Docketing

Introduction

Patent docketing is a method or system for managing the patent application process. Docketing is a crucial tool for patent law firms, as it can be difficult to organize the patent application process for hundreds of patents without some type of system or software package to keep track of the many deadlines and documents involved. As the patent application makes its way through the approval process, called patent prosecution, there are many filing deadlines, documents, forms, drawings, and statements that needs to be kept track of. Patent docketing ensures that all the deadlines are met and all the documents are labeled and kept in the correct file, so they can be retrieved when required.

The Indian Patent Office in India regulates the patent application process. The Office of the Controller General of Patents, Designs & Trademarks (CGPDTM) oversees the Indian Patent Office and is in charge of filing and prosecuting patent applications. The office collaborates with its Mumbai, Kolkata, Chennai, and New Delhi branch offices. A granted or registered patent in India is obtained through a simplified filing process and, once granted, is valid for twenty (20) years within India.

Importance of Docketing

One of the most crucial parts of patent prosecution is docketing. Without it, those who hire capable patent attorneys risk missing deadlines and ultimately losing their chance to get patent protection. The cost to resubmit an application that was previously rejected (due to a missed deadline) is more for bigger businesses and a comparatively lesser amount for smaller organisations. However, the probability that the client would continue working with the lawyer is quite slim after they miss the deadline. In light of this, a docketing system is one of the most crucial elements for law firms practicing in this field.

When managing each and every patent portfolio, IIPRD considers the following:

IIPRD takes the responsibility to make sure that all costs related to pursuing and administering the patent application are included in all portfolios.

The commercial potential of the innovation is also considered by our IIPRD team. The cost of filing a patent application’s legal expenses may increase if it has a very high economic worth.

IIPRD keeps in mind the necessity of Standardization to have a uniform workflow and, when necessary, to revise each and every patent application.

IIPRD makes sure to raise the data quality of each patent portfolio. For patent attorneys to be aware of approaching deadlines, docketers are used to guarantee that there are no mistakes that all papers are kept correctly, that relevant fees are recorded, and that due dates are entered correctly.

It is important to take into account the docketing system’s flexibility. To insert comments into each portfolio describing where the application is in the process, IIPRD seeks a docketing system that supports free text.

Patent Docketing Process

The process of applying for a patent involves a lot of documentation, as was previously mentioned. A new portfolio is added to the docketing system as soon as a client hires IIPRD to draft the patent application. The docketing team makes sure the information is specific and in-depth. As a result, the portfolio contains the client’s name, contact information, innovation, the industry it serves, and other relevant data. The client trust account number, legal costs owed and paid, and any other application-related filing expenses must all be included in the portfolio.

Steps for patent filing in India

Only a defined Applicant is qualified to file a patent application in India for the patent grant, and the process for patent filing in India begins with the filing of a patent application in the designated patent office.

The Indian Patent Office accepts the required forms and paperwork, as well as the official fees listed in the First Schedule of Patents Rule, for filing patent applications in India. The official fees and required forms that must be submitted to the authorized patent office to begin the patent filing process and subsequently register a patent are listed below:

Form-1 (Application for grant of a patent): It contains information on the applicant(s), inventor(s), the kind of patent application filed, the title of the invention, a few statements made by the applicant, and the signatures of the inventor(s), the applicant(s), and/or authorized person.

Form-2 (Complete/Provisional Specification): It contains details on the application type, the invention’s title, its description, its claims (if the specification is complete), and its abstract.

Form 3 (Statement and Undertaking): This form contains an inventor’s statement and an undertaking to keep the Controller informed of any foreign filing applications submitted for patent registration.

Form-5 (Declaration as to Inventorship): A declaration of inventorship must be submitted to the Indian Patent Office.

Form-26: (Form for Authorization of Patent Agent/Patent Attorney or Other Person in Matter or Proceeding under Act): A form for authorization must be submitted to the Patent Office when a Patent Application for Patent Registration is filed by a Patent Agent or Patent Attorney whose services the inventor(s) have retained.

The formal fees and Forms 1 and 2 from the list above must be submitted in order to start the patent application process. The date of filing for a patent application cannot be issued by the patent office without at least Forms 1 and 2. Although it is not recommended, under some circumstances Form 3, Form 5, and Form 26 can be filed after Forms 1 and 2 are completed within the allotted time frames to finish the patent application process in India.

Additionally, a Priority document must be included with the application in cases where the Patent Application for Registration in India is based on the Prior Patent Application filed overseas via the Convention Patent Application (such as under the Paris Convention) or PCT route.

A Verified Translation of the preceding patent application must also be provided to the Indian Patent Office if it was originally filed in a language other than Hindi or English.

Form-28 (To be filed by a small entity/start-up): Documentation is required to receive benefits under the small entity/start-up category. Finally, the authorized person or the inventor must sign any paperwork, forms, or drawings.

Our Approach

We at IIPRD employ docketing specialists to manage the patent docketing process. With a wide network of Associates in all major Global locations, IIPRD assists you in cost-effective filing and Prosecuting Patent Applications in almost all locations around the globe. We also help organizations in filing PCT applications with the WIPO, for Indian patent applicants.

Our team of patent Attorneys and Registered Patent Agents are authorized to file patent applications before the Indian Patent Office (IPO). Our team of authorized Patent Agents is licensed to practice before the Patent Office of India to file Patent Applications in India on behalf of Indian and foreign companies.

Further, we have partnered with several patent attorneys outside India which facilitates the filing of patent applications outside India. Our partner patent attorneys who are located across the globe are known for delivering superior patent filing services in India.

We have effective patent portfolio management tools and teams to help maintain and take necessary actions to meet deadlines pertaining to a patent application. Such Docketing Services are of immense value proposition when the patent portfolio comprises a large number of patents. All important dates regarding patent applications are properly docketed in advance and timely alerts are given by us so that the client does not lose any timeline.

IIPRD also offers remote docketing assistance to Clients worldwide through its operation center located in Noida, New Delhi, Pune, Mumbai, Bangalore, Hyderabad, Indore, and Punjab, India. We value the critical importance of docketing. We keep track of all the pre-filing, post-filing, and post-grant dates and deadlines associated with our client’s patents and trademarks.