Every patent application is accompanied by due dates – usually, many due dates – and all of them require action.
Using a docketing program to keep track of due dates is a common practice for many IP-driven companies. However, docketing can pose several challenges—and even a single mistake can end up costing patent owners substantial amounts of time and money.
From calendars to docketing to automated tools
Most law firms also employ some form of docketing system to help track and prioritize the legal matters they are handling on behalf of their clients. Until about the mid-1980s, patent attorneys typically used wall calendars or large ledgers to record the pertinent due dates related to the patents and applications they were managing.
Once the tech boom hit, however, the paper approach could no longer handle the volume of rapidly expanding IP portfolios. To address the growing need for better IP process management, docketing software programs emerged.
Docketing programs typically rely on a database of country-specific laws that are used to calculate due dates along the lifetime of a patent from application to expiration. For example, if the owner of a qualified patent wants to extend the patent term, an Application for Extension of Patent Term must be filed with the USPTO. That application “may only be submitted within the sixty-day period beginning on the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use.” Once the applicable dates have been entered into a docketing program, the system will calculate the date by which that application must be submitted.
These systems, however, are not infallible, and one mistake could prove extremely costly.
Human or software error
As with most software, the results coming out of a docketing system are only as good as the data that goes in. Docketing systems rely on humans to enter the pertinent data upon which their calculations rely. That approach leaves the process open to human error. Software programs, too, can contain errors. Both types of errors can be costly for IP owners.
In the example above, the window of time to submit the application for extension begins on the date the product received permission and ends 60 days later. If the person entering the application data enters the date of approval incorrectly, or if the docketing software incorrectly calculates the due date using a parameter of “two months,” for example, rather than “60 days,” the IP holder could miss the application deadline.
Hefty price tag
Most docketing systems are expensive to purchase because they are expensive to build and maintain. As the systems depend on a country’s specific set of patent laws, docketing companies must research the laws and constantly update the software. In addition, in an arena where one mistake can cost millions, the software companies must be insured against liability, a cost of doing business that is passed on to the end user.
Companies with just a handful of intellectual property assets to manage may choose not to invest in docketing software and may choose to use an internal system such as basic spreadsheets. These also depend on personnel to enter the data, thereby leaving the process open to human error.
Time is money
One of the other drawbacks to traditional docketing approaches is the time delay factor. Once a document is filed with the USPTO, it can take weeks for the notice to arrive and then be entered into the docketing system. In the race to secure intellectual property assets, delays of even just a few days can put a company behind its competitors.
For patent-driven companies, then, the spectacular rise of large-scale data mining applications in recent years represents an overdue revolution for IP process management. IP docketing is about to join the lengthening list of error-prone, legacy practices that have been upended by new information technology.
Today’s specialized data analytics tools can help eliminate the issues of data entry integrity, high costs and time delays associated with traditional docketing systems. For those responsible for a company’s IP management, the time has come to reevaluate the methods by which they oversee the IP process.
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