JP2017515247A - Application procedures for patent families - Google Patents

Abstract

SUMMARY OF THE DISCLOSURE We propose a computer-based system and method for optimizing the filing process in multiple countries of patent families. Its main part is a computer-based data collection means that is adapted to contain the key information for filing procedures in various countries of the patent family. The data collection means comprises means for storing and reading at least one feature analysis of the claims against the prior art document. Feature analysis can be accessed by foreign agents, patent applicants and / or representatives. All of these people can retrieve the information that is key to the application process in their respective countries and write the information to the data collection means. In this way, all parties involved in the patent family application process in different countries can share the most relevant information necessary to carry out the application process. This increases the efficiency of international application procedures. [Selection] Figure 1

Description

  The present invention relates to optimizing patent family application procedures in multiple countries.

  To date, the processes used in international patent examinations are extremely inefficient. Specifically, when an office action is received from an agency in each country, an agent in that country (foreign country) usually translates the office action, analyzes it, prepares a report, Send it to the patent attorney. The person in charge or the patent attorney analyzes the office action again and considers a proposed response to the office action. The results of this review are generally sent again to the representative in the country with the help of the patent attorney in the country of residence of the patent applicant. The patent attorney may analyze the office action once more and eventually send instructions to the agent in that country (overseas). The foreign agent responds to the office action on it.

  In addition to this, there are also some tedious formal procedures related to filing applications, granting patents and fulfilling eg information disclosure requirements (IDS) or other formal requirements. All of this makes the traditional process of international patent examination quite time consuming and inefficient. The amount of translation is enormous and the cost is immeasurable.

  Accordingly, it is an object of the present invention to improve current methods of international application procedures.

  This object is achieved by the invention described in the independent claims. The dependent claims describe advantageous embodiments.

Applicants are computer-based systems for optimizing patent family application procedures in multiple countries,
A computer-based data collection means adapted to contain key information for patent family application procedures in multiple countries,
The data collection means comprises computer-based means for storing and reading at least one feature analysis for at least one prior art document for at least one claim in the patent family. Data collection means;
Means for at least one foreign agent and patent applicant and / or person in charge in a country / jurisdiction other than the country of residence of the patent applicant to access the data collection means;
A computer-based system comprising any one of a patent applicant and at least one foreign agent, or a patent applicant and a person in charge, and a means of communication between the person in charge and at least one foreign agent. Propose.

  Such a system greatly increases the efficiency of the application process for the entire patent family in various countries. Collected data typically includes findings pointing out particularly important arguments regarding the patent family application process, in addition to claim characterization in multiple countries.

  This allows, for example, an overseas agent to perform an office action in a situation where at least the analysis of prior art documents cited in the office action analyzed by the agent is included in the existing feature analysis. The time required for analysis can be greatly reduced. Such a situation can frequently occur when there are multiple applications that have entered the national phase of each country following the international phase of the PCT international application. This is because the prior art documents cited in each country in such cases often coincide with the prior art documents cited in the international phase.

  All parties involved in the application process for a patent family can retrieve information in addition to retrieving information essential to the application process in their country from the collected data. Thus, all parties involved in the patent family application process in different countries can share the most relevant information necessary to carry out the application process. This increases the efficiency of international application procedures.

  Accordingly, the system according to the present application overcomes many of the difficulties currently existing with respect to patent family application procedures in various countries.

  The collected data is stored in a computer-based format and can be accessed worldwide by those involved in the patent family application process. This can be done via the Internet, for example using a dedicated or cloud server that stores the collected data.

  The system further allows the patent applicant to write information that is key to the application strategy, specifically the priority order of claims limitations. The question of how to limit a claim arises whenever the main independent claim cannot be maintained because it has received an office action that cites the relevant prior art. Therefore, it is extremely important for foreign agents to have the possibility of limiting the main independent claims and the priority of the limitations. This provides a quick indication of how overseas agents respond to office actions.

  For reasons of confidentiality, it is effective if access to the data collection means is configured to be limited to only those who have obtained access permission.

  In order to allow foreign agents to correctly determine how the claims have been amended in other countries, the data collection means will not include the description of the original specification or the basis for amendment and amendment of the claims in different countries Means are provided for storing and reading a claim correspondence table indicating the dependent claims, as well as the reason why the claims were so corrected.

  It is also beneficial for foreign agents in different countries to be informed about the status of applications in all other countries. This is particularly useful in countries that have to submit status reports on other members of the patent family on a regular basis (eg India). In line with this purpose, the data collection means comprises means for storing and reading the patent family application status in various countries.

