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 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 with the potential for missed deadlines.

The costs of errors can be astronomical in terms of reputation, risk, liability, and pure dollars. A lawsuit was filed several years ago when a law firm was alleged to have missed, by one day, a Patent Term Extension filing on behalf of a pharmaceutical client. The company alleged that by missing the deadline it lost $2 billion in sales. While the company eventually won its argument and was awarded four years of PTE, it took a decade to reverse the effects of that missed deadline.

So why do docketing errors continue? Ultimately it comes down to five main points.

1. 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 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. 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 specialize in IP, can recommend best practices in docketing, help develop or tweak your docketing manual, and remove the burden of finding, hiring, training, and retaining administrative staff.

2. Lack of robust systems

Your organization’s IPMS should have an IP-specific rules engine that automatically creates due dates when staff enter certain information. Using either a generic legal docketing system that does not include IP laws, or software 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.

3. Bad data

“Garbage in, garbage out” is certainly true in IP docketing. Data inaccuracy can creep into any sound docketing system, from ill-trained staff, to files brought in from M&A activity, to staff turnover, to the simple reality that humans make mistakes. Having clean data is imperative to reducing the risk of lapsing cases.

• Some IPMS systems offer data verification to compare your records against the PTO. Unfortunately most of these features are underwhelming, as they simply check whether field A in the IPMS equals field A at the PTO. Patent Application 123.4 and Patent Application 123-4 come across as an error when in fact it is not, leading to hundreds or thousands of false errors to sort through.
• The most effective way to reduce risk is to use third-party solutions that proactively identify actual statutory errors in your data while eliminating the white noise. 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.
• Audit. Many organizations know they have legacy data issues but rarely have the bandwidth to identify every possible issue. Companies and law firms may consider hiring a third party to conduct a comprehensive audit of the entire docket. The cost of such a project pales in comparison to the cost of missed filing deadlines.

4. Process

There are myriad philosophies on how best to staff an IP organization, should one person specialize in each specific task, or should everyone be a generalist? 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 a changing IP landscape while remaining efficient. Organizations should thoroughly review their docketing manual and processes every 5-10 years, and we highly recommend bringing in a third-party IP consultancy to provide objective industry experience and advice.

5. Lack of thorough double docket

Most insurers require a “second eye” or double docket, an extra team dockets the same information into a separate system such as Outlook, Excel, or even paper, and information is compared between the two data sources. Many firms are forced to cut corners in their double docketing process: they struggle to stay fully staffed even to update their primary docket, or it is viewed as less critical and falls into 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.

Risk is inherent in running an IP docketing operation, and the potential for costly errors is found throughout the entire IP lifecycle. Companies and law firms that address the five points above are those most 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.