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GullySystem
A practical guide

Questions an IP Law Firm Should Ask Before Buying Docketing Software

Ganesh HSStrategy and Technology, GullySystem
Practical advice · 4 min read

In this guide 6 sections
The short answer

Ask how each deadline is worked out, who answers for it, and what the docket does when a status entry is wrong. Then ask about IP India data, chasers for silent clients, associate billing and access. GullySystem sets up its Law Firm Case Management Software around an IP practice’s docket.

How deadlines are worked out

A trademark or patent matter carries a chain of dates. Examination reports, advertisement, oppositions, hearings and renewals each have an official date behind them. Patents add examination requests, FER replies, national phase entries and annuities.

Ask the vendor where each period comes from. Is it typed in by your staff, or worked out from a rule? If a rule, who keeps it current when official practice changes?

Then ask what happens when the base date is wrong. A sound docket recalculates every later date from the corrected entry. It also logs who made the change.

  • Which dates are calculated and which are typed in
  • Who updates a rule when official practice changes
  • Whether a corrected status moves the later dates
  • Whether each change to a deadline is logged by name

Where status data comes from

Many vendors say they fetch status from the portal. Ask exactly how. Ask what happens on a day the fetch fails.

An honest answer may be that data is fetched only where the portal allows it reliably. Otherwise staff update status from their own checks, and the docket works from that entry. That is workable, as long as you know it in advance.

Also ask who reads the Trade Marks Journal. Software can remind you before an opposition window closes. Spotting a conflicting mark is still an attorney’s reading.

Clients who go quiet

Many near misses begin with a report sent and no instruction coming back, because the client is travelling or the email went to a colleague on leave. Silence is the risk.

Ask whether instructions awaited are tracked apart from deadlines. Chasers should go out before your internal cut-off, not the official date.

Ask too whether one named person answers for each date. A shared mailbox is nobody’s job.

Portfolio reports and associate billing

Clients ask for a list of every mark they own. Foreign associates want status reports in their own format.

Ask whether a portfolio report per client comes straight out of the docket. Ask how invoices keep official fees apart from professional fees, and whether they can be raised in the associate’s currency.

Then ask how invoices reach your books. Get that answer in writing, with the ledger names it assumes.

  • A portfolio report per client, by class, country and status
  • Official and professional fees on separate lines
  • Invoices in the associate’s currency
  • The route from invoice to your accounts

Access, ownership and the way out

IP files hold unpublished filings and commercial plans. Ask who can open a client’s matters, and whether access follows the attorneys assigned to that client.

Ask who owns the data and how a full copy comes back to the firm. Ask where it is hosted and how often it is backed up.

Last, ask what the vendor does not do. A clear list of limits tells you more than a long feature list.

  • Access by client and by role
  • A written exit route for every record
  • Hosting location and backup schedule
  • A plain list of what the product leaves out

Docketing vendor question sheet

A two-column sheet with the questions above on the left and each vendor’s answer on the right. Ask every vendor the same questions in the same order. Mark any answer that is a promise rather than a description.

Open a blank worksheet to print

Questions owners ask

Can docketing software read status straight from IP India?

Only where the portal allows data to be fetched reliably. Otherwise your staff update status from their own checks, and the docket recalculates the later deadlines from that entry.

Will the software watch the Trade Marks Journal for us?

No. Journal numbers and opposition windows are recorded as your team reads them, and the docket reminds you before each window closes. The reading stays with an attorney.

Who decides how a deadline applies to a matter?

Your attorneys do. Software applies the dates and rules your firm gives it. How a period applies to a given matter is a legal judgement for the firm.

Should a small IP practice buy a ready docketing product?

If a ready product covers your matter types, reports and billing, it may do. A set-up around your practice suits a firm whose associate reporting or billing does not fit.

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