your extended team without much vendor payment discussions. The vendors usually don’t come for minor surges in the work however if the surge becomes regular they might come back and request you for the increase in the fee.
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Pricing for Auditing

Pricing for auditing the system is generally charged separately irrespective of the pricing model you use. You can negotiate a quarterly auditing in whatever pricing model is available.

What Model Menteso IP follows for its IP Docketing Services?

Menteso IP recommends and uses FTE based model. We believe in working closely with clients. We successfully applied this FTE model with many of our clients. If you wish to talk to our clients before proceeding with us. Please contact us.

Written By: Azam Ghani, LL.M., Intellectual Property Laws, University of California, Berkeley

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Uncategorized

What is Trademark Docketing?

Trademark Docketing
Trademark Docketing

Trademark Docketing – In the current global situation, the corporate needs to continuously innovate itself with new products and services. They need to understand the current market situation, their competitors, consumer interest, and work on innovation accordingly. The protection of innovation works is necessary to have commercial and financial benefits in the market. These protections must be done as per the procedures and guidelines of the Patent and Trademark Office (PTO). Hence, it becomes important to keep track of all important communication from PTO.

Similar to Patent Docketing, the Trademark Docketing relates to keeping track of the communications and important Notices from PTO. The Docketing Team make sure of the correct docketing of details associated with the Trademark in the Docketing software system. The docketing system reflects the present status, upcoming deadlines, foreign filings, renewals, etc. The missing of any deadlines causes additional cost, maximum loss or sometimes rejection of Trademark. Therefore, Trademark Docketing plays an important role during the Trademark prosecution process.

The Trademark Docketing system guarantees a thorough review of each and every communication from PTO.

The Trademark docketing process is as follows:

  • The team receives an email notification related to the Trademark from the PTO. The Docketing team member extracts the email notification in the excel sheet.
  • The team reviews the communication received from the PTO.
  • The team member verifies all details of the Trademark as given in the notification and enters it into the Docketing system.
  • Thereafter, the team reviews the notification and the Trademark details from the Docketing system.
  • The Docketing Team study and finds the purpose of the notification. The content of notification such as publication, Registration of Trademark or any important Notice which needs to be responded.
  • If the notification contains important communication, the team Member updates its details and dockets it in the Docketing system.
  • If the notification has important Notice which requires a response, the Docketing Team member reviews the communication in detail as follow:
    • Whether the Notice is for incomplete formalities or examination Objection.
    • Whether the deadline given in Notice is Fixed or Extendable.
  • After the analysis of the purpose of the Notice, The team Member dockets the following in the Docketing System:
    • Important Deadlines
    • Appropriate comments summarizing the purpose of the Notice.
  • The Docketing Team member uploads the images and other relevant documents in the system corresponding to each email notification.
  • After the appropriate docketing of notification in the Docketing system, the team reports it to the client according to the client’s instructions.

Docketing Team makes a weekly report to send a reminder to the client (if required). The team does a regular audit of the Docketing system to make sure that all Trademark deadlines are correct. Trademark Docketing provides no IP loss to the company during the prosecution process.

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IP Docketing General

What is Patent Docketing?

What is Patent Docketing?

The definition of Patent Docketing

Patent Docketing is the calendarization of events associated with the patent prosecution journey. The events include pre-filing activities, patent application filing activities, and the grant and patent maintenance activities.

The Process Management

If you are managing a few patents probably you can utilize an excel sheet and track the requisite dates. The patent docketing becomes complex with the increase in the number of patents. Imagine, if you have a large number of patents even two hundred or more, you will have a difficult time managing the patent prosecution. Law firms with a focus on patent practices must establish a strong patent docketing process. Large patent law firms use software and hire a team of docketing specialist to manage the complete process.

What are the uses of the Patent Docketing?

United States Patent and Trademark Office (USPTO) takes years to grant a patent. When there are hundreds of patent applications the process of docketing helps in managing the patent prosecution process efficiently. There are filing deadlines, documents, forms, drawings and statements that need to be tracked down. Patent Docketing ensures that all the deadlines are met and all the documents are correctly labeled and kept in the correct folder so that the documents can be retrieved as and when required.

What is Docketing Process?

In the past, there used to be a lot of paperwork in patent law firms. Docketers’ used to label each document and place them in the relevant files. Nowadays, after the introduction of Softwares, paperwork has shifted to electronic files. As a result, the docketing process now includes entering each document into an electronic database. This electronic database helps attorneys easily fetching the list of required documents and deadlines. Also, docketers must also send daily docketing work completed and activities reports to the attorneys so that the attorneys can take relevant actions.

