WO2001095215A2 - Computer-implemented method of docketing intellectual property filings - Google Patents

Computer-implemented method of docketing intellectual property filings Download PDF

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Publication number
WO2001095215A2
WO2001095215A2 PCT/US2001/018011 US0118011W WO0195215A2 WO 2001095215 A2 WO2001095215 A2 WO 2001095215A2 US 0118011 W US0118011 W US 0118011W WO 0195215 A2 WO0195215 A2 WO 0195215A2
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WO
WIPO (PCT)
Prior art keywords
computer
client
date
patent application
intellectual property
Prior art date
Application number
PCT/US2001/018011
Other languages
French (fr)
Inventor
Jeffry J. Grainger
Original Assignee
First To File, Inc.
Priority date (The priority date is an assumption and is not a legal conclusion. Google has not performed a legal analysis and makes no representation as to the accuracy of the date listed.)
Filing date
Publication date
Application filed by First To File, Inc. filed Critical First To File, Inc.
Priority to AU2001266688A priority Critical patent/AU2001266688A1/en
Publication of WO2001095215A2 publication Critical patent/WO2001095215A2/en

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Classifications

    • GPHYSICS
    • G06COMPUTING; CALCULATING OR COUNTING
    • G06QINFORMATION AND COMMUNICATION TECHNOLOGY [ICT] SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES, NOT OTHERWISE PROVIDED FOR
    • G06Q10/00Administration; Management
    • G06Q10/10Office automation; Time management
    • GPHYSICS
    • G06COMPUTING; CALCULATING OR COUNTING
    • G06QINFORMATION AND COMMUNICATION TECHNOLOGY [ICT] SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES, NOT OTHERWISE PROVIDED FOR
    • G06Q10/00Administration; Management
    • G06Q10/10Office automation; Time management
    • G06Q10/109Time management, e.g. calendars, reminders, meetings or time accounting

