Automated Trademark Docketing

In docketing, strict conformance to requirements is the ultimate determinant of quality. Automated docketing ensures this programmatically and, therefore, is inherently better than its manual counterpart. This conformance is achieved in four ways, as explained below. 

First, the requirements for docketing for every different type of docketing item and variances within those items are (and must be) explicitly defined to be executable programmatically.

Second, because all automated docketing is done programmatically according to exacting requirements, there is 100% conformance to the requirements. If an item cannot be resolved unambiguously to meet the requirements, it is set aside for expert review.

Third, the digitally transformed process makes available additional sources of data upon which to make docketing decisions and verify results, such as real-time access to the full bibliographic and file history from the USPTO (and other foreign PTOs for other countries), allowing docketing to be done and verified using more information than is readily available to docketing personnel. This eliminates errors such as when a customer’s docketing system does not reflect that expedited examination has been approved, requiring a three-month final deadline for responses, even though such status is reflected in the PAIR file or online trademark file.

Fourth, a separate set of verification rules are always run immediately post docketing to assure that items are correctly added to the docketing system and that the correct dates were added. This type of verification is often delayed or skipped altogether when done manually, nor is it nearly as thorough.

BHIP has developed standardized processes for docketing US and foreign PTO correspondence that incorporate the best practices we developed internally as well as lessons learned from some of the most sophisticated IP practices in the nation. These best practices are entered into a digital knowledge base and uniformly implemented in our electronic docketing procedures, unless the customer has a preference for a different process.

If a customer prefers using their own process, those preferences are encoded into our procedures and executed faithfully instead of, or along with, our own best practices.

Automated docketing is real time, taking just seconds to process a docketing item onto a customer’s docket following receipt from the USPTO or other foreign PTO. On-docketing correspondence from the USPTO is typically received about 4:00 AM Eastern and is on a customer’s docket shortly thereafter. Trademark items reported by e-mail are processed in real-time as received.

Internal reporting is completed immediately after docketing is added to the customer’s docketing system. Attorneys and paralegals receive a reporting e-mail as soon as they log onto their e-mail server in the morning.

Critical notifications such as issue notifications are received before it is too late for an attorney to file a continuation application in the event one has not yet been filed but should have been. Time-sensitive notifications such examiner responses to after-final amendments are also received quickly allowing as much time as possible to react.

First, automated docketing is already less expensive than internal staffing and lower than offshore providers can offer. This is due to the economies of scale possible with automation but not obtained with labor-based docketing. This means every year automation becomes less expensive.

Second, automated docketing is never sick or out on vacation or leave – so no need for vacation benefits and loss of productivity covering the job of missing personnel.

Third, automated docketing requires virtually no time to manage – BHIP does that for you. You don’t need to worry about country law changes or maintaining the integrity of your docketing process.

Fourth, the elimination of human error and process deviation, combined with the advanced verification capabilities of automation, substantially lowers liability exposure.

The digital transformation of docketing from a manual to an automated process requires a fundamental infrastructure change that allows for many secondary benefits, particularly automated data flows that enable low-cost access to major practice enhancing services. These secondary benefits include but are not limited to:

• Automated real-time internal reporting
• Practice alerts and analytics that use real-time updates from PAIR and equivalent
• foreign PTO services
• Continuous verification in the customer system of key matter information such as
• application number and priority dates
• Automated document assembly using meta-data obtained from various sources and
• from the complete OCR applied to all received documents
• Automated document translation providing translations of all foreign office actions
• and references in real-time
• Prosecution alerts such as notifications that a family member has been forward cited
• by the USPTO or another party
• Free examiner analytics delivered with your docketing report