What is virtual patent docketing?

Virtual Patent (IP) Docketing is also known as Remote IP Docketing or Managed IP Docketing or Outsourced IP Docketing. In this process, a team of remote IP Docketers works at a fixed monthly cost. This process helps in reducing the costs of hiring, training and maintaining the inhouse IP docketers team. Menteso IP is thoroughly experienced in managing the docketing system remotely. You can also contact Menteso IP for queries related to remote/virtual IP docketing.

Docketing Softwares

There are a number of patent docketing softwares available in the market. All the softwares help in tracking the deadlines, as well as, managing the complete patent docketing process. Further, many softwares are extremely smart. They automatically get a document feed from the USPTO and create the tasks for the attorneys. Furthermore, some softwares are complex. Such complex softwares keep a track of patent applications in multiple countries. We wrote an article about basic docketing softwares. Here it is, Four best IP docketing softwares for small and medium law firms. The four best docketing softwares include AppColl, Alt Legal, DocketTrak, and FlexTrac. We generally recommend AppColl for our clients unless there is a specific or highly complex need.

Do you need patent docketing services? Check the Menteso IP approach.

Patent Docketing services become important if:

  • you think you won’t be able to manage the business needs together with the unproductive work of calendarization, docketing or paralegal
  • time is short and you can not manage hiring, training and maintaining a docketing team
  • you need docketing experts from day one
  • the docketing software is new and it needs to be managed,
  • you need expert help to set up the system or process. Menteso IP can rescue you in all situations.

We wish to see your docketing system up and running. Contact us today.

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Article

Notice of Panel Decision

Notice of Panel Decision
Notice of Panel Decision

In the case of Patent Application Prosecution, the Applicant has the right to appeal to the Patent Trial and Appeal Board (PTAB) for the decision made by the Examiner. The Applicant can File for Notice to Appeal for the claims which are rejected by the Examiner at least twice. The applicant can either file Notice of Appeal or Request for Continuation Examination (RCE). The notice of Appeal cannot be filed after the RCE of the Patent Application. We receive the decision from the PTAB against the Appeal as Notice of Panel Decision.

The Applicant can file for the Notice of Appeal with appropriate Fees for the Examiner’s decision. The Applicant then has to File an Appeal Brief within two months from the filing of the Notice of Appeal. The Filing of Appeal Brief is extended to five months. In the hearing of the Appeal, the conference is held between the Examiner, the Applicant, and the PTAB. As per the hearing, the decision is taken, and we receive the Notice of Panel Decision.

The three Notice of Panel Decisions which are received from PTAB is described below:

  1. Appeal Decision Affirmed-In-Part – This notice indicated that the PTAB has agreed with Examiner regarding the rejection for one set of the claims. The rejection over the other set of claims is withdrawn. In this scenario, the Patent Application reopens for the Prosecution. The Applicant has to then file an Appeal Brief within Two Months from the receiving date of the Notice of Panel Decision.
  2. Appeal Decision Affirmed – This notice indicated that the PTAB has agreed with Examiner rejection of the complete set of claims. In this scenario, the Patent Application reopens for the Prosecution. The Applicant has to then file an Appeal Brief within Two Months from the receiving date of the Notice of Panel Decision.
  3. Appeal Decision Reversed – This notice indicated that the PTAB has agreed with Approved with Applicant. The rejection of the complete set of claims is withdrawn. In this scenario, the Patent Application is sent back to Examiner for Notice of Allowance/Allowability. The Applicant has to then file an Appeal Brief within Two Mths from the receiving date of the Notice of Panel Decision.

Once the Panel Decision is received, the time period to file an appeal brief is modified to one month from the receiving date or two months from the receipt of the Notice of Appeal. We can get the extension for Filing the Appeal Brief for up to five months.

For any further queries, feel free to email me at shweta@mentesocom.wpcomstaging.com.

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IP Docketing Advanced

Non-Final Office Action and Final Office Action

Non Final Office Action and Final Office Action
Non Final Office Action and Final Office Action

One of the most important factors in order to obtain the Grant of the Patent Application is to overcome the Non-Final Office Action and Final Office Action Notices received from the Examiner at the PTO. The Office Actions received are Non-Final Office Action and Final Office Action. We receive one more rejection from USPTO which relates to the number of novel aspects claimed in the Patent Application.

Different jurisdictions have different laws for Office Actions. In this article, we will be discussing the Office Action Notices received from the USPTO in detail.

