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Your source for news, updates and guidance on all things trademarks and intellectual property.

How Automated IP Docketing Can Help In-House Counsel Contain Costs 

Alt Legal Team | May 01, 2023
10 min read

With the current economic climate, it’s critical for in-house counsel to strategically manage costs. This means effectively leveraging internal resources while optimizing outside counsel legal spend. One key area often overlooked by in-house counsel is trademark portfolio management, and with Alt Legal, you can reduce the costs associated with docketing and reporting on your trademark portfolio.

Alt Legal’s highly automated IP docketing software makes it easy for you to manage your IP portfolio in-house and improve the ROI of your budget dollars. Alt Legal automatically updates matters and sets reminders, emails notifications with updates and upcoming deadlines, and adds new USPTO trademarks based on your correspondent email address. Plus, Alt Legal’s software is incredibly easy to use – our interface is intuitive and reporting takes just a few clicks.

Automated IP docketing software is truly a game-changer for in-house counsel seeking to contain costs related to their trademark docketing work.

What is Automation?

At Alt Legal, we talk a lot about automation. One of the core tenets behind Alt Legal is to automate the repetitive, manual tasks involved in trademark prosecution, docketing, and portfolio management that do not require substantive decision-making to free up your time to focus on more impactful, business-focused tasks. Our mission is to modernize trademark practice and make your life easier.

Since technology providers define the term automation differently but use it interchangeably, it’s important to understand exactly the level of automation each vendor provides. At Alt Legal, we offer the highest level of automation available on the market. To provide additional clarification, we reviewed how different vendors define automation and what questions you should ask during your evaluation.

Equally important to understanding what the term automation means is assessing how that automation will affect your workflow and ultimately, your bottom line. Whether you handle trademark prosecution and docketing in-house or your outside counsel handles things, consider the time and cost-savings of one (or both) of you using Alt Legal. With that in mind, we’ve calculated how Alt Legal’s fully-automated IP docketing system can help you achieve a significant ROI. Let us show you how.

Trademark Prosecution by the Numbers

Each task in the trademark prosecution process takes time, and when you’re using traditional IP docketing software, many of these tasks are highly manual, tedious, and error prone. Certainly, it’s understandable why you would be concerned about bringing all of this work in-house, but whether you are handling trademark prosecution yourself in a manual docketing system or you are relying on outside counsel, you’re losing time and money. Alt Legal has developed a number of ways to automate, streamline, and/or simplify trademark prosecution, saving you time and allowing you to work on more substantive tasks. By using Alt Legal, you can reallocate outside counsel fees to important substantive matters as opposed to basic docketing and portfolio management tasks. Here are some of the docketing and trademark prosecution tasks that Alt Legal has automated:

The following chart (preview below – click on the image to view the full chart) shows how long the individual tasks involved in these processes take in a manual, non-automated system so that you can see how much time you’ll save with a highly-automated system like Alt Legal if you were to bring your docketing work in-house. Note that we assumed a billing rate of $400/hr for attorneys and $200/hr for trademark administrators/paralegals.

Remember, if your outside counsel is using a manual docketing system without all of the automated, time-saving features that Alt Legal provides, this could be driving up your bills. This chart will also show you how your outside counsel can save time and money and eliminate the need to bill for time spent docketing by using an automated docketing system like Alt Legal.

ROI Spreadsheet

Filing a New Trademark Application – Information Gathering + USPTO Form Filing

The chart shows that for a typical USPTO trademark matter, gathering the necessary information to file a new application and filing that new matter can take several hours. When it comes to filing a new trademark application, you’ll need to work with your marketing and product teams to collect information about the mark, develop a thorough description of goods and services, and gather appropriate specimens. Information gathering can involve a lot of back and forth about specific terminology and the legal nuances required for an accurate USPTO filing. It can be especially challenging to collect this information from non-legal professionals within your organization. Our customers tell us that gathering information for new trademark filings can take upwards of 2 hours. You can spend an extra .7 hours filing the actual application with the USPTO.

However, using the automated features included with Alt Legal’s integrated TEAS intake form, you can easily collect the necessary information and submit that information directly to the USPTO for filing or you can hand off the filing details to your outside counsel for searching and/or filing. Either way, the process is streamlined and you’ll be able to reduce outside counsel spend. With Alt Legal’s TEAS intake form, you can expect to spend just 1 hour gathering information and filing an application, saving yourself 1.7 hours and $680 in non-billable time that you or your outside counsel can allocate to other tasks.

