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.