The three types of Office Action Notices received from USPTO are:

  1. Restriction/Election Requirement:
  2. Non-Final Office Action:
  3. Final Office Action:

Restriction/Election Requirement

The Restriction/Election Requirement is received from the USPTO Examiner when the claims filed by the Applicant contains more than one novelty feature. The document code for the notice is “CTRS“.

The Applicant can file only one novelty aspect in the claim set of the Patent Application the claims of the Patent Application should have only one novelty feature. If we desire to obtain a Patent for more than one novel feature, we should file a separate related Patent Application such as Divisional, Continuation, etc. (We will discuss in detail in another article). If the examiner feels that the Patent Application has more than one novelty aspect, then the examiner issues a Restriction/Election requirement. With the Restriction/Election Requirement Notice, the examiner provides one of the two options to the applicant. In the first case, the examiner will direct the applicant to restrict the claims with one or more claims set in the Patent Application. In the second scenario, the examiner will provide two or more claim set and will ask the applicant to respond to the notice by selecting one of the claims set. The Applicant can file other sets of claims in a separate Patent Application.  

The due date to File Response to Restriction/Election Requirement is 2 months from the receiving date from the USPTO. We get the extension for another 2 months by paying the extension fees with the USPTO.

In many cases, the Restriction/Election Requirement is issued along with the Non-Final Office Action Notice. In order to differentiate between office actions, one should check the Boxes section 1, section 2A, and 2B on the second page of the Office Action. It is good practice to review the complete Office Action document. It helps us to understand the primary reason for the rejection. This confirms the correct due date of the Office Action as the due date for the Non-Final Office Action is different from the Restriction/Election Requirement.

Non-Final Office Action 

The non-final office action is the first rejection received from the examiner for the claims filed by the Applicant in the Patent Application. The document is received from USPTO under the document code “CTNF”.

The applicant either argues the rejection raised by the examiner by providing the prior arts to support the same. Otherwise, the applicant amends the claims to overcome the examiner’s rejections. With non-final Office Action, the Applicant has one or more chances to obtain the grant for the Patent Application. After filing the Response to Non-Final Office Action, the applicant receives the Final Office Action or Non-Final Office Action again. The applicant can directly receive the Notice of Allowance from USPTO as well.

The due date to file the Response to Non-Final Office Action is 3 months from the receiving date of the USPTO. We get the extension for another 3 months to file the response by paying the extension fees with USPTO.

Final Office Action 

The final office action is the last rejection received from the examiner by the Applicant. The document code for the Notice is “CTFR”.

The applicant responds to Final Office Action in a similar way as that of Non-Final Office Action. However, the applicant does not have any further opportunity to defend his Patent Application after the response is Filed. 

It is suggested to file the first reply within two months of the mailing date of this final action. If the Response is filed within the two months, the Notice of Allowance may be received early. Otherwise, the Examiner issues the advisory action after the end of the THREE-MONTH shortened statutory period. As per the advisory action issued examiner, the applicant either File the Notice of Appeal or Request for Continued Examination (RCE). The examiner also provides other suggestions as well such as Amendment of claims, removal of specific aspects, etc.

The due date to file the Response to Final Office Action is similar to Non-Final Office Action. The due date is 3 Months from the receiving date of the Notice for Office Action. Similarly, we get the extension for another 3 months to file the response by paying the extension fees with USPTO.  However, the best practice is to docket the two-month deadline as the due date for Filing for the Response to Final Office Action so as to timely receive the Advisory Action.

In many cases, there is a tick in Box 2B i.e. Non-Final Office Action, however, the conclusion states that “THIS ACTION MADE FINAL”. We should docket the Notice as per the conclusion of the document.

In another scenario, there is a tick in section 2B but the remarks state Election / Restriction Requirement. In these cases, it is better to inform the client regarding the discrepancies and dockets as per the remarks.

Thus, the docketer should be extra careful and make it practice to review the complete Office Action document received. As any error in the due dates or missing the deadline affect client expenses.

For any further query, feel free to email me at shweta@mentesocom.wpcomstaging.com

Also, check 7 Most Common US Patent Docketing Errors. The complete article, you can’t miss if you want your docketing to comply with standards.

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Blog

Informational Notice to Applicant

Informational Notice
Informational Notice

The Informational Notice of Applicant has document code of “M327”, also referred to as miscellaneous communication. The M327 is any communication from the USPTO that does not fit into any other document code. 

