Trademark Docketing Archives

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.

You won’t have to count the matters every now and then as it is required in the matters counting model.
You won’t have to worry about the number of daily email correspondences, non-docketable matters dilemma, and distrust issue.
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

Let’s find out the 7 most common US patent docketing errors. The patent docketing process involves tracking and scheduling of due dates in a patent application process. These due dates are always critical as missing any deadline can lead to the abandonment of the patent application. The responsibility of a docketing professional becomes crucial here. The docketing professional must update the docketing system with accurate due dates ALWAYS.

Together with the accuracy of the dates, it is vital to enter bibliographic details correctly. And yes, it is equally crucial to update the dates on time. Imagine, if we docket the exact dates but after passing the deadline which sometimes is of just five days. Of course, in this situation, your docketing is of no use. I understand this as I handled many such requests in the past. I always ask my team to notify the client via an urgent email in all such time-pressing situations.

Understanding the importance of accurate docketing: A docketing professional must accurately docket all due dates associated with filing a response to the notices and payment of issue fees, etc. Missing of even a single due date (unintentionally) while performing patent docketing might result in increased expenses (because of the PTO penalty) and delay in the grant of the patent.

I am sharing my experience wherein I believe the following seven documents need special care as these pop-ups are quite frequent at the time of docketing. Here is the list:

Notice of Allowance/Notice of Allowability
Informational Notice to Applicant
Office Actions
Filing Receipts
Notice of Panel Decision
Examiner and Applicant-Initiated Interview Summaries
Notice of Appeal

I firmly believe that errors while docketing these documents can be avoided by thorough understanding and meticulously reading the complete documents. Further, all the notices should be reviewed at least 2-3 times so that we generate accurate deadlines in the docketing system.

With accurate and timely patent docketing we can avoid unnecessary expenses including extension fees etc. and abandonment. High-quality docketing is peace of mind for everyone.

We will discuss each of these documents one by one and explain their process of docketing in our next articles. We will publish these under new articles week after week. Stay tuned! In the meantime, read about our Patent and Trademark Docketing Services . 🙂

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Examiner and Applicant-Initiated Interview Summaries:-

Patent docketing is a critical aspect of the patent process that ensures that all relevant information related to a patent application is correctly recorded and tracked. Docketing errors can have significant consequences for both the applicant and the examiner. In this article, we will discuss some of the most common errors in US patent docketing in examiner and applicant-initiated interview summaries.

Missing or Incomplete Information:

One of the most common errors in docketing examiner and applicant-initiated interview summaries is missing or incomplete information. Interview summaries must include all relevant details, including the date of the interview, the names of all participants, and a summary of the discussion. If this information is missing or incomplete, it can cause confusion or delays in the patent process.

Incorrect Dates:

Another common error in docketing examiner and applicant-initiated interview summaries is incorrect dates. The dates of interviews are essential for tracking the progress of the patent application, and errors in these dates can lead to confusion and delays. It is important to ensure that all dates are recorded accurately and consistently throughout the patent process.

Failure to Record Decisions and Action Items:

During an interview, people make decisions and assign action items. These decisions and action items must be recorded accurately in the interview summary to ensure that all parties are aware of what was discussed and agreed upon. Failure to record decisions and action items can lead to misunderstandings and delays in the patent process.

Lack of Consistency:

Consistency is critical in docketing examiner and applicant-initiated interview summaries. All information related to a patent application should be recorded consistently throughout the patent process to ensure accuracy and clarity. This includes the format of the summaries, the terminology used, and the information included.

Failure to Update Information:

Finally, failure to update information in examiner and applicant-initiated interview summaries can lead to confusion and delays. It is necessary to document all modifications to the patent application accurately and promptly in the interview summaries to ensure that all parties are aware of the current status of the application.

In conclusion, docketing errors in examiner and applicant-initiated interview summaries can have significant consequences for the patent process. And It is essential to ensure that all information is recorded accurately and consistently to avoid confusion and delays. Patent applicants and examiners should make a concerted effort to identify and address these common errors to ensure that the patent process runs smoothly and efficiently.

Notice of Appeal:-

The Notice of Appeal is an important document in the US patent process that initiates the appeal process for a rejected patent application. As with all patent docketing, errors in the Notice of Appeal can have significant consequences for the applicant’s ability to appeal the decision. In this article, we will discuss some of the most common errors in US patent docketing in the Notice of Appeal.

Missing or Incomplete Information:

One of the most common errors in docketing a Notice of Appeal is missing or incomplete information. The Notice of Appeal must include all relevant information, including the names of the appellant and the patent examiner, the application number, and the date of the decision being appealed. If this information is missing or incomplete, It is possible either dismiss or postpone the appeal.

Incorrect Dates:

Another common error in docketing a Notice of Appeal is incorrect dates. The Notice of Appeal must be filed within a specific time frame after the decision is appealed. If the appeal is filed too early or too late, it may be dismissed. It is essential to ensure that all dates are recorded accurately and consistently throughout the appeal process.

Failure to Include Required Documents:

Certain documents are essential to the Notice of Appeal, such as the appealing decision, and a copy of the rejected claims. If these essential documents are absent, the appeal might not be acceptable. And It is essential to ensure that the Notice of Appeal includes all necessary documentation.

Lack of Consistency:

Consistency is critical in docketing a Notice of Appeal. All information related to the appeal should be recorded consistently throughout the appeal process to ensure accuracy and clarity. This includes the format of the Notice of Appeal, the terminology used, and the information included.

Failure to Update Information:

Finally, failure to update information in the Notice of Appeal can lead to confusion and delays. It is necessary to accurately describe all changes to the patent application. and promptly in the Notice of Appeal to ensure that all parties are aware of the current status of the application.

In conclusion, docketing errors in the Notice of Appeal can have significant consequences for the patent process. It is essential to ensure that there is accurate documentation of all facts and consistency to avoid confusion and delays. Patent applicants and their legal representatives should make a concerted effort to identify and address these common errors to ensure that the appeal process runs smoothly and efficiently.