How to choose right third party IP docketing service provider?

How to choose right third party IP docketing service provider?

Having third party docketing services enables law firms and corporations improve efficiency, productivity in a cost effective manner.Nevertheless, there are certain things that need to be taken care while selecting a third party docketing service provider.

There are following two types of docketing service providers:

  1. Software cum docketing service providers: These are the firms who provide docketing software as well as team to manage your docketing system.
  2. Dedicated Docketing service providers:Dedicated docketing service providers provide docketing services with dedicated team to mange your system.
Both services have their share of pros and cons: Software cum docketing service providers Dedicated Docketing service providers Comment
Multiple Platform Experience No Yes Software cum docketing service providers generally have experience on the software platform they are selling on the contrary dedicated docketing service providers have cross platform experience.
Ease of changing docketing software No Yes This is one of the biggest reasons to choose dedicated docketing service providers. Changing the software is easy with dedicated service providers upon changing the software needs as they might already have hands on experience on the software you are planning to choose.
Scalability Yes Yes Both can scale the team up easily.
Cost effectiveness Yes Yes Both are cost effective the dedicated docketing service provider will match the budget as per your requirement
Expertise Yes Yes Both are generally expert in their service deliveries however dedicated service providers have multiple system expertise.
IP Assets Managed Depends upon the focus of software. Generally, Expert in management of all IP assets. Dedicated gets an edge considering the multi system experience.

Based on the above table,it is wise to choose “Dedicated Docketing Service Providers” considering the flexibility and scalability requirements in future. Dedicated Docketing service providers are further divided into three types:

1.Offshore dedicated docketing service providers: A foreign-based docketing service firm provides services for a U.S.-based organization that could also be, or usually has been, provided in the U.S.
2.Onshore dedicated docketing service providers: Onshore outsourcing keeps utilizes a service providers to supply US based labor and expertise for the management of the docketing system.
3.Mixed dedicated docketing service providers: These kinds of firms are based in both US and abroad. They utilize best of both the worlds and provide services as per the client requirements. At times they behave as offshore firm and at times they behave as onshore firm. If the clients ask the mixed organization to manage work in US it acts as onshore firm and if the client asks to manage the work outside US for cost effectiveness or any other reason then the firm acts as offshore firm.

 

Item Offshore Onshore Mixed Comment
Work within US No Yes Yes Mixed seem a better option considering the customization available as per the client needs. You can choose where you want your work to be done.
Export Control Yes Yes Yes This issue arises when you are handing matters which require export control. Export control is easiest in Onshore and mixed however if the proper measures (e.g. VPN usage so that no data is exported) are taken Offshore firms can also manage the data securely and effectively.
Overnight Project completion Yes No Yes It generally happens in Offshore and mixed firms (if chosen) that the work is completed in the overnight and in the morning itself you can get complete report and daily tasks to be completed.
Cost effectiveness Yes No Yes (Depends upon the client choice) Offshore and Mixed (in offshore mode) are generally more cost effective then the onshore or mixed (onshore mode).

Now choosing offshore or onshore depends upon the work requirements. If your work requires export control it is generally recommended to choose onshore or mixed firm in onshore mode. Further, the offshore or mixed in offshore mode can be chosen if the export control is being managed properly i.e. the work is being managed within the boundary of the US. This can be managed by using technologies which allow access to docketing system without allowing any transfer of data. Generally VPN is used to manage such kind of tasks.

 

The main reason we choose offshore is the cost effectiveness when we understand that the quality of the work to be delivered would be similar by both offshore and onshore firms we should choose offshore or mixed (offshore mode) to get the best of every penny spent.

 

What experience and quality should a docketing service provider should have?

 

  1. Expertise of your docketing system
  2. Expertise in Docketing of Patent, Trademark and other IP Matters
  3. Expertise in managing public and private pairs
  4. Expertise in managing multiple docketing system
  5. Expertise in transferring from one system to another
  6. Expertise in managing Billing and Invoices if required
  7. Expertise in managing foreign matters
  8. Expertise in managing the system via VPN or any other remote technology if required

 

Other steps you should consider:

  1. Talk to contacts who are already using service providers.
  2. Talk to Customer References of the prospective service provider.
  3. Secondary research for the feedback and review the capabilities of the service providers.

 

Once you select a service provider, use a proper onboarding process. Following could be the onboarding steps:

  1. Check the analytical capabilities of the service provider by providing view rights to the service provider.
  2. Test the skills of service providers by giving some correspondences to docket. May be 10-15 manual forward of test cases.Once the docketing of the correspondences forward manually seems good, enable auto forward to one or more dedicated email IDs. It is suggested that you follow the internal process for example if you are using two emails for managing docketing you should ask the service provider to create two IDs for forward.
  3. Ask for daily or weekly work reports. Engage the service providers’ team and work collaboratively with them so that they work as a team. Respond to the queries of the docketing team on a daily basis.
  4. Schedule monthly or quarterly trainings to let the team know the internal rules or best practices to follow.
  5. Schedule quarterly meetings with team and the management for feedback and process improvement implementation.

 

 

About IPDocketers.com

With clients in USA, Europe and other parts of the world IPDocketers are successfully managing various patent and trademark docketing systems of their clients remotely. Law Firms and companies reduced their expenses by as much as 50% when they chose IP Docketers to improve their docket management system. We have a dedicated team of IP Docketers capable of managing docketing system of any complexity. IPDocketers.com is headquartered in San Jose, USA with Operations in India so that you get highly cost-effective services.  www.ipdocketers.com

 

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