  The same is true for the prospects for patent families' success (patents will be granted) in various countries. The likelihood of success is assessed either by an overseas agent or patent applicant or representative.

  If a document management system is used for the data collection means, not only can the prior art be stored in the document management system, for example, as a pdf document, but also various foreign agents or other interested parties Access the collected data simultaneously or in parallel. The document management system also keeps a record of changes made by those who access the collected data.

  The object of the present invention can also be achieved by the following method. Hereinafter, the individual steps of the method will be described in detail. These steps need not necessarily be performed in the order that they appear below. Further steps that are not explicitly described may also be part of the method.

To achieve the objectives of the present invention, the inventor is a computer-based method for optimizing the filing process in multiple countries of a patent family owned by a patent applicant,
Providing in the computer system a data collection means adapted to contain information essential to the patent family application process in multiple countries,
Said means for collecting data provides means for storing and reading at least one feature analysis for at least one prior art document for at least one claim in the patent family;
Providing at least one foreign agent in a country / jurisdiction other than the country of residence of the patent applicant and means for the patent applicant and / or person in charge to access the data collection means. suggest.

This method allows a reorganization of the traditional process of international patent application procedures. Responses to office actions can be organized as follows.
-When an overseas agent receives an office action, he / she can analyze the office action using information obtained from the data collection means.
This will allow foreign agents in most cases to devise responses to office actions based on the results of the analysis.
The foreign agent can then update the information contained in the data collection means with the information obtained from the office action and / or the preceding step.

  In this way, translation can be avoided. The information contained in the collected data will become increasingly sophisticated and appropriate for this foreign agent and other country agents. As a result, the overall process efficiency and cost effectiveness in the patent family is increased.

  Specifically, after receiving the office action, the overseas agent analyzes the prior art cited in the office action, and inputs the analysis result to an appropriate feature analysis in the data collection means. Since claims generally have at least different system requirements for each country, a feature analysis is usually created for each country.

  If the patent applicant responds to the office action himself, the patent applicant will receive the office action or an English translation of the office action or a translation into the applicant's native language and The same steps.

  Other objects and advantages of the invention may be ascertained by reading the specification text and the appended claims, taken in conjunction with the drawings herein.

  For a more complete understanding of the present invention, reference should be made to the following description taken in conjunction with the accompanying drawings.

Fig. 2 shows a network and communication line between an applicant, a patent attorney and an overseas representative, including data collected in the present application.

  In a typical case of filing a patent family application in multiple countries, the applicant contacts the patent attorney residing in the applicant's home country, and the patent attorney submits the patent application in that country or its jurisdiction and Proceed with the application process and then contact an overseas representative (typically a patent attorney) in another country / jurisdiction where the patent family application will be filed. This situation is indicated by solid arrows in the network of FIG.

If the system and / or method according to the invention is used, the relevant information is entered into the data collection means by all parties, this entry being indicated by the dotted arrows in FIG. Specifically, the party who first receives the office action for the patent family application enters the feature analysis of the claims against the prior art cited by the corresponding examiner, as well as his response strategy. The foreign agent (or patent attorney) who receives the office action at a later date can then retrieve the feature analysis from the data collection means, so that it has already been cited in the country that originally issued the office action. There is no need to re-analyze existing prior art. In particular, if the response to the office action is valid (possibly overcoming the reason for refusal and / or the patent application may be allowed), the claim and / or response strategy used there Other foreign agents can be hired, and the foreign agent must create a response to the office action before
・ A detailed analysis of office actions
・ Translate office actions,
・ Send analysis and translation to responsible patent attorneys for instructions,
・ Waiting for the result of examination to the applicant,
・ Receiving instructions from the patent attorney
・ Translate these instructions,
There is no need. Instead, the foreign agent can respond quickly and efficiently considering the information available from the data collection means. The necessary communications are all short reports to the patent attorney in charge, and both the patent attorney and the applicant can monitor the progress of patent applications in each country by examining the data collection means information. Intervene only in the event of an unforeseen event (eg, a change in strategy by the applicant).

