Risk Managed IP Docketing Prac ...

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Risk Managed IP Docketing Practices

The value of intellectual property is on the rise. As such, intellectual property assets play an increasingly vital role in supporting businesses across a myriad of industries. This has resulted in an increase in patent application filings and subsequently more critical prosecution related deadlines for a patent practice law firm to manage. The rise in the number of patent applications and the increased emphasis on the value of a company's patent portfolio translates into increased economic and commercial exposure for patent practice law firms if the firm is negligent in securing those rights for its clients.

Figure 1 - Cause of Untimely Filings

Figure 1 Source: CNA Insurance

The Reality

The cost of docketing errors has been valued by the courts to be in the millions. Damages reflect the perceived commercialization opportunity lost by the client and the increased worth IP owners place on its patent assets - all indicative of the high value placed on IP. As a result, firms are under increased pressure to mitigate risk across all areas of law especially around the patent practice. Specific to patent attorneys, the need to address areas of risk is both pressing and extremely challenging due to the following:

Financial impact of patent rights relative to a patent holders' profits
Severity of consequences of missed deadlines in the event that patent rights become irretrievably lost
Unique docketing and filing requirements that vary according to jurisdiction
Reliance on out of country law firms and attorneys to support filings and report deadlines

These multi-million dollar claims serve as an affirmation and a caution to law firms to institute air tight controls around both its primary and secondary docketing protocol. Several high-profile multi-million dollar malpractice claims have been filed against large, well-established patent practice law firms. In all likelihood, these firms probably had fairly rigorous primary docketing controls in place; highlighting the need for a redundant error proof docketing strategy.

Sources of Errors

Although a docketing error may appear to be somewhat minor or insignificant, the consequences can be massive. Some of the most common docketing errors are a result of the following:

Human Errors: Error in the interpretation of information, typographical errors, transposition of numbers, inexperienced docketing staff, or lack of capacity due to some turnover or sudden increase in the volume of work (eg: new portfolios from lateral attorney transfer, new clients, client acquisition)

Insufficient Processes: Absence of processes and workflow associated with docketing. Checks and balances are not sufficient to ensure that statutory deadlines are met, filed, and subsequently cleared from the system. No double docketing and checking of the work performed.

Infrastructure Issues: Including docketing software problems, incomplete rules, undocumented processes and insufficient staff resources.

Communication Breakdowns: Regarding deadlines and due dates with foreign agents.

Docketing Requirements for Law Firms

Patent practice law firms are required to maintain a primary and secondary docket that houses all of the application particulars and deadlines relating to its patent prosecution and maintenance portfolio. This can translate into thousands of docket related entries per year depending on the size of the practice and its prosecution volume. This requirement is unique to the IP practice and mandated by most professional malpractice insurance carriers.

What constitutes primary and secondary docketing is often loosely interpreted. At a most basic understanding, the requirement is that the primary and secondary dockets need to be two separate entries in different calendaring systems and calculated by different individuals within the firm. In many firms, the primary docketing process is generally well established.

The governing philosophy is that the docketing department supports the firm's "primary docket" function, acting as a gatekeeper by tightly controlling all incoming and outgoing correspondence as it relates to the prosecution and maintenance of client's IP rights. Conversely, a firm's secondary docket, commonly referred to as the "double docket", is usually not very well regulated and adherence to the requirement will vary from individual attorney, paralegal and secretary. As such, the control around double docketing is usually weak and makes it almost impossible to reconcile the firm's primary docket with its secondary docket, an important IP safe-guarding process.

A Controlled Docketing and Double Docketing System Is Critical

In order to safe guard an organization from IP malpractice claims, it is strongly advised to institute a true double docketing system. A viable docketing strategy should ensure that at a minimum, critical deadlines in both the primary and secondary docketing systems are congruent, equally controlled, and carry the same weight in terms of dictating the firm's patent deadlines. The mirror docketing actions should also be calculated and made by separate individuals and maintained in two different systems. A comparison of both dockets for the upcoming day should be made on a daily basis to ensure that the firm's docket entries are consistent. Any inconsistencies such as missing entries would be caught in advance and thereby safeguarding against missing the all critical deadline. In addition to the daily docket reconciliation, the primary and secondary dockets should be reconciled on a frequent and routine basis to ensure that the two systems mirror one another. Extendable deadlines and other reminders should be reconciled as well.

There are different options available for supporting a firm's primary and double docketing system. For example, both dockets can be maintained and reconciled internally provided the firm has the proper resources (infrastructure, process and staff) to truly support both dockets. Another alternative is to commission an IP docketing Services Company to fulfil one or both of the docket requirements. The ultimate objective here is the ability to employ the safest docketing strategy.

Perform a Docketing "Health Check"

Docketing functions can weaken overtime and increase a firm's professional risk exposure. Some of the causes include staff turnover, reduced capacity, undocumented processes, an increased volume of work, new portfolio take-on, and changes in patent law requirements.

Accordingly, firms should periodically reach out to its insurance providers or a third party IP consultant who can analyse and assess its current docketing process, infrastructure and staffing capacity to ensure a sound and safe docketing function is in place.

