Docketing Best Practices - Black Hills AI

Avoid IP Docketing Errors

IP Docketing Errors are the Number One Source of Patent Prosecution Malpractice Claims.

Learn About Common Patent Prosecution Docketing Failure Modes and Malpractice Risks

Docketing Failure Modes

While there are innumerable ways docketing errors can arise, there are common sources of these errors, and you should know them cold.

File Transfers

On-Docketing

De-Docketing

File Transfer Risks

File transfers are one of the riskiest events in the IP life cycle of a pending or issued patent. Here is a summary of file transfer issues:

File transfers are unstructured and “messy.” This means there are many opportunities for errors or omissions.
Bibliographic data can arrive with errors or errors can be introduced as it is manually transferred between systems. Bibliographic data errors can cause a lot of mayhem as priority dates and serial numbers are critical to getting items in the right place and docket dates correct.
The delay between the transferring firm sending the file and the acquiring firm fully taking over representation also presents opportunity for error or items slipping through the cracks. A delay in getting powers of attorney filed at the USPTO means that the receiving firm has no Private PAIR access and does not receive new correspondence generated immediately after the file transfer. Likewise, there is often a similar delay in instructing the foreign agents of the new U.S. correspondent. In this gap period, docket items must be manually forwarded from the transferring firm and this can result in docketing misses.
If the receiving firm does not yet have a file set up, there is a risk a received or forwarded item will not get docketed as it has to be set aside for later processing. This can result in routine errors as well as the very serious errors involved in missing provisional, Paris Convention and PCT deadlines, with rights being permanently lost, or maintenance fees being missed.
Because docketing for all past correspondence with outstanding docket dates must be done in a non-standard manner (i.e., in bulk vs. as it arrives each day during the normal course of business) there is a difficulty keeping track of which items have been docketed and which have not, and indeed even if an item needs to be docketed at all. All these unstructured moving parts are challenging to keep track of, and errors are almost inevitable if you are using a manual process working from a spreadsheet or other “loose” list.
Many times, docketing has to be done without access to a well-kept file. For example, prior to getting access to Private PAIR in the USPTO, US docketing must be done using files obtained from the transferring counsel. Prior counsel’s files may be incomplete, so the source data is not reliable in many cases.

File Transfer Best Practices

Get a Comprehensive Docket Report from the Transferring Firm. Get a comprehensive docket report for the next twenty years from the transferring law firm or department. This docket will be used to make sure now deadlines are missed while the files are being transferred, and to verify that all items were successfully transferred to the new docket once the transfer is complete.
Keep a Well-Organized List of Files to be Transferred. Request that the transferring firm provide you the list of matters they are transferring in a format that you prefer, and on a uniform basis across all matters. This is not always possible, but it is a best practice when available.
Open Files Quickly. Opening the files you need quickly is extremely important. The faster the files are opened at the receiving firm or department and ready to use, the less likely it is that individual docketing items will get lost in the shuffle during the transfer.
Get Original Documents. Obtain as many file histories directly from the source, as opposed to the transferring party. For example, get file histories from the USPTO, EP Register, Chinese PTO site, or other foreign patent office if possible.
File Powers Quickly. For U.S. files get the powers of attorney filed quickly so the transferred files mean they can be added to the receiving teams’ USPTO customer number. This assures that new docketing can be received and processed in normal course of business. It also allows access to private PAIR so that bibliographic data and official priority dates can be accessed and used to verify files that are opened.
Maintain Strong List Control. It is critical that the receiving team has strong control of the list of files to be transferred, and that the lists are kept in a form that guards against accidental deletion of data, or accidental hiding of rows of data in a spreadsheet.
Confirm Transferred List. Once the transfer is complete, get the transferring firm to confirm that the list of files you opened matches the list of files they sent.
Compare Old and New Docket. Check that all items on the docket provided by the transferee matches the items on the docket at the recipient organization.
Validate All Data. Finally, all bibliographic data needs to be validated, especially priority dates that determine filing deadlines still in play, and all critical and non-critical docketing should be verified to complete the process.

