WO2003098518A2

WO2003098518A2 - Patent resource systems and methods

Info

Publication number: WO2003098518A2
Application number: PCT/US2003/015540
Authority: WO
Inventors: Dennis S. Fernandez; Peter C. Su
Original assignee: Fernandez Dennis S; Su Peter C
Priority date: 2002-05-16
Filing date: 2003-05-15
Publication date: 2003-11-27
Also published as: WO2003098518A3

Abstract

A central electronic network (140) and database system (125) and method that provides a commonly accessible and adaptive central database (121) and docket management (121) according to various dynamic project criteria are disclosed. A method for managing a patent resource central, comprising: the storage of a patent application in a central database (121); and electronic filing of the patent application to selected patent offices (150, 170) designated by filling out a form at the central database (121).

Description

Patent Resource Systems and Methods

BACKGROUND

Field of Invention

The invention relates generally to computer software, and more particularly to legal management and docket software.

Description of Related Art Advancement in patent document management in private practice and patent docketing management has lag behind the progression of technology modernization. The slow adaptation of patent management software can be attributed to the multi-disciplinary skill-set required to write such sophisticated software codes. To produce an end-product to the patent community that is user-friendly and comprehensive, an expertise in both the patent process and procedures, as well as complex software programming, are necessary components.

Accordingly, there is a need for more effective methods by which patent documents may be managed, shared, and docketed.

SUMMARY OF INVENTION

The invention provides a method consisting of a central network database system and a method that provides a commonly accessible and adaptive central database and efficient docket management according to dynamic project criteria. The method for managing this patent resource central comprises, firstly, storing a patent application in a central database and, secondly, filing the patent application electronically to selected patent offices designated by a selection form to be completed at the central database.

Other structures and methods are disclosed in the detailed description below. This summary does not purport to define the invention. The invention is defined by the claims.

BRIEF DESCRIPTION OF DRAWINGS

FIG. 1 is an architectural diagram illustrating a patent document management in accordance with the present invention.

FIG. 2 is a flow diagram illustrating the process for patent document management in accordance with the present invention.

FIG. 3 is an architectural diagram illustrating a common configuration of docket management software on a firm server with a client in accordance with the present invention.

FIG. 4 is a logical cause-and-effect diagram illustrating the process for determining when to send ticklers and which one to send in accordance with the present invention.

FIG. 5 is a logical cause-and-effect diagram illustrating the process for determining when to send a second tickler in accordance with the present invention.

FIG. 6 is a flow diagram illustrating the process for managing a new patent prosecution case in accordance with the present invention. DETAILED DESCRIPTION

FIG. 1 is an architectural diagrams illustrating a patent document management 100 having a business plan 105, a company (public or private) A or an individual inventor A 110, a service organization with an analysis tool 115, a law firm 120, a database comprising of prior art references 125, a company (public or private) B or an individual inventor B 130, the Internet 140, the U.S. Patent and Trademark Office 150, a court 155 (U.S. Court of Appeals for the Federal Circuit/CAFC, a federal district court, U.S. International Trade Commission/ITC, or a state court) 115, a foreign associate 160, and a foreign patent and trademark office 170. The Internet 140 serves as a communication medium between the various entities including the company A 110, the service organization 115, the law firm 120, the database 125, the company B 130, the U.S. Patent and Trademark Office 150, the court 155, the foreign associate 160, and the foreign patent office 170.

In one embodiment, the law firm 120 has a central database or a docketing system 121 that operates as a patent resource central for accessing and communicating of patent documents, such as a draft of a U.S. patent application, a U.S. patent application, a PCT (patent cooperation treaty) application, or a foreign application.

One of ordinary skill in the art should recognize that the company A 110 includes a public U.S. company, a private U.S. company, an individual, a foreign public company, a foreign private company, or a foreign individual. Similarly, the company B 120 can be either a public company, a private company, or an individual, a foreign public company, a foreign private company, or a foreign individual. Although the central database 121 resides at the law firm 120 in this embodiment, it is apparent to one of ordinary skill in the art that the central database 121 can be designated at another location, such as the company A 110, or the foreign associate 160. In one embodiment, a patent application is created at the central database 121 by the law firm 120. The patent application is accessible by the company A or client 110 to the central database 121 for reviewing and editing the patent application during the preparation of the patent application. Once the patent application has been approved by the law firm 120 and/or the company A 110, the company A 110 or the law firm 120 can electronically file a provisional or a non-provisional patent application simultaneously over the Internet 140 to the U.S. Patent and Trademark Office 150, a PCT (Patent Cooperation Treaty) patent application to the U.S. Patent and Trademark Office 150, or the foreign patent office 170, and any combination thereof. One of ordinary skill in the art should recognize that the central database 121 can reside at the company A 110 or at the foreign associate 160. An information disclosure statement (IDS) may also be electronically filed to the

