How to choose right third party IP docketing service provider?

How to choose the right third-party IP docketing service provider?

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

There are the following two types of docketing service providers:

1. Software cum docketing service providers:

These are the firms who provide docketing software as well as a team to manage your docketing system.

2. Dedicated Docketing service providers:

Dedicated docketing service providers provide docketing services with a dedicated team to manage 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 expertise.
Ease of changing docketing software No Yes This is one of the biggest reasons to choose dedicated docketing service providers. Changing the software is comfortable with specialized 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, specialized 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 the 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, contained in the U.S.

2. Onshore dedicated docketing service providers:

Onshore outsourcing keeps a service provider 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 the US and abroad. They utilize the best of both the worlds and provide services as per the client requirements. At times they behave as an offshore firm, and at times they behave as an onshore firm. If the clients ask the mixed organization to manage work in the US, it acts as an onshore firm, and if the client requests to handle the work outside the US for cost-effectiveness or any other reason, then the firm acts as the offshore firm.

 

Item Offshore Onshore Mixed Comment
Work within the 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 most comfortable 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 the 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 than 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 select an onshore or mixed firm in onshore mode. Further, the offshore or mixed in offshore mode can be chosen if the export control is being appropriately managed, i.e. the work is being managed within the boundary of the US. This can be accomplished by using technologies which allow access to the 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 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 systems
  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 to the prospective service provider.
  3. Secondary research for the feedback and review the capabilities of the service providers.

 

IP Docketing Service Provider On-Boarding Process:

Once you select an IP docketing service provider, use a proper onboarding process. The 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 the 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. We suggest following the internal process. For example, if you are using two emails for managing your docketing, you should ask the service provider to create two Email IDs for automated email 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 daily.
  4. Schedule monthly or quarterly pieces of training to let the team know the internal rules or best practices to follow.
  5. Schedule quarterly meetings with the team and the management for feedback and process improvement implementation.

 

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About IPDocketers.com

With clients in the 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 the 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