The docketing elephant in the room

26 April 2024

(Or why can’t we automate all docketing yet?)

This article was originally published by Karin Kärvling Søholt on LinkedIn on 25/04/24

Docketing is one of those functions that is absolutely imperative for the protection of IP and innovation. It is not always a complex task – at least not before a company expands into international territories, when things become a bit more complicated – but it is one of those tasks that can be administratively time-consuming. To make matters worse, failure to docket correctly can lead to catastrophic results, up to and including the loss of hard-earned IP rights.

The management of an IP Portfolio understandably generates a huge amount of data, all of which needs to be understood, recorded and registered where necessary. We already have tools that can interact with IP management systems and pull data from official databases. Thus, it is true that much of the data required can or will be collected and populated automatically but, as things stand, not everything can be substituted by AI, machine learning and other automated tools.

One of the main reasons for this is the meticulous level of detail required to docket successfully. This includes comprehensive knowledge of different jurisdictions and keeping track of the multiple deadlines and extensive communications. It is about knowing and understanding which elements of that detail are important and crucial, knowing what to look for and how such detail is weighted against the context of a wider international portfolio. This understanding is primarily gained from working directly with national patent and trademark offices, or with the EPO or WIPO, among others, and handling correspondence detailing terms and formalities across the entire prosecution lifecycle. In addition, it is helpful to have an understanding of the technology, products and services within the portfolio being docketed, including how an organisation leverages and uses their IP rights and position in the market.

Extensive experience and expertise doesn’t mean that AI or automated tools can’t be used to help though, as these can often represent an incredible resource for speeding up repetitive tasks or processes. For example, there are tools that can automatically docket specific forms of communication and documents directly into an IP Management System, as soon as they are received from patent and trademark offices or other authorities. Presumably, a ‘robot’ taught to handle a new type of document is tested thoroughly before it comes into contact with any client data but, once it is ready, it can significantly improve the efficiency and cost effectiveness of the entire process. Such tools often provide continuous reporting that flag up discrepancies, and while validation tools exist to double check these, they are certainly not widespread yet. This means that, for many companies, they still require an experienced expert to provide an extra set of eyes able to review and understand such discrepancies in the correct context.

The tools described above are there to assist IP experts, but not necessarily to replace them. They should instead provide a more seamless and streamlined workflow integration, improved security through detailed logging, and increased efficiency, resulting in less time spent completing certain essential tasks. Ultimately, the intention is that practitioners and experts should be able to spend less time on the administrative elements of securing an IP portfolio, and focus instead on developing it.

So while the market discusses the future implications of AI and automated docketing, it is worth remembering that it is almost certainly on it’s way, and it is likely only a matter of time before automated or AI based processes will be able to handle most of the extensive workload that successful docketing requires. But, and this is important, we’re not quite there yet, and that’s where the human element comes to the forefront. Experienced and expert insight, and decision making, will continue to be imperative for some time and I honestly don’t believe that such knowledge will ever become fully obsolete, no matter how far automation advances. For now, it might make more sense to work with an IP specialist who can take this workload off your hands and allow you to focus on potentially more valuable strategic or development work.

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