The following questions will help gauge the general "health" of your firm's IP docketing processes. Answer all questions that apply to your firm's current docketing function and then rank its health at the end of the test.

Yes / No	Are only trained and supervised staff members allowed to docket?
Yes / No	Is on-going training and cross-training provided to all members of the docketing team?
Yes / No	Is docketing staff easy to hire and retain in your firm's market?
Yes / No	Are contingencies in place for insufficient staffing, emergencies, sickness, vacations, and other staffing capacity issues that could compromise the firm's ability to docket in a timely manner?
Yes / No	Does the firm have a "docketing task force" or a group of employees cross-trained in docketing that can fill in when primary docketing team members are absent?
Yes / No	Has your firm appointed a senior member of the IP department to monitor the daily docket and confirm that all required filings have been cleared from the docket prior to close of business?
Yes / No	Is a senior member of the firm accountable and responsible for the docketing Department?

Infrastructure Considerations

Yes / No	Is all USPTO and foreign agent correspondence funnelled through the firm's primary docketing organization?
Yes / No	Is a docketing email inbox exclusively utilized by IP clients, USPTO, and agents wherein all prosecution and maintenance matters are centrally received by docketing?
Yes / No	Are members of the patent practice mandated to immediately forward any electronic correspondence they receive directly to docketing?
Yes / No	Is a parallel or double docketing system in place and adhered to, where dates are calculated, maintained, and reconciled independently?
Yes / No	Is IP data stored and maintained within the firm's docketing system periodically verified against public data sources?
Yes / No	When existing cases become the firm's responsibility through new attorneys, new clients or client acquisition, are the case particulars verified against official patent office data?
Yes / No	Is all mail and correspondence docketed within 3 business days of the received date?
Yes / No	Is mail with short response times handled with priority?
Yes / No	Is a Patent Term Adjustment policy implemented that mitigates the loss of the patent term?
Yes / No	Are patent applications filed as soon as possible rather than on the Priority date?
Yes / No	Are docketing entry printouts and corresponding mail maintained in the physical file?
Yes / No	Is all IP related mail and correspondence consistently stamped/ marked to indicate whether it has passed through the firm's docketing department?
Yes / No	Does the firm incorporate a quality control mechanism to measure performance, timeliness and the internal rate of error within the firm's docketing department?
Yes / No	Are docketing processes, infrastructure and staffing capacity routinely reviewed?

Infrastructure Considerations

Yes / No	Does the docketing department reside in a quiet area within the office away from noise and other distractions that could affect concentration levels?
Yes / No	Does the firm use reliable and proven IP portfolio management software from a stable vendor to manage deadlines, contacts and case information?
Yes / No	Is the number of parties who have editable access rights to the firm docketing system tightly controlled?
Yes / No	Are software docketing passwords changed on a frequent basis?
Yes / No	Does the docketing software provide the ability to control access rights by case type and/or country?
Yes / No	Does the software provide an "audit trail" with regards to data changes in each record?
Yes / No	Does the firm's software have the ability to cross-validate the entered PTO data with the USPTO data?
Yes / No	Does the firm have sufficient in-house configuration skills to take advantage of software available functionality?
Yes / No	Is the software sufficiently configurable to complement and enhance the firm's docketing processes?
Yes / No	Does the software support remote access?
Yes / No	Does the firm have a documented disaster recovery plan with respect to docketing information?
Yes / No	Has the disaster recovery plan been tested on a regular schedule?
Yes / No	Is someone within the IP department designated to manage the law updates to the firm's docketing software?

Assessing the Health of Your Docketing System

If you answered "No" to more than three Docketing Health Check questions your firm's docketing function may be in an unhealthy state of risk. While the check-list is not intended to be an exhaustive evaluation of your docketing processes, it does help to identify potential risk areas that may deserve focused attention. If the evaluation yielded multiple areas of risk, you should consider leveraging a third-party specializing in IP risk management to fully evaluate and analyze your firm's IP workflows and processes.

Assessing the Health of Your Docketing System

CPA Global is the world's largest intellectual property service provider supporting more than 40,000 clients worldwide and paying 1.4 million patent and trademark maintenance payments annually. CPA Global's client base is comprised of some of the largest IP practice firms and Fortune 500 companies.

For the past 40 years, CPA Global has partnered with IP practices to deliver risk management solutions associated with back-office and administrative work. Today, CPA Global's Risk Management Program includes IP Consulting Services, Patent Annuity IP software, Docketing and Paralegal Services, Due Diligence Support and IP Recordal Services.

For More Information on CPA Global's Risk Management Program or our Docketing Services, please complete our online contact form and request for a consultant to contact you.

About CPA Global

With clients in over 100 countries, CPA Global is a leading provider of legal process outsourcing services and the world's top intellectual property (IP) management specialist. Founded in 1969, CPA Global provides lifecycle management services for intellectual property such as patent, design and trademark searching, watching, renewals, and portfolio strategy in over 181 jurisdictions. CPA Global is also a leader in the growing market for outsourced contract management and litigation support services, helping law firms and corporations to realize value by managing risk, cost and capacity. CPA Global employs over 1,000 people in 16 offices in 8 countries. www.CPA Globalglobal.com