How Black Hills AI Can Help With File Transfers

Over the years we have been called upon to handle a large number of file transfers for our customers. We realized that unstructured file transfers were rife with opportunities for mistakes and unsuitable to facilitate automation. So, we did something about it and created our File Opening Supervisor (FOS) system and Amazing Grace™ (AG) file transfer and data validation solution.

Our highly experienced file transfer team works with the AG system to help transfer your files. Our FOS and AG systems do several things that collectively address all important best practices for file opening and docketing in a file transfer scenario.

First, our FOS system records in a structured database a list of the files to be transferred and protects that list from accidental corruption or deletions.

Second, both the FOS and AG systems are connected to all major sources of public and private data and can validate all bibliographic data before it is entered into the customer’s docket system.

Third, if there are any corrections or alterations required to be made to the data imported from the transferring firm, all changes are stored and have an audit trail in the FOS.

Fourth, using a concordance between the serial number formats in the AG system and the customer’s docketing system, our FOS and AG systems are “multilingual” in file formats allowing data validation to progress using the serial number as the key index even when serial number formats are different.

Fifth, the FOD system is connected to our automated docketing platform allowing it to automatically build out files from file histories downloaded from PAIR, the EP Register, and other patent offices. The FOS even helps automatically generate powers of attorney to be used to update the transferred files at the USPTO and get added to the customer number. In addition, our DocketSaver™ technology allows us to verify all docketing added to a customer system as new docket items are added.

On-Docketing Risks

There are several different on-docketing errors and many more to be discovered due to the infinite variety of failure modes possible. Most of these errors, however, are due to human error. Here is a summary list of docketing error sources:

Accidental skips occur when an item sent to a law firm or department doesn’t make it onto the docket. This used to happen with misplaced mail and now arises when items in the USPTO’s docketing portal are not successfully added to the docket. The USPTO occasionally adds back-dated correspondence to the portal that is overlooked.
Wrong file errors occur when docketing is entered in the wrong matter, which is one of the more frequently encountered errors, especially for foreign applications.
“Base date” errors occur when the wrong base date is used to calculate a due date. For example, the wrong mailing or transmittal date is entered by a docketer, or the wrong priority date is used for a file, thereby generating an incorrect provisional, foreign filing or PCT deadline.
Wrong “action” or “template” errors occur when the wrong docketing system code is selected to calculate the due dates for the item being docketed.
Incomplete matter data errors occur when issued matters are missing from your system resulting in accidentally dropped renewal payments.
“Dirty”, corrupted, or faulty bibliographic can result in the wrong priority dates being used to calculate critical, unrecoverable deadlines.
There are many other possibilities, but most all are human error is the root cause for many, including typographical errors and errors resulting from using the wrong docket action.