When a patent application is filed, the examiners no longer review the inventor’s oath or declaration for the patent application. The non-examiner staff checks the inventor’s oath or declaration filed prior to the Notice of Allowance (NOA). If non-examiner staff checks for the deficiencies regarding the inventor’s oath or declaration document. They send an informational notice to the applicant if they find any deficiency.

How Information Notice different from other Notices?

Apart from the Informational notice to the applicant, there are many other notices that are sent to Applicant in order to inform the deficiencies in the file Patent Application such as Notice to Missing Parts of Non Provisional Application, Notice to File Corrected Papers, etc. The other notices have the well-defined hard deadline within the document, it may be 2-months, 6-months, etc. However, in case of the informational Notice to Applicant, the document has a soft deadline and applicant should submit it before the payment of the Issue Fees.

The docketing of the Informational Notice in the docketing system.

The inventor’s oath or declaration do not have any specific deadline. The document may have more than one due dates in the system. This ensures the timely submission of formalities. The first due date is in 2 months from the receiving date. The docketing person should check due date periodically and closed out or updated as per the document status. The process continues until we receive NOA or submit the document to USPTO.

Thus, the docketing person should keep the track of the due date for the notice periodically. When we receive NOA document, the docketing person sends an inquiry to the client regarding the status of the item(s) indicated in the Informational Notice. He/She then adjust the deadline of reply to coincide with the Issue Fee Payment.

The  Applicant should file inventor’s oath or declaration within the time frame or the USPTO Abandons the Patent Application. Thus, please take extra care while reviewing the notices received from USPTO and docket them appropriately. Also, when docketing the notices, please make a practice and include notes in the comment section. The notes in the comment should mention the accurate document which applicant should submit for completing the formalities. This makes reviewing of the Patent Application prosecution status easier for Patent Attorney and its paralegal.

In addition, this will definitely help you while auditing the case matter in the system.

See you soon with my next article.

Check 7 Most Common US Patent Docketing Errors. The complete article, you can’t miss if you want your docketing to comply with standards.

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Notice of Allowance/Notice of Allowability

Notice of Allowance
Notice of Allowance

The Notice of Allowance signifies that claims of a Patent Application are allowed by the examiner. Once we receive the notice of allowance, we have to pay the Issue Fees within a specified deadline to initiate the process for the grant of the Patent Application. The deadline for the payment of the Issue Fees is three months from the date of the mailing of the Notice of Allowance. This deadline of three months is not extendable.

Notice of Allowability documents come with USPTO code “NOA”. Further, in many cases, we receive Corrected Notice of Allowance, Corrected Notice of Allowability, Notice of Allowability, and Supplemental Notice of Allowability under the same USPTO code “NOA.” We will discuss each of these notices in detail below. Also, we will also discuss the process of docket them appropriately.

 

1. Corrected Notice of Allowance:

In some cases, the examiner realizes that there was an error in the document of the Notice of Allowance mailed to the attorney. The error could contain incorrect data, not including the timely filed amendment, etc. Further, the examiner identifies whether the modification of the error will require the republication of the document. The examiner then instructs its ITU staff to coordinate with Attorney regarding the modification of the error. Also, ITU staff confirms if the republication of the document is required.

The USPTO then issues the Corrected Notice of Allowance with the corrected data or amendments. While docketing the Notice, we must take care of that due date for Payment of Issue Fee and make sure that it is not altered or changed. The due date for the payment of the Issue will remain the same as per the initial Notice of Allowance.

 

2. Corrected Notice of Allowability:

In a few cases, though the claims are allowed, there is a need to revise some aspects of the Patent Application for completing the Notice of Allowance process. We have to revise the Patent Application as per the Notice and submit again according to the USPTO compliance. For instance, the corrected drawings need to be submitted in a particular format. There may be a requirement to renumber the claims and submitted again as per the allowed claims. There may be other requirements as well. The USPTO then issues the Corrected Notice of Allowability to notify the requirement to the Attorney. We need to fulfill the requirement and submit with the USPTO within the specified time mentioned in the document. The examiner verifies the Patent Application again, and issues receive the Notice of Allowance from USPTO.

 

3. Notice of Allowability:

The Notice of Allowability is the condition of Allowance of the Patent Application. The applicant has to satisfy the requirements of the patentability and ensures the prosecution is closed on merit. The requirement can be a submission of declaration documents or any other formal matter related to Patent Application. The applicant must fulfill the formalities either before or along with the Payment of Issue Fees. The Notice of Allowability does not alter the due date of the Payment of Issue Fee.

