Intellectual Property Docketing

Many clients rely on outside counsel (i.e., law firms) for docketing their intellectual property matters.  Docketing systems track patent and trademark matters, including prosecution and maintenance of both domestic and foreign matters.  Such systems are rule-based systems that require maintenance and continuous updating.  Docketing activities are generated based on data (i.e., dates) input into the system. 

Some systems purportedly interface with the USPTO’s Patent Application Information Retrieval system (PAIR) and populate the docketing system records with data from PAIR, to minimize manual input requirements

Some docketing systems retain copies of documents, including form documents, such as letters, and email templates that can be merged with data records, for communicating with clients. 

Docketing systems may also include forms, such as invention disclosures and templates (e.g., responses to Office Actions) that can be completed for filing with the USPTO

Docketing systems may maintain completed records, including completed invention disclosures, letters of controversies, opinions, and transactions

Docketing is often provided without a direct cost to the client because the outside counsel (i.e., firms managing the docket) often benefits greatly by serving clients in connection with the docketed matters.  However, there is a great deal of liability to the outside counsel managing the docket if a critical date is missed and a matter goes abandoned

Some docketing systems permit limited remote access by clients to the clients' matters through remote portals.  This can be useful to clients for reviewing intellectual property matters and rendering decisions (i.e., instructions and fee authorizations) related to the matters. 

There is a myriad of docketing systems from which to choose.  Computer Packages, Inc. licenses IP management software that fetches $25,000 USD a year, plus $1.00 USD per active recordA comparable system, PATTSY, is provided by OP SolutionsThe cost for setting up this system is in the order of $20,000 USD.  Tack onto this an annual fee in the order of $3,000 USD.  Some providers, like Computer Patent Annuities (CPA) Global, offer an entry level system, like FoundationIP, which can be more affordably licensed for an annual fee exceeding $3,000 USD a year. 

Firms that provide volume services to repeat clients can advantageously absorb the cost of a docketing system in exchange for revenue generated by servicing clients in connection with the docketed matters.  This can be detrimental to clients because it commits the client to service by the firm.  It becomes exceedingly more difficult to change firms the longer a firm manages a client’s docket.  As more and more records are managed by a firm, the cost of moving the records, or re-entering the data into a new docketing system, increases and may become somewhat cost prohibitive.  Investing in a system, like FoundationIP, or even PATTSY (with its upfront cost) could allow a client to manage its own docket and release it from bondage with any particular outside counsel, and thus permit the client to periodically shop for new counsel

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