Making sure your IP legal docket is an effective resource can be a challenge, but the good news is that there are straightforward actions you can take to keep things clean and efficient, and ensure accurate IP docketing, even if you don’t have a dedicated IP docketing system or team of your own.
Questel’s approach to IP docketing gives you peace of mind that your legal docket is accurate and productive, while removing large parts of the administrative burden—and future-proofing your internal process to ensure the docket stays clean into the future.
There are two types of benefits from using an external partner to help manage your docket. First, there are the things you can do with external help to improve your own internal legal docket, and second, there are the IP docketing systems used by a specialist like Questel to manage your work with them.
Making Your IP Docket Work for You
Your internal legal docket probably contains errors and omissions. When you have many different IP assets registered in multiple countries, it’s almost inevitable that some of the information will be incomplete or inaccurate.
This could be the case due to human error in your organization or on the part of your local agents, or it may reflect inaccuracies in the relevant IP offices’ information. It’s particularly likely if you’ve acquired assets that some of those will contain out-of-date ownership information or otherwise not be available in a completely accurate form.
The best place to start is with a data verification exercise to assess what information in your legal docket is incorrect. This could involve working with an external partner or local agents to check your data and identify inaccuracies or gaps in the docket.
You’ll need to ask yourself whether there are particular jurisdictions where your data quality is poor, or whether you have particular brands that suffer from the same problem. You can do this at various different levels, ranging from automating data verification to engaging with local agents in each jurisdiction to verify the data. Your decision is likely to rest on the scale of the problems you think you have in your docket, but it’s generally good practice to go for the most comprehensive solution if you can.
Once you have this information, you’ll be able to assess whether you need to conduct any further work beyond just importing the correct data into your IP docketing system. It may be that you should conduct a recordals project to correct out-of-date information, since inaccurate ownership details, for example, could jeopardize your ability to enforce that right in litigation.
Questel can help you every step of the way, from supporting your data audit through to overseeing any recordals project, providing a single point of contact for all queries and access to its unique online platform (or integration with your own) for real-time updates on progress.
Benefits of Working with a Partner
The size of the challenges related to maintaining a clean and efficient docket depends to a degree on who manages your formalities work and how they do it.
If you do all the work in-house, it still probably makes sense to engage an external partner to assist with clean-up and help you establish working practices for the future. However, if you use an external partner to manage parts or all of your formalities work anyway, then choosing that partner correctly is crucial.
Questel records and manages deadlines for clients for searches, filings, renewals, and recordals via our own proprietary platform or directly in our clients’ IP management system, as they prefer. We will work with you to establish how best to work with your internal systems, using third-party technology when required or through customization to create a bespoke solution. This means that whatever your IP docket looks like at the moment, Questel will be able to collaborate with you on your projects.
And of course, archiving important electronic and paper documents is a vital part of the process—and a good external partner will have robust systems for ensuring all relevant communications are securely and effectively stored, including, if necessary, key documents such as trademark certificates. This needs to be available for prompt retrieval if required.
Your IP docket is one of the most important repositories of information in your organization. Keeping it clean and efficient will be an investment worth making!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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