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Borman & Company, LLC
Innovation Advisors


 phone: +1 (508) 294-1402

email: info@bormanandco.com

© 2019 Borman and Company

The Well-Managed Patent Docket

 

Managing the patent docketing process correctly requires patent prosecution understanding as well as time.  Yet, at many institutions, tech transfer personnel who are not skilled in patent prosecution procedures are tasked with this responsibility. Or, licensing managers are asked to carve out time from getting new research and technologies commercialized to docket patent actions and meet deadlines. The end result is a database riddled with inaccurate data, deadlines that are overlooked and most importantly, IP that is put at risk. 

Patent Docketing 101

Effective patent docketing requires an understanding of the basics of IP prosecution and a dogged attention to detail.  Whether your office has a database vendor – Inteum, Wellspring, TechTracS, Innovate IP - or is using spreadsheets to keep track of the patent docket, it's important to recognize that it's human expertise that keeps the process on track.  At all times, we recommend that TTO offices be on top of their patent docket deadlines by at least 3 months, if not more. Docketing your patent action items and deadlines from a central email box that holds all patent correspondence is very important. As a best practice we recommend that docket reports be reviewed on at least a bi-weekly basis and that, as a team, decisions are made on how to move forward. This discipline will alleviate unnecessary extension fees. In addition, time will be freed up so that marketing/licensing managers can focus on getting deals done, ensure patent rights are not lost, and help make legal bill review a breeze.

 

Call In The Experts

As universities take a look at the strategic management of their patent portfolios, many have found that outsourcing the patent docketing function is a better way to allocate resources.  Borman & Company clients save money on unnecessary extension fees and enjoy the benefit of reduced overhead in the tech transfer office. A streamlined docketing process will take the administrative burden off the TTO staff, allowing them to focus on their researchers and increase licensing output. That, after all, is the fundamental mission of a successful tech transfer operation.