U.S. Patent and Trademark Office 150. The company A 110 or the law firm 120 that represents the company A 110 can file an IDS electronically in several ways. In one approach, the company A 110 or the law firm 120 can direct the database 125, which stores prior art references, to submit specific and relevant prior art references associated with a particular patent application, either at the time of filing or after filing, to the U.S. Patent and Trademark Office 150. In another approach, the company A 110 or the law firm 120 can direct the database 125 to conduct a prior art search of relevant patents and literatures. The result of the search from the database 125 is submitted to the service organization 115, which has an analysis tool for analyzing material, relevant, and/or non- cumulative prior art references, and submits the filtered references to the U.S. Patent and Trademark Office 150. Moreover, a representative from the company A 110 can attend a technical conference, such as IEEE conference, and obtain a video recording of a presentation. The video presentation can be submitted by the company A 110 as a prior art to the U.S. Patent and Trademark Office 150.

The service organization 115 can be equipped with an analysis software tool that reviews and put together a patent application. For example, an inventor at the company A 110 fills out a questioner about a particular invention, including sections such as the background of the invention, the summary of the invention, the detail description, and the figures. The information from the questioner is then submitted to the service organization 115 which combines the different sections into a provisional patent application, and runs a software tool check to edit the provisional patent application. The service organization 115 then filed the provisional patent application with the U.S. Patent and Trademark Office 150.

As indicated above, the central database 121 can reside at the company A 110 or the law firm 120. The central database 121 at the company A 110 can post issued U.S. or foreign patents that are owned by the company A 110 for licensing opportunies on the website of the company A 110. Each of the issued patents posted at the company A's website can provide a selection where the company B 120 can select to make inquiry on licensing the selected patent. The email will be sent to the company A, which can then respond to the company B on the licensing terms for the selected patent. The service organization 115 can also provide a proactive analytical tool 115 for monitoring competitors' activities. For example, the company A 110 or the law firm 120 can set a parameters of key technical terms, assignees, names of corporation officers or directors, that direct the service organization 115 to conduct a periodic search through the published patent applications or issued patents at the U.S. Patent and Trademark Office 150 and the foreign patent office 170 such as the European Patent Office to published patent applications or issue patents by a competitor that may provoke an interference proceeding. The report from the service organization 115 is sent back to the company A 110 or the law firm 120 for further analysis on whether to provoke an interference proceeding.

FIG. 2 is a flow diagram illustrating the process 200 for patent document management. A patent practitioner at the law firm 120 creates 210 and drafts a patent application. The law firm 120 sets 220 security clearance for this patent application, allowing for example, an inventor of the patent application in the corporation A 110 to access the patent application. At step 230, the law firm 120 places the patent application on the central database 230 to allow access by the inventor for the corporation A 110. The inventor, for the corporation A 110, accesses and reviews the patent application that has been placed in the central database 121 in the 240 stage. The draft of the patent application could undergo multiple reviews, from the inventor for the corporation A 110 to the patent practitioner for the law firm 120, back and forth. When the draft of the patent application has been approved by the inventor for the corporation A 110 or the patent practitioner for the law firm 120 has authorize the filing of this patent application, the inventor for the corporation A 110 or the patent practitioner for the law firm 120 fills out a form indicating with which patent office or patent offices the patent application will be filed. For example, the inventor for the corporation A 110 can select to file the patent application with the U. S. Patent and Trademark Office, and at the same time elect to file a PCT patent application, designating the European Patent Office as the receiving office. At step 270, after the selection form has been filled out in step 260, the patent document management software 200 files electronically the patent application to designated patent office(s).

The process 200 is intended to illustrate a general process for operating a patent document management software. Other features, such as digital signature, encryption, email ticklers, email notifications, and email reminders, can be added without departing from the spirit of the present invention.

