Blogs

06 Sep

By: Bikram Sethi

Intellectual Property (IP) professionals realize the critical nature of maintaining an accurate docket to track statutory deadlines

Intellectual Property (IP) professionals realize the critical nature of maintaining an accurate docket to track statutory deadlines. In-house counsel must ensure they protect their company’s assets, while law firms must keep their client’s IP enforceable. IP prosecution is a very date-intensive practice, with PTOs often having little leniency for blown deadlines. Missed due dates can invalidate IP rights and could present malpractice issues for law firms.

For decades, many reputable vendors have been providing IP Management Systems (IPMS). When your firm’s docketing team enters a mailing date from the PTO, most viable systems will calculate not only when the next step in the prosecution lifecycle is coming due but also provide customized “tickler” reminders so attorneys can stay on top of their workload. Despite organizations spending tens or hundreds of thousands of dollars on these systems, errors persist.

According to the Lawyers Mutual Liability Insurance Company of North Carolina, “the most frequent cause of a malpractice claim continues to be a missed statute of limitation or other deadline.” USI Affinity says that “20% of legal malpractice claims in the United States are attributable to administrative errors, including a law firm’s failure to calendar filing deadlines.” A study of global docketing groups indicated that at least 1% of the cases touched during the docketing process have a critical error which has the potential for missed deadlines.

The costs of errors can be astronomical in terms of reputation, risk, liability, and pure dollars. A 2022 report by insurance broker Ames & Gough stated, “It’s clear that the number of claims resulting in multimillion-dollar payouts has continued to increase on a year-over-year basis.” A lawsuit was filed several years ago when a law firm was alleged to have missed – by one day – a Patent Term Extension (PTE) filing on behalf of a pharmaceutical client. The company in question alleged that by missing the deadline for PTE, it lost $2 billion (yes, with a “B”) in sales. While eventually, the company won its argument that the PTO was too inflexible and was awarded four years of PTE, it took the company a decade to reverse the legal effects of that missed deadline. The firm faced a lawsuit for an unspecified amount of damages, but it was undoubtedly costly in terms of dollars, future insurance premiums, and reputation.

All of this said, despite knowing the risks, how costly they can be, and investing in tools, why do docketing errors continue? Ultimately it comes down to five main points:

Training – IP docketing is so much more than “data entry”. Great docketing teams must understand what they are entering into the IPMS, why, and the downstream impacts of their actions. Staff must be proficient in the US and Foreign IP rules as well as understand the nuances of how their IPMS works. Organizations should work with their vendors to conduct ongoing training sessions and implement best practice recommendations.

  • Staff turnover and the need for training are highly correlated. The “Great Resignation” has led to significant turnover in IP administrative staff. Every time you hire a new employee, risk can be introduced while they acclimate to your firm’s processes, procedures, and systems.
    • Law firms and corporations may consider using a third-party company to assist with administrative tasks. Good outsourcing vendors must specialize in and understand the nuances of IP, can recommend best practices in docketing, help your organization develop or tweak its docketing manual, and remove the burden of finding, hiring, training, and retaining administrative staff. Competent outsourcing companies should have a generous compensation model and culture to retain top talent. Any company looking to outsource administrative work should question the vendor on their work culture, staff turnover, what steps they put in place to retain staff, and what process recommendations they can provide to their customers to streamline their operation.

Lack of robust systems – Your organization’s IPMS should have an IP-specific rules engine that automatically creates due dates when staff enters certain information. Using either a generic legal docketing system that does not include IP laws or another software that is not designed for docketing (such as a CRM) is akin to playing with fire – you are eventually bound to get burned. There are several options for viable IPMS with various modules, features, benefits, and pricing models that should meet any organization’s requirements.

Bad data – The computer science term “Garbage In Garbage Out”, or the GIGO effect, is certainly true in IP docketing. Data inaccuracy can creep into any sound docketing system. A variety of reasons causes this – ranging from ill-trained staff to bringing files into your system from M&A activity (and thus no certainty the other organization’s data is accurate), to staff turnover, to the simple reason humans are doing this task and mistakes occur. Having clean data is imperative to reducing the risk of lapsing cases. There are a few solutions available to address this problem.

  • Some IPMS systems offer “data verification” to compare your and PTO records. Unfortunately, most of these features are underwhelming as they simply look to see if field A in the IPMS equals Field A at the PTO. Thus, Patent Application 123.4 and Patent Application 123-4 will come across as an error, when in fact, it is not. This leads to hundreds or thousands of “errors” showing up in your IPMS data verification module. It becomes challenging, if not impossible, to sort through all the false errors in search of actual data problems. Additionally, if cases are accidentally marked as “unfiled”, they may never even go through the data verification engine.
  • The most effective way to reduce risk is to use third-party solutions that can proactively identify actual statutory errors in your data while eliminating the white noise that most companies find by using their IPMS capabilities. These tools should understand IP logic and identify procedural mistakes – for example, if a filing receipt is docketed, there should always be a filing number and date. Robust systems can identify issues like these; “free” modules that come with an IPMS may not.
  • Audit – Many organizations realize they have legacy data issues and errors but rarely have the bandwidth to go back and identify every possible issue. This problem can be compounded by the false-positive errors mentioned above with some IPMS docketing systems. To solve this problem, companies and law firms may consider hiring a third party to conduct a comprehensive audit of the entire docket. This is a manual process, but the cost of such a project pales compared to the costs of missed filing deadlines.
Process – There are myriad philosophies on how to best staff an IP organization – for example, should one person specialize in each specific task? Or should everyone be a generalist with overall knowledge of all process aspects? Each has pros and cons, and there is no one-size-fits-all approach. Most organizations have documented docketing processes that have been in place for years, if not decades. The challenge is that these processes are rarely revisited to ensure they are aligned with reducing risk in the changing IP landscape while doing so as efficiently as possible to help the company or firm save money. Organizations should thoroughly review their docketing manual and processes every 5-10 years. We highly recommend bringing in a third-party IP consultancy to provide objective industry experience and advice.

Lack of Thorough Double Docket – Most insurers require a “2nd eye” or “double docket” – an extra team dockets the same information into a separate system such as Outlook, Excel, or even paper. Information is compared between the two data sources, so quality checks are in place to further reduce the risk of a missed deadline. Many firms are forced to cut corners in their double docketing process – they struggle to stay fully staffed even to update their primary docket (see point 1a), or it is viewed as less critical and thus falls in the “I’ll take care of it tomorrow” category. Commercially available tools can be leveraged to properly audit the data that is docketed into your organization’s IPMS.

As outlined above, the risk is inherent in running an IP docketing operation. The potential for costly errors is found throughout the entire IP lifecycle. It is one of many reasons IP departments typically need more people, systems, and budgets than other areas of law. Companies and law firms that address the five points above are those who are likely to avoid those costly errors. Proper investment in technology, people, process, and data is required to ensure your IP department eliminates as much risk as possible.

Trexo Global is a modern company focused on solving real-world problems for IP professionals. Founded by a team of senior executives with 50+ years of combined experience servicing IP law firms and corporate IP departments, our state-of-the-art products and services help IP professionals maximize their time. We endeavour to provide solutions that fit our customers’ needs using the right balance of People, Process and Technology. If you’d like to learn more about our company or how to reduce docketing risk in your organization, please get in touch with info@trexoglobal.com

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