Docketing Best Practices
IP Docketing Best Practices
Master patent docketing best practices to minimize risk and prevent costly errors that threaten your clients’ IP.
Understand & Avoid IP Docketing Errors with Black Hills AI
IP docketing errors are the number one source of patent prosecution malpractice claims.
While there are innumerable ways docketing errors can arise, there are common sources of these errors that you should know intimately as an IP professional.
Learn about common patent prosecution docketing failure modes and malpractice risks, as well as the solutions that Black Hills AI provides, in the sections below.
Navigating Patent Docketing File Transfer Risks
Docketing file transfers represent one of the riskiest events in the IP life cycle of a patent. The process is often unstructured and disorganized, creating numerous opportunities for costly errors and omissions.
A primary risk is inaccurate bibliographic data, such as incorrect priority dates and serial numbers, which can be introduced during manual data transfer between systems. These errors can derail the entire docketing process. Delays in filing powers of attorney can also leave a firm without Patent Center access, meaning new correspondence is not received and important deadlines can be missed.
If files are transferred before a receiving firm has a system set up, new docketing items may be set aside and overlooked. This increases the risk of missing critical deadlines like provisional, Paris Convention, or PCT deadlines, which can result in the permanent loss of rights. Manual processes using spreadsheets or “loose” lists make it nearly impossible to keep track of a bulk transfer, making errors inevitable.
This is compounded by the fact that transferred files from prior counsel may be incomplete, providing an unreliable source for docketing.
A Strategic Approach to Mitigating File Transfer Risk
A strategic approach is essential to mitigating the risks of file transfers. Start by getting a comprehensive docket report from the transferring firm that covers the next twenty years.
This report is your primary tool for verifying all items were successfully transferred and that no deadlines are missed. It is also a best practice to request a well-organized list of files to be transferred, ideally in a uniform format across all matters.
Speed is critical in this process. Opening the files you need quickly at the receiving firm minimizes the chance of individual docketing items getting lost in the shuffle.
Whenever possible, obtain file histories directly from the source, such as the USPTO or other foreign patent office sites, rather than relying solely on the transferring party’s files, which may be incomplete.
For U.S. files, filing powers of attorney promptly is crucial. This ensures you receive new docketing in the normal course of business and have access to Patent Center for verifying bibliographic data. Maintaining strong control over your list of files is also key, and using a system that prevents accidental data deletion is a must.
Once the transfer is complete, confirm the transferred list with the previous firm and meticulously compare the old docket with the new one to ensure all items match.
The final step is to validate all bibliographic data, especially priority dates, and verify all docketing to complete the process.
How Black Hills AI Can Help With Patent Docketing File Transfers
At Black Hills AI, we recognized that manual file transfers were prone to error and unsuitable for automation. That’s why we developed our File Opening Supervisor (FOS) and Amazing Grace™ (AG) file transfer and data validation solutions.
Our FOS and AG systems provide a structured approach to file transfers. They record a list of files in a structured database, protecting it from corruption. The systems connect to all major public and private data sources to validate bibliographic data before it’s entered. Any necessary corrections are stored with a full audit trail in FOS. Our “multilingual” systems can also use serial numbers as a key index to validate data, even if the formats are different.
Furthermore, our FOS system automatically builds files from file histories downloaded from patent offices and helps generate powers of attorney for the USPTO. Finally, our DocketSaver™ technology verifies all docketing as new items are added to a customer’s system. This collective approach addresses every important best practice in a file transfer scenario, making the process seamless, accurate, and secure.
On-Docketing Risks
On-docketing is vulnerable to a wide variety of human errors that can have serious consequences.
Errors often stem from accidental skips of items, such as overlooked back-dated correspondence from the USPTO. Another common source of errors is incorrect data entry, including wrong file numbers for foreign applications, incorrect “base dates” used to calculate due dates, or selecting the wrong docketing template.
Mistakes also occur due to incomplete data, which can lead to missed renewal payments and corrupted bibliographic information that affects critical deadlines.
On-Docketing Best Practices
To safeguard against these risks, a solid docketing process is essential. The first line of defense is a highly reliable docketing team with a strong attention to detail.
This team should follow a well-defined process with safeguards to prevent sloppy, inconsistent work that inevitably leads to errors and liability. A well-established docketing system with a good API is also crucial for enabling digital transformation.
It’s important that your IP data is clean and accurate, as missing or incorrect information is a root cause of malpractice risks. The most important safeguard is a “second pair of eyes” review. This can be done manually or with an automated system like our DocketSaver™.
This review helps catch routine errors such as incorrect matter data or a wrong docket action. For non-recoverable deadlines, such as those for provisional, Paris Convention, and PCT filings, a very strong safeguard is needed.
Ideally, two different docketing systems should systematically track these dates, with attorneys and paralegals keeping the dates on their personal calendars as well.
Another best practice is to have specialists responsible for de-docketing critical deadlines from a second system only after confirming the proper documentation is in place.
On-Docketing Solutions From Black Hills AI
Black Hills AI offers several solutions to help you avoid on-docketing errors and malpractice claims. Our Amazing Grace™ data validation system verifies and corrects IP data that has been corrupted by transcription errors and finds missing matters.
Our DocketSaver™ service is an automated error checker that verifies every document from the USPTO’s portal and makes it onto your docket. It provides a weekly report to ensure all new correspondence has been properly docketed.
Our DualDocket™ subscription service automatically maintains a standardized dual docket of all critical deadlines in a separate system, providing you with a weekly report of upcoming deadlines. This ensures that you only de-docket items after confirming the correct action has been taken.
Finally, our SureDocket™ automated services include built-in verification and, with our de-docketing service, track critical deadlines in a separate system to ensure proper documentation before any dates are removed.
Decoding De-Docketing Risks
Dedocketing, or removing deadlines from a docket, can be just as problematic as not getting an item on the docket in the first place, if not worse. These errors are most dangerous for non-recoverable deadlines, such as provisional conversion and foreign filing deadlines, where a mistake can lead to the permanent loss of rights.
A primary vulnerability is the “single point of failure” risk, where a single paralegal or attorney can dedocket a critical date without a “second pair of eyes” to verify their action. These mistakes are often undetectable until it’s too late.
Client instructions can also contribute to this risk. Ad hoc instructions sent via email or phone can be messy and confusing, leading to a deadline being dedocketed from the wrong file. This can happen even when the person believes they are taking the correct action, simply by choosing the wrong file number.
How Black Hills AI Can Help With De-Docketing
Black Hills AI offers several automated solutions to help you avoid common dedocketing errors and mitigate malpractice risks.
Our Amazing Grace™ data validation system can verify and correct IP data corrupted by transcription errors. The DocketSaver™ service acts as an automated error checker, verifying that every document from the USPTO’s portal makes it onto your docket. This service provides a weekly report to verify all received items and helps with a “second eye” review.
For critical deadlines, our DualDocket™ subscription service automatically maintains a standardized dual docket of all critical deadlines in a separate system. This ensures you only de-docket an item after you’re comfortable with the action taken.
Finally, our SureDocket™ automated and semi-automated services include built-in verification, and when you sign up for our de-docketing service, we also track your critical deadlines to ensure there is proper documentation of a filing or non-filing event before any dates are removed.
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