In many cases, the Notice of Allowance consists of a Notice of Allowability. Though it does not affect the condition of allowance of the Patent Application, however, the Notice of Allowability should be reviewed to ensure the formalities of the Patent Application is in order.

 

4. Supplemental Notice of Allowability:

The USPTO has implemented a program i.e. QPIDS, to permit applicants to file IDS statements after the Notice of Allowance is received. It does not require to continue prosecution by filing a working RCE with the IDS however, the applicant fills the RCE Form.

Applicant files a request form (no new fee), the IDS, and still file an RCE and the Petition to Withdraw, with the usual fees. If the Examiner considers prior art cited in IDS and verifies it does not affect the condition of Allowance. If the cited prior art does not affect the allowability of claims then supplemental Notice of Allowability issued.

All the above notices received are part of the post-allowance prosecution. The notices ensure the Patent Application and related documents are compliant with USPTO. The notices do not affect the due date of the Issue Fee Payment, however, it may result in abandon if the documents are not in order. Thus, the notices should be checked thoroughly to ensure all the documents are appropriately docketed.

Check 7 Most Common US Patent Docketing Errors. The complete article, you can’t miss if you want your docketing to comply with standards.

Happy Docketing to you. 🙂

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IP Docketing Softwares

User Review: AppColl’s New Features and their Usefulness

AppColl has been teasing its users and followers for the past one week, and finally, they launched new features yesterday (Monday, November 5, 2018). To be true to you I liked AppColl since its beginning. The way they have simplified the docketing interface is incredible. It looks immaculate when you enter into AppColl. The whole system seems pretty organized.

AppColl Image

Image Source: AppColl

AppColl PM Plus version has got all the new features. This version is 30% costlier than the non-Plus version. Plus version starts at $130 whereas the other starts at $100.

Now, the question is whether the increment of $30 is worth? Let us see what the new features are. The much awaited new features include:

  • Private Pair integration

Our team had been entering the private pair data manual for each case. It looks like the peace of mind. It will also make the docketing more perfect wherein we will have fewer chances of missing the PTO data. So, should we become complacent if it is happening automatically? Of course No! Even if there is a complete facility, we will still have to verify the documents and customize the docketing.

  • QuickBooks™ Synchronization

Indeed, an excellent integration for the ones who are using billing feature of AppColl and they are also using Quickbooks. It should reduce quite the right amount of hassle of the paralegals. Few of our clients are using Billing feature of AppColl, and our team is helping them. The team at Menteso IP used to provide them with the reports that they used to include in QuickBooks separately. Now, with this feature it should be an easy task. 

Nevertheless, we shouldn’t rely 100% on it. We must verify every activity being performed by the system. As we just started, the system might need iterations and learnings to reach the level of perfection ultimately.

  • Conflict Checking

This feature is inevitable in all general non-IP docket management system. Nevertheless, probably, the first time this feature has been introduced in an intellectual property docketing software. However, it looks that this will prove to be an invaluable addition as many times the IP law firms struggle with the conflict check. They at times use a separate conflict check software. It looks like a good addition.

  • Automated Email Routing

This feature of sorting email using a dedicated keyword-based email ID is already present in other docketing software such as Foundation IP as well as various CRMs. It really helps in classifying the emails depending upon to or from email IDs. AppColl entered late, but that’s fine. To me, it is an essential requirement.

  • Graphical Reporting

The information looks charming when presented in the form of graphs and charts. The data start communicating more information. I remember, we used to download the reports from AppColl, being an analyst, I always hated raw data. I genuinely love this feature to the core. This feature should help in making more informed decisions.

I’d love to pay $30 more for these features. Would you? Write in comment. Nevertheless, I don’t know how the pricing would change when the number of users or the number of cases will increase. If anyone gets more information, please write in the comment.

I am looking forward to receiving your feedback and comments.


– Azam Ghani
Founder & CEO at Menteso (IP), Inc.

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IP Docketing General

Seven (7) Steps to Setup an Excellent Patent Docketing Process

Patent Docketing
Patent Docketing

As you are here, I could think of three reasons:

1. You have a messy patent and trademark docketing system, and you wish to improve its quality (by audit or data cleansing);
2. You are trying to build patent or trademark docketing process from scratch and you are looking for IP Docketing Best Practices; or
3. You are trying to switch the IP docketing system.

If there is any other reason, please write in the comment section towards the end of the page.