While the invention has been described and illustrated in connection with certain specific embodiments, those skilled in the art will recognize that the invention can be practiced without departing from the principles of the invention as illustrated, described and claimed herein. It will be appreciated that variations and modifications can be made. The present invention may be embodied in other specific forms without departing from its technical spirit or essential characteristics. The described embodiments are to be considered in all respects as illustrative and not restrictive. Accordingly, the scope of the invention is defined by the appended claims rather than the foregoing description. All changes that come within the meaning and range of equivalency of the claims are to be embraced within the scope of the claims.
Glossary Claims Correspondence Table The Claims Correspondence Table is a set of different countries and different versions of the claims in a side-by-side table format with comments indicating the differences, making it easier to claim different versions of the claims in different countries. So that you can easily see the difference.
Contact person The contact person can be either a patent specialist in the patent department, such as the applicant, an external patent attorney at the law firm, or the principal if the applicant is an individual.
Document Management System A document management system is a computer system (or set of computer programs) used to track and store electronic documents. The document management system can typically keep track of different versions that are changed by different users (history tracking, version management).
Feature analysis of claims A feature analysis is a table that compares claims with various features, for each component, with features disclosed in prior art documents. There is typically one column for each prior art document.
Foreign agent An overseas agent is a person who conducts application procedures in countries other than the country of the patent applicant. Typically, the foreign agent is a patent attorney authorized in the country / jurisdiction in which the foreign agent takes over the application process.
Jurisdiction (jurisdiction: ius, iuris, which means “law” in Latin, and “dicere” means “say”) Refers to the practical powers granted to legally established corporations or political leaders to exercise justice in the region. The term is also used to refer to the geographic range or object covered by such authority. The jurisdiction extends to local, state and federal levels, as well as wide or continental levels such as the European Union. Jurisdiction in patent law typically refers to either the country, or the European Patent Convention, the European Union with a unified patent, the Eurasian Patent Convention, a regional patent system such as OAPI and ARIPO.
Limitation Limiting means adding a requirement to an existing claim to limit its scope of protection.
Office Action An office action is a document that is sent to a patent applicant and describes the results of a patent application examination conducted by an examiner at the JPO. Typically, applicants are required to respond to the indicated reasons for refusal.
Patent families There are many definitions of which patent applications are part of a patent family. The simplest and most common definition is that a patent family encompasses all patent applications and granted patents that claim the priority of the application on which the common priority claim is based.

Claims (11)

A computer-based system for optimizing the filing process in multiple countries of a patent family owned by a patent applicant,
Computer-based data collection means adapted to contain key information for the filing process in the plurality of countries of the patent family;
Computer-based data collection means, wherein the data collection means comprises means for storing and reading at least one feature analysis for at least one prior art document for at least one claim in the patent family;
Means for at least one foreign agent in the country / jurisdiction other than the country of residence of the patent applicant and the patent applicant and / or person in charge to access the data collection means;
Communication means between either the patent applicant and the at least one foreign agent, or the patent applicant and the person in charge, and the person in charge and the at least one overseas agent; ,
A computer-based system comprising:   The computer-based system of claim 1, wherein the data collection means comprises means for storing and reading at least one claim limitation of the patent family, as well as the priority of the limitation.   The computer-based system according to any one of claims 1 and 2, wherein the means for accessing the data collection means is configured to limit access to only authorized persons.   The computer-based system according to any one of claims 1 to 3, wherein the data collection means comprises means for storing and reading a claims correspondence table.   5. A computer-based system according to any one of the preceding claims, wherein the data collection means comprises means for storing and reading patent family application status in various countries.   6. A computer-based system according to any one of the preceding claims, wherein the data collection means comprises means for storing and reading patent family success prospects in the various countries.   The computer-based system according to claim 1, further comprising a document management system that provides the data collection means. A computer-based method for optimizing the filing process in multiple countries of a patent family owned by a patent applicant,
Providing in the computer system data collection means adapted to include key information for the filing process in the plurality of countries of the patent family;
The data collection means includes means for storing and reading at least one feature analysis for at least one prior art document for at least one claim of the patent family;
Providing at least one foreign agent in a country / jurisdiction other than the country of residence of the patent applicant and means for the patent applicant and / or person in charge to access the data collection means;
A computer-based method comprising: The at least one overseas agent is
Receiving an office action;
Analyzing the office action using information obtained from the data collection means;
Devising a response to the office action based on the results of the analysis;
Updating the information contained in the data collection means with information obtained from analyzing the office action and / or devising a response to the office action;
The method of claim 8, wherein:   10. The method of claim 9, wherein the foreign agent analyzes prior art cited in the office action and inputs the results of the analysis into an appropriate feature analysis in a data collection means. In the country / jurisdiction where the patent applicant himself responds to the office action,
Receiving an office action or an English translation of the office action or a translation into the native language of the patent applicant;
Analyzing the office action using information obtained from the data collection means;
Devising a response to the office action based on the results of the analysis;
Information obtained from the step of analyzing the information contained in the data collection means using the office action and / or information obtained from the data collection means or devising a response to the office action. A step to update,
The method according to any one of claims 8 to 10, wherein:

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