“I use Alt Legal’s intake software exclusively. I send my clients secure intake forms, and information is transferred to the applications with a single click. An application that would take me 30-45 minutes now takes 10 minutes or less.” – Brad Rothschild, Founder and Principal Rothschild, LLC

Read more about how Alt Legal is saving Brad time and money.

Trademark Prosecution – Lifecycle of a USPTO Trademark Application

The USPTO trademark prosecution process is one of the most complicated in the world. It involves many deadlines, numerous filings, and regular reminders that you will need to docket. As a result, the USPTO makes the most data available via API (including all TSDR documents), and Alt Legal uses this data to make US trademark docketing less complicated. Using our direct connection to USPTO databases, Alt Legal automatically pulls all updates to your USPTO trademark applications (and newly-filed applications themselves) into your docket. There is no manual docketing required ever because all updates, deadlines, and reminders are automatically generated.

Additionally, there are many milestones, proceedings, and filings throughout the prosecution process that necessitate internal communications with business stakeholders and/or outside counsel, each of which takes time to docket, prepare, and send. With Alt Legal’s advanced automation, stakeholder communications can be executed effortlessly and with one click. Our custom templates auto-populate with matter-specific data, creating a draft in your email program that you can send as-is or edit in advance without disrupting your normal workflow, streamlining and standardizing your stakeholder updates.

While each docketing task may only take 10-20 minutes to complete in a manual docketing system, when you multiply the time savings across the lifecycle of a trademark application and then across your entire portfolio, you’ll find Alt Legal can save you days or even weeks of time, freeing up outside counsel budget or making it very reasonable to handle your IP management work in-house.

“We drastically reduced our spend on outside counsel. Before we signed up for Alt Legal, we had to pay the firm every time we needed to renew a mark. Every question or task, no matter how small, came with a bill. Now, I just click “renew” get new international deadlines calculated for me. Even a small time savings like that adds up. Five seconds here or there contribute to a huge bill when we’re renewing 300 marks every quarter!”

Senior in-house counsel at global entertainment and record label conglomerate 

To further quantify this, our customers estimate that over the course of an average trademark application’s lifecycle, from initial application to registration, there are at least 10 points where you would need to enter an update in your docket. If each task takes 0.2 hours of time on average, that’s 2 hours of time Alt Legal saves you on a single mark. Similarly, they estimate at least 10 separate communications with stakeholders in that same timeframe. Assuming each update takes 0.4 hours of time to prepare, review, and send, that’s 4 additional hours of time Alt Legal will save you on that same mark. In total, that’s at least 6 hours your team can recover per mark. Consider how many marks are in your portfolio and imagine devoting those recovered hours (or recouped outside counsel spend) to more important, business-oriented tasks. That is how Alt Legal’s fully-automated IP docketing system can help you achieve a significant ROI whether you adopt it for your own team or your outside counsel decides to switch to Alt Legal to docket their matters.

“We’ve cut out probably 15 middlemen. Instead of trying and failing to find information in reports, then contacting our attorney, who assigns a task to a paralegal, who uses archaic software to find the information and report it back to the attorney who reports it back to us, all with a substantial delay and cost, I can easily find the information I’m looking for myself. Every day-to-day task has now been brought in-house. I’m actually excited to see this year’s audit to see how much money we’ve saved, but I’m estimating that it’s been thousands of dollars!”

Senior in-house counsel at global entertainment and record label conglomerate 

International Trademark Docketing

The best trademark docketing systems will pull in information from global IP offices when you prompt the system to check for new data, but Alt Legal takes things a step further. Alt Legal automatically checks Clarivate’s CompuMark database every night for any updates to your international matters and notifies you if there are any changes. This means you will never have to manually check matters for updates or click an “update” or “audit” button. Alt Legal works in the background, handling this step in the process for you.

It only takes a few moments to check for an update and click to docket the new data, but consider how many matters you are doing this for, and how frequently. Updating matters adds up to a significant amount of time. Alternatively, if you’re using outside counsel to manage your international matters, you’re paying outside counsel for each time they have to click “update” on a matter. It’s a frustrating and fast-rising expense that can certainly be re-allocated to more valuable matters.

Also, consider the mental energy you are expending with each update you are processing. Each update requires decision-making and having to do this for each matter can lead to decision fatigue and burnout. The adage is true, time is money. At Alt Legal, we understand that automating even the smallest task, when multiplied over time and across all of your matters, adds up to significant time and money savings for your organization, whether you are handling your international matters in-house or delegating them to outside counsel.