On-Docketing Best Practices

The first line of defense. The first line of defense in any docketing process is to staff your docketing team with one or more professionals who has exceptional attention to detail, is highly reliable, and has a passion and capacity for learning all the rules and process that are required for an excellent docketing function.
Docketing Process. A well-defined and strongly enforced docketing process is also critical to success. It should include at least the most basic safeguards noted below and be diligently followed. Sloppy, inconsistent, or haphazard docketing process will inevitably result in errors and liability.
Docketing System. A well-established and time-tested docketing system with a good API to enable digital transformation is critical. There are a number of these in the market, including those from CPI, Patrix, CPA Global/Clarivate, and AppColl. Anaqua lacks an open API so is not advantageous to work with due to its inability to connect to readily connect to other systems in the growing IP subscription service ecosystem.
Reliable Data. It is important to keep your IP data “clean” and accurate. Inaccurate or missing information is a root cause of some of the worst malpractice risks.
“Second Pair of Eyes” Review. Probably the most important line of defense for any docketing process is a “second pair of eyes” review, either done manual or automatically as Black Hills AI has now made possible with its DocketSaver™ system. This second pair of eyes can be done by the attorneys or paralegals who are responsible for preparing responses or filings, or a member of the docketing department can do this immediately after the docketing is done in the first instance. This review will catch most of the “routine” errors such as incorrect matter, erroneous base date, wrong docket action selected, and so on.
Non-Recoverable Docket Dates. There needs to be a very strong safeguard against errors that are non-recoverable. These deadlines are deadlines for filing a regular U.S. application claiming priority to a provisional, Paris Convention deadlines, and PCT national stage filing deadlines. Ideally, there should be two different docketing systems tracking these dates on a systematic basis, and paralegals/attorneys should keep the dates on their personal calendars. Some firms will maintain two separate docketing systems kept up by two different teams (most of the time only for critical, non-recoverable deadlines), others use separate docketing systems kept by the same docketing team. The docketing systems can be two separate instances of the same docketing platform (like two instances of CPI).
De-docketing. Another best practice is to have specialists responsible for de-docketing critical deadlines from a second docketing system only if the proper documentation is in order declining a further filing or the matter has been filed per the deadline. While this seems like a lot of effort, you will wish you had done it the first time you miss a critical deadline due to failure of your docketing process.

How Black Hills AI Can Help With On-Docketing

Black Hills AI has several ways it can help with on-docketing to help avoid common failure modes and avoid malpractice claims, including:

Our Amazing Grace™ data validation system can verify and correct all your IP data corrupted by data transcription errors and find missing matters that were accidentally omitted from your matter set, as can happen during file transfers.

Our DocketSaver™ automated docketing error checker service verifies that every document sent by the USPTO through its portal finds its way onto your docket. It requires no installation or integration, and gives you a weekly report to verify everything received the prior week has made it onto the docket. All it requires is access to your PAIR portal with a simple certificate, and a routine docketing report that is generated from your docketing system. This will accomplish several best practices including second eye review and verification that the correct dates are on your docket for all items received from the USPTO portal. Learn More about DocketSaver™

Our DualDocket™ critical date docketing subscription service automatically maintains a standardized dual docket of all critical deadlines in a separate docketing system. You get a log in to the system and a weekly docket report of upcoming critical deadlines. You only de-docket items when you are comfortable that the correct action on the critical deadline.

Our SureDocket™ fully automated and semi-automated US and foreign subscription services all include built-in automated verification, and if you sign up for our de-docketing service, we also track your critical deadlines in a separate docketing system and make sure there is proper documentation of a filing or non-filing event before these dates are de-docketed.

De-Docketing Risks

De-docketing (aka cross-offs) would not appear at first to be as big of a problem as not getting something on the docket, but it can be just as bad if not worse. However, these failures are most acute for non-recoverable deadlines like provisional conversion dates and foreign filing deadlines. If these dates are missed, there is usually no mechanism to reinstate the lost rights. Here are some of the issues with de-docketing:

It is often a “single point of failure” malpractice risk because often a single paralegal or attorney can de-docket a date like this with no “second pair of eyes” verification. These mistakes can happen to almost anyone and are undetectable before it is too late unless the proper precautions are taken.
Also, client instructions can be a bit messy at times, being sent often in an ad hoc manner in e-mails or even by phone, such that similar sounding titles on applications filed around the same time can get confused and the wrong deadline in the wrong file de-docketed.
Items can be accidentally de-docketed with something as simple as choosing the wrong file number to de-docket, such that the item was de-docketed intentionally, but not for the right matter. So, the person de-docketing it may clearly believe they are taking an appropriate action, but are actually making a big mistake.

How Black Hills AI Can Help With De-Docketing

Black Hills AI has several ways it can help with on-docketing to help avoid common failure modes and avoid malpractice claims, including:

Have you looked into automated docketing?

Our Automated Docketing can handle 90% of your U.S. docketing before you wake up in the morning!