Nonetheless, I am glad; you are here. I am sure that the following seven steps of setting up a robust IP docketing process will help you in all of the situations mentioned above as well as the reasons shared in the comment section if there is any.

If you face any issue or need help in setting up the process, I’ll be glad to provide FREE of cost initial IP Docketing Consultancy.

The following seven (7) steps would be a great help, I guarantee you. If you need my help, I’ll be more than happy to help you in setting up the whole system. I understand it’s a pain to build the system from scratch. Nevertheless, if you follow the below seven (7) steps, it should be an easy one.

1. Create a Common Mailbox.

I can’t stress more. Many of our clients, with small docketing, needs avoided creating a common mailbox and used multiple mailboxes. When the practice grew, they got lost. When we handled their patent docketing system, we created this common mailbox on Day 1 of our assignment. And yes, don’t forget to use this common mailbox everywhere including PTO filings, Agent Communications, Client Communications, and all the other relevant communications.

2. Create a Standard Practice Manual

Heard it the first time about Manual? Well, we rely on our “Best IP Docketing Team,” that’s the general response of law firm managers. The problem arises when a team member leaves for one or the other reason. She/He will take away all the know how. Now, when you have a manual and deploy a new team member, it becomes straightforward to track what’s going on in the system. We faced this situation when we offered our team members as extended team wherein one or two of our team members acted as Full-Time Equivalents for our client’s team. Our team members had to deep delve into the system to understand the full practices. Then finally, our team created the Standard Practice Manual which was used throughout the client’s firm later.

3. Choose and Customize a Docketing Software.

Here, the significant point is to use a customizable docketing software.

  • Read 4 Best IP Docketing Softwares: If you are starting now, and wish to select the software you can read this important article that helps you in deciding on Patent Docketing Software for your needs.
  • Choose Reports Types and Frequency: Make sure the software you choose should be able to create periodic reports as per your needs. It is imperative. Your client would ask for the reports time and again. At times, the clients will ask for the login of the system for status of their matters.
  • Train the IP Docketing System: Training the docketing system means whenever you set up a system from scratch customize the tasks generation as per your docketing needs. For example, you want a task created two days before the deadline as you plan complete everything two days before the deadline to manage last minute issues. In this situation, training the system would be extremely helpful.

4. Choose a Supervisor

Someone has to be a complete owner of the system who takes care of the entire process including monitoring of the patent docketing system, tracking of the common mailbox, coordinating with remote patent and trademark docketing teams, internal teams, attorneys, etc. It’s a lot, and you really need someone to manage your internal stuff. Initially, the attorneys do it themselves however as the system grows they must delegate it so that they focus on their core activities.

5. Build the IP Docketing Team

You need this, when the business grows, you can build both internal teams as well as the remote docketing team, or you can plan a mix of the team. All three options of the team structures have its advantages and disadvantages. The internal team remains with you all the time, however, at times it is costly to maintain an internal team considering the hiring and training costs involved. On the other hands, the remote team might be cost-effective as well as deliver peace of mind as you don’t have to hire and train the team members. Further, the extension of team members upon surge in work. Usually, remote docketing teams keep a buffer team which can quickly manage the surge, or increase the team members as and when required.

6. Monitor and Train the team

Whether you keep an internal or remote team, it is vital to monitor and train your team members. There might be n number of things specific to your standard practices on which your team members need training. The best you can do is record the training videos these become useful for future uses and you won’t have to pass on the same information again and again. Further, the team can also view the videos repeatedly on its pace. Furthermore, you can upload the videos on Youtube with restriction to availability to your firm’s email IDs. This is only possible when your team is using G Suite for your emails.

7. Setup Quarterly Audits

It is critical, at times we find important issues while auditing. One simple reason for this process step is “To err is to human,” and you have human beings working with you. It doesn’t mean that you won’t need audits when you have incredibly sophisticated systems which are updating everything automatically. Many a time there would be errors from PTO. We saw a lot of mismatches even in Titles or dates of filing. The sophisticated systems can’t resolve these issues automatically. Your audit and cleansing drive will make your system robust and healthy all the time.

I wish you good luck in setting up your patent and trademark docketing process. Please feel free to write to us for your specific queries.

About Author: Azam Ghani is the Founder and CEO at Menteso (IP), Inc. He is the LL.M. from University of California at Berkeley with specialization in Intellectual Property. IAM Magazine included him in top 300 IP Strategist in the years 2017 and 2018. He is an IP Attorney, Consultant, and Innovation Enthusiast. For specific queries and inputs, please write to him at azam@mentesocom.wpcomstaging.com.

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