Generating Reports for Business Stakeholders

Traditional docketing software has made generating reports a difficult and cumbersome task. In fact, because building and generating a report can be so challenging, it’s often assigned to one docketing specialist on the team, meaning, reports cannot be generated quickly or on-demand. Otherwise, if you have outside counsel managing your docket and generating reports, each report is costing your organization both time and money.

Our customers notice a massive difference when it comes to generating reports in Alt Legal as compared with other IP docketing systems. Because Alt Legal was built using modern technology and our developers have always placed a huge emphasis on creating an exceptional user experience, generating reports on Alt Legal is a quick and painless process. Our customers tell us that running a report in Alt Legal is so simple that any user can quickly and easily run a report in just a few clicks. You can even save frequently-run reports so that whenever you want to run an updated report, you don’t have to enter any criteria – simply click to regenerate the report with the latest updates.

Our customers estimate that with the systems that they had used prior to Alt Legal, they spent 1 hour generating reports from scratch. They also estimate that they spent 1.5 hours generating reports for larger brands. We estimate that with Alt Legal, you will spend approximately 0.1 hours generating reports from scratch, 0.1 hours running a frequently-run saved report, and 0.2 hours generating reports for large brand portfolios. This means that when you generate a report for a large portfolio, you’ll be saving 1.3 hours with Alt Legal. Whether you’re using Alt Legal to generate reports in-house, or your outside counsel is using Alt Legal to run reports, the time and money savings are significant.

“With Alt Legal, almost immediately, it felt like freedom. All of a sudden, I could access whatever information I needed. I could export reports and tailor them to see just what I was looking for, and I could use tags to organize our filings so that I could easily find whatever I was looking for. I could mark that a filing came in through a specific acquisition, was used by a particular division, or was associated with a property.”

Senior in-house counsel at global entertainment and record label conglomerate 

Additional Features

Beyond Alt Legal’s international docketing capabilities, there are other important software features and services that we provide that will help save you time, optimize outside counsel spend, increase profits, and overall, make your life easier.

  • Ease of Use — Alt Legal is built using the most advanced technology and is meant to function with the ease and simplicity of a well-designed app. Our software loads quickly, is easy to navigate, and is visually appealing. Other trademark docketing software vendors are selling database platforms that were developed decades ago and while they may have had “facelifts” over the years, the internal infrastructure is painfully outdated.
  • Unlimited Organizational Access — Alt Legal provides complimentary, unlimited read-only or edit docket access to your entire organization, including legal team personnel, your C-Suite, marketing team, and other important stakeholders, providing them visibility into your brand(s) and ensuring easy communication. On-demand access is an important tool to enable transparency and collaboration on matters that impact various aspects of the business.
  • Unlimited External User Access — Alt Legal also provides unlimited read-only docket access to external users. This means your outside counsel and foreign agents can help you keep your docket current and have visibility into your brands. Whether internal or external, each user’s docket is personalized and ongoing customizations are included in your subscription, eliminating the need to share login credentials.
  • Free and Unlimited Training — Alt Legal provides free and unlimited training to you and your colleagues any time, whether you’re new to Alt Legal, would like a refresher training, or need advanced training on a particular topic. Our customer support team is always available to offer one-on-one or group training sessions, or record custom training sessions for you to view at your convenience. We’re also happy to provide training as your team grows and to the outside counsel or foreign agents to whom you’ve granted access.
  • Outstanding Customer Support — Alt Legal customers love our friendly customer support team! You can ask questions by phone, email, or live chat and expect a quick response, as our customer support team is keenly focused on helping you use our software efficiently and frustration-free.
  • Ongoing Data Migration Services – Alt Legal provides unlimited data migration services for you on an ongoing basis. As your organization grows and acquires new IP, let Alt Legal’s expert team take care of adding those matters to your portfolio so that you can focus on other things. Provide us the data in structured format, and we’ll take care of the rest.

Conclusion

Having a sophisticated, high-tech trademark docketing system like Alt Legal can help you save time and achieve a significant ROI. Learn more about what features to look for in the best, most high-tech trademark docketing software:

If you have any questions about how to choose the best IP docketing software for your organization, our knowledgeable team is here to help. Reach out to us at sales@altlegal.com. Also, we would be pleased to offer you a free trial or demo of Alt Legal IP Docketing Software. To sign up, click here.

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