How important is docketing in IP? Extremely important. Docketing is what keys our actions in IP prosecution. Every patent or trademark application has due dates (many, many due dates), some of which if missed, could result in the abandonment of the application. Some missed dates are recoverable and some are not. Of those that are recoverable, the reinstatement can sometimes be very expensive and require many hours of additional work. The current fee for reinstating a U.S. patent application is $1700.
I’ve been in this business a very long time – for over 32 years. During my tenure in different law firms and companies, I’ve seen many types of people who docket. And I’ve also seen how the docketers are treated. Unfortunately, many people believe that IP docketing is simply a data entry position.
This is a perception that I have been trying to change for many years. Data entry is just that: entering data into specific fields in a computer program, with not a lot of thought involved. Data entry personnel take a document, locate the information that goes into a specific space and enter it into the applicable field. Once the data is entered, the data is saved and the computer program does whatever the computer program is designed to do.
IP docketing is NOT like that, or at least shouldn’t be like that. You see, once the data is entered into a field and the computer program calculates the response due date, the docketer should verify that the auto-docketed date is correct. Too often I have seen a docketing program calculate the incorrect response due date. That is why I believe that the docketer should be familiar with all of the ins and outs of each action and type of action that is, or could be, issued on a specific patent or trademark application.
Docketing correctly requires skill, huge attention to detail, a wide knowledge basic of IP prosecution, and the know-how to look up the rules when they are not clear. Why? Below is an example of what can happen if your docketer is not totally familiar with the rules and regulations of our world:
On Friday, December 15, 2000, at 5:18pm, the FDA approved a new drug owned by MDCO that is the subject of Patent No. 5,196,404. On February 15, 2001, 2 months after the approval date, an Application for Extension of Patent Term was filed with the PTO.
Under 35 U.S.C. 156, the term of some types of patents (e.g., pharmaceutical):
(c) “… shall be extended by the time equal to the regulatory review period for the approved product which period occurs after the date the patent is issued, …”
(d)(1) “To obtain an extension .. the owner of record of the patent or its agent shall submit an application to the Director. … such an application may only be submitted within the sixty-day period beginning on the date the product received permission under the provision of law …”
So, since the FDA approval was issued on December 15, 2000, the application for PTE (Patent Term Extension) needed to be filed by February 12, 2001. Note that the law states that the 60 day period begins on the date of approval, which means that December 15 is day 1. Since both December and January have 31 days, 60 days would be February 12, 2001.
In this case, the application for PTE was filed February 14, 2001, which was 2 months after approval, missing the due date by 2 days. The question is why was the date missed? I think we can make a good assumption that whoever docketed it entered the approval date of December 15, 2000 and the due date for the application for PTE was docketed for 2 months rather than 60 days. If you take a look at the application in PAIR (Patent Application Information Retrieval), the last paragraph on the first page of the application was marked out – this paragraph includes the language that the application “is being submitted within the 60 day period….”
So, what is the ramification of the 2 day delay in filing the application? Other than it being denied? According to the application, the initial term of the patent was through March 23, 2010. The application for PTE requested that the term of the patent be extended through December 15, 2014. Without the extension, the generic drug manufacturers could start producing and selling the product on March 24, 2010. That would mean that MDCO would lose all profit from selling the name-brand drug between March 24, 2010 and December 15, 2014. We all know that drugs can be very expensive. How expensive? I understand that the malpractice insurance company for the law firm who made this error agreed to pay MDCO $18 million up front, with an additional $214 million contingent upon the application for PTE not being approved So obviously MDCO believes that it would lose $214 million dollars. That’s a lot of money.
This particular situation ended up OK. After the original request was denied, the applicant eventually filed suit in District Court (Medicines Co., v. Kappos, No. 1:10-cv-286 (ED Va. Aug 3, 2010). They were successful and the Court ordered the PTO to consider the Request as being timely filed. Accordingly, on January 21, 2012, the PTO issued a Notice of Final Determination extending the patent term for an additional 1728 days, through December 15, 2014. Since this was litigated in District Court, and it was appealed (Fed Circuit No. 2010-1534 – which was dismissed), this date error ended up costing quite a bit of money.
Another quick example of a docketing error was that Fish & Richardson missed a foreign filing date; it was sued and Fish ended up paying $30M to the owner (Kairos Scientific v. Fish & Richardson, decided July 28, 2003).
In 2011, Nomir Medical Technologies Inc. sued McDermott Will & Emery LLP for $143M for missing several patent filing deadlines. This case settled, so although we don’t know the final number, Nomir was reportedly “pleased with the outcome.”
These are just three examples of why docketing is important and why all docketing personnel should be fully trained in IP laws. More examples can easily be found by a quick search on the internet.
Care should always be taken in entering data, not only that the entered date is correct, but that all relevant dates calculate properly. The document should always be read – sometimes the PTO examiner can include relevant information in the body of the action, rather than on the summary sheet. And in addition, all dates should always be proofed by someone other than the person who entered the information into the docket system. When that is not possible, I recommend that the data be proofed the following day.
Docketing is a key function in IP prosecution, whether it is trademarks, patents or copyrights, correctly knowing the procedure should be mandatory for our docketers. Docketing professionals in our field are just that, professionals, and should be treated (and paid) as such. IP docketing is a challenging profession and takes a special type of person to enjoy it.
So, if you are considering becoming an IP docketing professional, be prepared to do a lot of studying. Not only of US laws, but of international laws as well. IP is not limited only to the US, but to all other countries. I frequently spend several hours a week reviewing different countries’ laws and law changes, to determine how different issues should be docketed. One thing about IP docketing, it is rarely boring!