FIG. 3 is an architectural diagram 300 illustrating a common configuration of docket management software on a firm server 310 with a client 360. The firm server 310 and the client 360 are connected by the Internet 360. The firm server 310 has a database 320 and docket management software 330. The docket management software 330 provides a means for the client 360 to access certain fields of the database 320 within a client module 340. Example information could include bar dates, drafts of patent applications, and messages from the firm. The docket management software 330 also entails a feature that triggers the firm server 310 to send e-mails to the client 360 at specified steps in the patent application process. For instance, when an Office Action has been received from the USPTO pertinent to a pending patent, the firm server 310 would forward a copy of the Office Action to Client 360 and request comments that will be helpful in authoring Firm 120's response to the USPTO. Although traditional software 112 has managed the process after a patent has been filed, i.e., covering the process of getting a patent approved through various Office Actions, responses to those Office Actions, and divisional applications, it still involves an unnecessary lag-time in the patent application review process by relying so heavily upon manual input and manual procedures. Whereas this traditional software 112 implements the basics of the application docketing and review process, the invention we claim eliminates reliance upon manual data-entry and the timely procedure of transferring hard-copies of application material via the US Post and other mail courier services.

FIG. 4 is a logical cause-and-effect diagram illustrating the process 400; when to send a tickler and which one to send. Email reminders/notifications, hereinafter "ticklers," can be sent to clients or staff for better management. These ticklers are triggered according to a variety of subjective criteria that can be objectively customized. The decision which tickler to send and when (23) arises is based on two principal factors, a management priority 410 and a recipient loading/availability 420. The priority 410 could depend on an approaching deadline 411 or strategic importance 412. The recipient (i.e., recipient of the tickler) loading/availability 420 could depend on the workload of the recipient 421 or whether he or she is available to receive communications 422. Based on factors of the management priority 410 and the recipient loading/availability 420, a tickler is chosen and sent 430. FIG. 5 is a logical cause-and-effect diagram illustrating the process 500 for determining when to send a second tickler, i.e. sending another tickler if the first one is not responded to satisfactorily (e.g., the task for which the reminder was sent was not completed). After a first tickler 510 is sent, the software allows time for the tickler recipient to complete the task demanded (32). The length of a delay 420 can vary depending on priority 410. If after the delay 420 the task has not been completed 430, a second tickler is sent 440.

FIG. 6 is a flow diagram illustrating the process 600 for managing a new patent prosecution case integrated in, for example, a patent docketing management software.

Note the color legend, which indicates the person designated to complete each step: a client; a patent practitioner, hereinafter "PP"; a staff member; or a supervising attorney, hereinafter "SA."

A new case can be opened by the client's submission of a new Invention disclosure form (hereinafter "IDF") in step 601. Alternatively, the client, PP, and SA may decide on a title for the new case in step 602, without an IDF. Step 603 assesses whether a PP was assigned with the received IDF; if not, the SA assigns a PW to the case in step 604. In step 605, the case is docketed by staff.

After docketing 605, the process forks, and the path is longer for a case that has begun with only a title in step 502. In step 606, the staff requests an IDF, complete with prior art and figures, for the invention from the client. It is ascertained whether the completed IDF has been received in step 607. If not, the staff submits another request to the inventor for the prior art and figures in step 608; if so, the IDF is sent to the PP in step 613. In step 609 the IDF completion status is again ascertained. If the IDF is now complete, the IDF is sent to the PW in step 613; if not, the SA and client must decide if the case's priority is high in step 610. If not, the case is placed on hold or cancelled in step 611. If, however, the case is a high priority, the Client and PW must meet for a disclosure meeting 612. If a docketed case begins with an IDF in step 601, its process proceeds from step 605 to step 613, in which the IDF is sent to the PP. After the PP has received the complete IDF, the client and PP meet in step 614 to solidify the PP's understanding of the invention claimed. After either meeting 612 or 614, the PP produces a first draft in step 615. The draft is then sent to the inventor for review in step 616. The inventor decides in step 617 whether to approve the draft for patent submission. If the inventor rejects the draft, the PW revises it in step 618 and resubmits it for review 616. Once the inventor approves the draft, the staff sends the Client the appropriate filing documents and requests payment for filing fees in step 619. The application is filed with the U.S. Patent and Trademark Office (USPTO) in step 620. After filing, the Staff sends the Client an invoice for the patent preparation process in step 621 and dockets the filed application in step 622.

