1 January 2011CopyrightDomenic Leo and Suzie Kiefer

21st century IP management — docketing 2020

The identification of IP as a primary vector in corporate valuations has created a perfect medium for dissection, analysis and enhancement. While the management of IP has evolved, certain facets of the business of IP have not.

Implementation of best practice standards for intellectual property management requires both the desire to examine incremental improvements and recognition of the constant changes that have an impact on work. In practice, the best opportunity for incorporating new challenges presented by dwindling corporate budgets and the restructuring of patent and trademark offices can be found in database programs and supporting processes designed to anticipate and adapt to change.

These databases, which demand accurate IP information fundamental to a corporation’s growth and sustainability, need to be nurtured using the most efficient means possible.

The accelerating change of legal guidelines and regulation of IP means that lawyers should have plenty of work for the foreseeable future. At the core of the creation, protection and commercialisation of intellectual property assets is the IP professional with the legal training and experience to understand global markets and regulations.

Historically, this has meant separate processes for taking in concepts and requests, filling out the documentation needed for formalisation, corresponding with stakeholders and other interested parties, and recording critical deadlines needed to complete these activities.

One necessary tool inside the successful practitioner’s case management system is the reliance on a solid calendar or docketing component. According to Dictionary.com, a ‘docket’ is “[a] calendar of the cases awaiting action in a court or a brief entry of the court proceedings in a legal case”.

According to the definition, and to common industry usage, docket means both the activity of entering information and a listing of items to be done. The ‘book’ in which all things are entered is different—IP applications and databases are today’s book for storing this information.

The goal of implementing efficient docketing is to minimise costs and maximise benefits by limiting the amount of manual data entry without any reduction in the quality or quantity of information produced by the process. The basic concept is well known among those vendors and consultants wishing to offer their wares to corporate and legal professionals. What is not as well known is that very, very few of these vendors actually provide docketing workflow.

In the historical context of intellectual property portfolio management, docketing involves entering actions and due dates into a calendar. In the context of Docketing 2020, this process is more workflow-driven, allowing the IP professional to not only maintain their database, but to use the same effort required to track the action to complete all the other activities associated with it.

The historical context of docketing

The point of docketing in IP is the recording of an action or event together with a corresponding date for an action or an event. Many current portfolio management systems, for example, require the user to enter a due date for an action in the future. To ensure that that date is not missed, reminder dates are also entered into the database system.

These actions can include the filing of a petition, a Paris Convention date, a reminder to a client for a decision on payment, completion of an assignment, or any number of activities—all requiring the information in the base database system.

Traditionally, IP management systems allow actions to be entered using either free text or a code that relates to a more complete description. Though data entry is a bit more burdensome, a code selected from a separate table to store a standard set of codes for data entry minimises error and helps to ensure consistency in data entry.

Additional incremental efficiencies can be found relatively simply. For example, most docketing applications use a two-field data entry system for tracking events—one field for a description of the action event and a second field indicating a ‘due date’. This allows the user to indicate that an event, such as the filing of an affidavit, has been filed and the date it was filed.

Other IP applications include a third field allowing for the entry of a ‘completed’ date. As actions or events are received, or recorded as being due, the action or event is entered into the system with a corresponding due date. As the action or event is being finalised, staff then enter a date indicating when the relevant action was completed.

“Docketing professionals recognise not only the many current layers of IP management, but global trends demanding a need for an overall, dynamic IP management strategy. Electronic filing initiatives by the world’s leading IP offices, including the USPTO, represented the first step in the pursuit of the ‘holy grail’ in IP practice—the paperless office.”

A second method used to limit the number of keystrokes required for docketing is to automatically generate actions and dates. These database systems include thousands of embedded ‘rules’ that calculate dates such as expiration and next tax due dates for every type of patent or trademark filing, anywhere in the world. Though most applications lack this degree of depth, internal validation of any type is a valuable asset that will assist in the accuracy of the data in the system. The third aspect of docketing concerns the extracting and reporting of actions and corresponding deadlines from the docketing database to attorneys, business managers and other interested parties. A docket report is a list of selected patent or trademark records from the database presented in a specific format. The reports are designed to distil the data into summary lists that can be prioritised. The search criteria used to extract the records and the manner and format of presentation will vary from firm to firm.

Historically, the docket report has been on paper, the product of a very manual and labourintensive process. The administrator in charge of docketing on a daily, weekly or monthly basis executes a paper report listing matters requiring attention. The report, sorted by a manager or attorney, is then distributed.

Docketing 2020: next generation —the evolution of the workflow

The need to optimise value and minimise costs has accelerated the examination of this 20-yearold methodology of data entry. Happily, the convergence of technology, electronic submission and billing, and automated tools have ushered in the new era—the ability to provide software tools/services at a cost that truly allows the process of data entry to incorporate activities in addition to docketing.

Docketing professionals recognise not only the many current layers of IP management, but global trends demanding a need for an overall, dynamic IP management strategy. Electronic filing initiatives by the world’s leading IP offices, including the USPTO, represented the first step in the pursuit of the ‘holy grail’ in IP practice— the paperless office.

As mentioned above, traditional docketing systems involve manually adding docket actions and then manually clearing, completing or deleting them. A ‘workflow’ is similar to the steps involved in a traditional step-by-step docketing process, but replaces the manual steps with automation.

Manual docketing, as discussed above, involves the burden of making certain to include all the required steps in a particular docket process every time it is needed within any given record, whereas a workflow is created once and sets up the docketing process to automatically update to the next docket action. Instead of clearing, completing or deleting a particular action, one will simply ‘register’ the next action due for the pending deadline.

‘Register’ simply means to click on the next relevant action within the workflow to activate it.

Leading case management systems, such as Patricia® by Patrix, provide corporations and law firms with an enormous amount of capability. Nearly all aspects of an IP practice can be automated and the results displayed on a screen in myriad ways with little or no manual intervention.

Patricia® uses the workflow model to replace traditional database systems. While no system will totally automate the docketing process, the use of workflows can greatly enhance the integrity of any IP process by mitigating risk associated by missing critical deadlines.

Setting up an effective workflow will require thoughtful consideration; however, the results will greatly improve work productivity and assist in a consistent docket process.

Domenic Leo is president of IP services at Patrix. He can be contacted at: dlo@patrix.com

Suzie Kiefer is a project leader at Patrix. She can be contacted at: skr@patrix.com

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