What to Look for When Switching or Hiring Outsourced IP Docketing Providers.

For decades, corporate and law firm intellectual property departments have outsourced some or all of their docketing function to third-party vendors. As the IP landscape and client needs evolve, so do the operational requirements of IP groups. Therefore, many IP departments are re-evaluating their current docketing provider and looking for a new one, or exploring outsourcing for the first time.

Trexo Global’s team has helped scores of IP groups transition their docketing work, either from one vendor to another or from in-house to a third party. Here are some best practices that IP groups should consider under both models.

Who owns your docketing manual?

Most IP groups have complex workflows, configurations, and attorney-specific requirements. Any capable docketing provider should have those requirements built into a docketing manual that contains explicit details. No reliable vendor should rely on Post-it notes on their desktop to remember when a specific attorney needs customized instructions outside the norm.

When an organization moves its docketing from vendor ABC to vendor XYZ, will vendor ABC cooperate and give their customer full access to their docketing manual? Vendor ABC should not “hold hostage” their customer’s workflows and refuse to share a manual that has likely been developed and refined over the years. Ask your current and potential docketing vendors who owns the docketing manual and if the vendor will share it should the relationship end.

What is the vendor’s staff turnover rate?

Most outsourced IP docketing is done out of India, where attrition rates average around 20% annually. Staff turnover leads to customer frustration in terms of losing institutional knowledge and knowing each customer’s unique needs, quirks, and personalities. What steps does your existing or potential docketing vendor take to manage attrition, and what is their average annual turnover rate?

What quality control steps does your vendor take?

Even if your organization has been using vendor ABC for years and they’ve never made a critical error, is there an unexpected landmine on the horizon? Maybe docketing is fine… until it isn’t. Does your current or potential vendor have a 100% quality control check on everything that is docketed? Do they apply additional layers of people or technology to minimize the chances of errors?

The most capable IP docketing providers not only have one team member docketing and a second reviewing their work, but also add a third layer of quality control. Check with your current and potential docketing vendors for details about what steps they take to minimize the chance of errors and whether they take a “belt and suspenders” approach.

What IP Management Systems (IPMS) can your vendor work with?

Many docketing vendors are part of IPMS companies and their experience skews toward their own company’s IPMS. Some IPMS companies prohibit other IP docketing vendors from accessing their systems at all. Even if your docketing vendor works well within your current IPMS, what would happen if you decided to change software in the future?

IP groups should look for vendors who are IPMS-agnostic, are familiar with all commercial IPMS, and can work in any system without prohibition by the IPMS vendor. Ask current and potential vendors to prove they have experience across multiple platforms; don’t just take their word for it.

What is the vendor’s core focus?

Some IP vendors have a comprehensive suite of software and services, of which IP docketing is only one. Some vendors who provide IP docketing have larger business units that are not related to IP at all. When looking for docketing vendors, IP groups should aim for providers who live and breathe IP operations all day, every day. If the IP docketing vendor is more focused on other business units, which may be more profitable than docketing, that means more time, resources, and effort are put into areas outside of IP docketing. This can lead to quality control issues and a lack of innovation.

There are plentiful benefits in outsourcing your IP docketing function: increased bandwidth for your current team, no need to find, hire, train, and retain new staff, best-practice recommendations, and significant cost savings. However, if your provider will not share your docketing manual, has high turnover, cuts corners on quality control, lacks the ability to docket into multiple IPMS, or is distracted by unrelated business units, outsourcing can pose risks that may cause long-term damage to your intellectual property rights.