For illustration, consider a few examples in a sample patent application case, as seen in the process of figure 1. The case is named in step 402. A tickler could be sent to the SA if he does not assign a PW (404) in a given amount of time. Once the case is docketed, a tickler could be sent to the Client to request prior art and figures from the inventor in step 406. If these are not received in a timely manner, tickler(s) could be sent as reminders. After, say, two weeks, if the IDF is still not complete in step 409 ticklers could be sent to the Client and SA to determine the priority of the case in step 410. These axe but a few examples.

Although the proposed invention could boost productivity, an excess of ticklers could just as easily hinder productivity by bombarding PP's, SA's, etc. with an excessive number of emails. In an alternative embodiment, rather than send out a tickler each time the criteria are met, the server could send out a combined tickler, say daily, with all the reminders for the particular recipient.

The above embodiments are only illustrative of the principles of this invention and are not intended to limit the invention to the particular embodiments described. Accordingly, various modifications, adaptations, and combinations of various features of the described embodiments can be practiced without departing from the scope of the invention as set forth in the appended claims.

Claims

CLAIMS We Claim:

1. A method for managing a patent resource central, comprising: storing a patent application in a central database; and electronically filing the patent application to selected patent offices designated by filling out a form at the central database.

2. The method of Claim 1, prior to the storing step, further comprising setting a security clearance for the patent application.

3. The method of Claim 2, prior to the setting step, further comprising creating the patent application.

4. The method of Claim 1, after the storing step, further comprising accessing the patent application on the central database by a client by reviewing and editing the patent application.

5. The method of Claim 1 , wherein the central database is located at a law firm.

6. The method of Claim 1, wherein the central database is located at a client location.

7. The method of Claim 1, wherein the central database is located at a foreign associate location.

8. A patent resource central system, comprising: an entity having a database central for storing a patent application; the Internet, coupled to the entity, for commonly accessing the patent application from the data central.

9. The patent resource central system of Claim 8, wherein the entity comprises a law firm.

10. The patent resource central system of Claim 8, wherein the entity comprises a client.

11. The patent resource central system of Claim 8, wherein the entity comprises a foreign patent associate.

12. The patent resource central system of Claim 8, wherein the entity electronically filed the patent application to at least one selected patent office by filling out a form by the law firm or the client.

13. A method for managing a patent resource central, storing a patent document in a central database; and setting security to the patent document that is accessible by designated parties..

14. The method of Claim 13, wherein the patent document comprises a patent application.

15. The method of Claim 13, wherein the patent document comprises an amendment responding to an office action.

16. The method of Claim 13, wherein the patent document comprises a document responding to a request from a patent office or communicating a request to the patent office.

17. The method of Claim 13, wherein the patent document comprises an issued U.S. patent.

18. The method of Claim 13, wherein the U.S. patent is stored on the database central for licensing between two parties.

1 . The method of Claim 13, further comprising electronically filing the patent application to selected patent offices designated by filling out a form at the central database.

20. A method for licensing, comprising: posting an issue patent on a website by a first corporation or inventor; and selecting the issue patent by a second corporation or inventor to inquire licensing terms.

21. The method of Claim 20, wherein the selecting step by the second corporation or inventor is done anonymously.

22. The method of Claim 20, wherein the selecting step by the second corporation or inventor comprises revealing the identity of the second corporation or inventor.

23. The method of Claim 20, wherein the selecting step by the second corporation or inventor comprises responding to a third party.

24. A method for submitting an information disclosure statement, comprising: accessing a database for finding one or more prior art reference; submitting the one or more prior art reference to a patent office.

25. The method of Claim 24, wherein before the submitting step, analyzing the one or more prior are references by an analysis tool, the analysis tool selecting one or more material references from the one or more prior art references for submitting the one or more material references to the patent office.

26. The method of Claim 24, wherein the patent office comprises the U.S. Patent and Trademark Office.

27. The method of Claim 24, wherein a first prior art reference in the one or more prior art references comprises a video prior art.

28. The method of Claim 27, wherein the video prior art comprises capturing a session at a technical conference by a video camcorder.

29. A method for filing a patent application, comprising: filling out a patent application and submitting online; reviewing and editing the patent application by a service organization.

30. A method for managing a patent application, comprising: providing a title to an invention; if receiving an invention disclosure for the invention, arranging an invention disclosure meeting with the inventor; and if not receiving the invention disclosure for the invention within a specified time period from the date of the title, sending an email to an inventor of the invention requesting a meeting to take a verbal disclosure.

31. The method of Claim 30, wherein the specified time period is one month.