At Black Hills IP, we consider docketing to be the central nervous system of an IP department. It combines information from the entire patent process and coordinates activity across the whole organization, from Docketers all the way to Attorneys. The journey through the patent prosecution experience is chalked full of easy-to-miss due dates. Some of these dates, if overlooked, can result in major headaches and a deep reach into your organization’s pocketbook. At worst, it could result in the abandonment of your application.
With the complexities of patent law and the numerous amounts of dates to docket, it is no wonder IP departments are often plagued with human errors. Let’s take a look at the 5 most common US docketing mistakes that you and your team should remain extra cautious of.
1. Notices of Allowance/Allowability
Notices of Allowance can come in many forms, which can be confusing in the first place. In additional to traditional Notices of Allowance, you may also come across Notices of Allowability, Corrected Notices of Allowance, Corrected Notices of Allowability and Supplemental Notices of Allowability. Depending on the language of the USPTO, it can often be confusing as to what is actually needed from your group. These usually include updated declarations and drawings. Another common mistake happens after receiving a Corrected Notice of Allowability. Docketers at times will update the Issue Fee with a whole new due date although it didn’t need changing. Missing your Issue Fee date is definitely not something you want and could end up resulting in abandonment and a very angry client!
2. Application Filed
When filing a US application there are numerous amounts of documents that need to be sent into the USPTO. If all these documents are not filed at the start, it can cause delays in your patent being granted. With so many documents and due dates, docketers can often lose track of what has been sent and what is still needed. These items include: signed Power of Attorneys & Declarations, Assignments, Drawings, Nonpublication Requests, Authorizations to Permit Access, Application Data Sheets, Prioritized Examinations, and Information Disclosure Statements. It can also include statements such as whether or not you have paid the filing fee in full.
3. Office Actions
Office Actions include critical information in the lifecycle of a patent. It is the chance for the Examiner and Patent Attorney to argue their case as to whether or not an invention is patentable. For starters, differentiating between a final and non-final office action can be confusing in itself. Boxes 2A and 2B on the second page of the Office Action should indicate which type of office action this is. If box 2A is checked, there should be a bold sentence in the conclusion paragraph of the Office Action that reads “THIS ACTION IS MADE FINAL.” Like any of the rest of us, examiners make mistakes from time to time. Although it is rare, there will be times when your examiner checks Final Office Action box, but they do not include the bold clarification in the conclusion paragraph. You may also see the opposite whereby the examiner checks the Non-Final box, but then contradicts their decision by including the bold Final Office Action statement. It is best to discuss internally how your organization would like to handle these sorts of contradictions. Office Actions can also include restriction requirements which can shorten the period of reply and can be easily missed by a docketer. Make sure your team is all on the same page as to how you would like to docket Office Action response due dates. You don’t want to accidentally start accruing extra fees for late responses!
4. Filing Receipts
Although there are no critical dates that launch from Filing Receipts, they are full of essential information that will keep your data clean and organized. In addition to a traditional Filing Receipt, there are 3 others that may come in from the USPTO including Corrected, Updated, and Replacement Filing Receipts. Make sure you are consistently looking at which type of receipt this is! Important information to track and update include application number, confirmation number, art unit number, inventor, priority dates, and mailing dates. Keep these accurately updated and save yourself a headache down the road!
5. Examiner and Applicant Initiated Interview Summaries
It can be confusing as to what dates need to be docketed and how long you have to respond (or even if you have to respond). A required response is often up to the discretion of the examiner. If a response is required, you typically have 30 days or one month from the mailing date to respond in full (this can be especially confusing in the month of February). There often comes a stipulation with responses though. If an Office Action is received during that month or 30-day period, then your due date is pushed to match the due date of the Office Action. A lot of room for potential errors!
Diligence and sharp focus will always be important in maintaining an accurate docket. In order to solve the issue of human error, we at Black Hills IP spent years developing the A.I. and Automation that can accurately locate and solve issues like the ones above before they ever happen! If you are interested in learning more about the most accurate Automated Docketing Service on the planet, click the link below.