Definitions

  • the present invention relates to managing intellectual property. More particularly, the present invention relates to a computer-implemented method of automatically docketing dates (e.g., filing dates, foreign filing due dates, due dates for responses to official office actions, amiuity due dates, etc.) associated with filing, obtaining and maintaining intellectual property rights such as patent rights.
  • dates e.g., filing dates, foreign filing due dates, due dates for responses to official office actions, amiuity due dates, etc.
  • Embodiments of the present invention solve the problems described above with respect to previously known methods of managing intellectual property filings including the problems associated with docketing patent filings.
  • the present invention provides a computer-implemented method of automatically docketing the filing date of an electronically filed intellectual property document. Such automatic docketing reduces the likelihood that errors will be introduced into a docketing database and thus reduces potential liability for law firms and reduces the likelihood of lost rights for intellectual property owners.
  • the computer-implemented method of the present invention includes receiving an electronic version of a patent application from a client and automatically forwarding the received electronic patent application to a patent office.
  • An acknowledgment of receipt of the patent application including a timestamp indicating the application's filing date, is then received from the patent office and, in response to receiving this acknowledgment of receipt, information corresponding to the filing date is automatically entered into a database.
  • the computer-implemented method of the present invention includes electronically submitting an electronic version of a patent application to a patent office and electronically receiving a receipt, including a timestamp indicating a filing date of the patent application verifying the electronic document was received by the patent office.
  • the filing date is automatically entered into a computer-readable database.
  • a message may be generated in an automated manner related to a due date for a future interaction with the patent office or another patent office, where the due date is directly related to the application's filing date.
  • the method of the present invention includes receiving an instruction to file an electronic version of an intellectual property document from a client at a received time; determining whether the received time is prior to a cutoff time; and if so entering a first date representing a filing date of the intellectual property document into a database. If the received time is after the cutoff date, a second date representing a different filing date of the said intellectual property document is entered into the database.
  • FIG. 1 is a simplified block diagram of an example of a hardware system according to one embodiment of the present invention.
  • FIG. 2 is a flowchart illustrating one embodiment of the method of the present invention
  • FIG. 3 is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention described with respect to FIG. 1;
  • FIG. 4 is a flowchart illustrating a second embodiment of the method of the present invention.
  • FIG. 5 A is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention described with respect to FIG. 4;
  • FIG. 5B is a diagram illustrating a possible sequence of communications between a client, a docketing database and patent office in another embodiment of the method of the present invention
  • FIG. 6 is a simplified block diagram of an exemplary configuration of a client, docketing service and patent office designed to coordinate patent filings using the Electronic Filing System developed by the United States Patent and Trademark Office
  • FIG. 7A is a simplified block diagram of an example of a hardware system according to another embodiment of the present invention.
  • FIG. 7B is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention described with respect to FlG. 7A;
  • FIG. 8 is a flowchart illustrating one embodiment of the method of the present invention discussed with respect to FlGS. 7A and 7B;
  • FIG. 9 is a simplified block diagram showing the relationship between an intellectual property data processing system 200 according to another embodiment of the present invention and participants in the patent process;
  • FlG. lOA is an example of a web page generated by IP data processing system 200 as the home page for an in-house attorney client system according to one embodiment of the present invention;
  • FlGS. 10B-10D are example web pages generated by IP data processing system 200 that are accessible to a client system through the home web page shown in FlG. 10A according to one embodiment of the present invention
  • FlG. 11 is a flowchart illustrating one embodiment of the method of the present invention discussed with respect to FlG. 9;
  • FlG. 12 is a simplified block diagram of an intellectual property data processing system 300 according to a further embodiment of the present invention.
  • FlG. 13 is a flowchart illustrating an embodiment of the present invention used to automatically docket due dates associated with a patent document electronically received from a patent office.
  • the present invention provides a computer-implemented method of docketing dates associated with filing, obtaining and maintaining intellectual property rights.
  • the invention is described below with respect to docketing due dates associated with the filing and prosecution of patent applications in a patent office. It is to be understood, however, that the present invention is useful for managing and docketing other forms of intellectual property including trademarks and copyrights providing that a due date associated with and directly related to the electronic filing or receipt of the intellectual property ("IP") related document can be entered in a database to generate a future reminder message.
  • IP intellectual property
  • a "patent office” is any patent office designated to receive patent filings for an individual country or collection of countries as provided for by various treaties or other compacts that countries may enter.
  • patent offices include, but are not limited to, the United States Patent and Trademark Office (“USPTO”), the European Patent Office (“EPO”), the German Patent Office, the Japanese Patent Office (“JPO”) and any designated receiving office for patent applications filed under the Patent Cooperation Treaty (“PCT”).
  • USPTO United States Patent and Trademark Office
  • EPO European Patent Office
  • JPO Japanese Patent Office
  • PCT Patent Cooperation Treaty
  • the docketing services provided by the method of the present invention are available for patent filings in any patent office that allows for the electronic filing of patent applications and/or papers associated with the prosecution of such patent applications, e.g., official search reports or office actions and amendments or responses to the same.
  • the computer implemented automated docketing service of the present invention enables the automatic docketing of dates including filing dates for patent applications filed electronically and by other means and due dates associated with office actions among others without necessitating separate entry of the dates by a docketing clerk or by another method.
  • the method of the present invention reduces the likelihood that errors may occur in docketing such dates which in turn reduces the likelihood that future due dates, e.g., foreign filing due dates, response due dates or annuity dates, are missed.
  • the method of the present invention may be implemented by program code operating on a server system, by program code operating on a client system or by program code operating on both server and client systems.
  • a first embodiment of the present invention in which dedicated software executing on a docketing server system interfaces a client system to a patent office system is described below in conjunction with FlGS. 1 through 3.
  • This embodiment is particularly suited for some applications in which the docketing server system generates and maintains web pages that guide the client system through the process of filing the patent application.
  • FIG. 1 is a simplified, system-level block diagram of an example of a hardware configuration that can be used to implement the first embodiment of the present invention.
  • FlG. 1 includes a remote client computer system 10, a docketing server system 20 and a patent office computer system 30.
  • Client system 10, docketing server system 20 and patent office computer system 30 all communicate with each other through Internet 40.
  • communication between two or more of client system 10, server system 20 and patent office system 30 occurs through a virtual private network (“VPN”), or intranet.
  • VPN virtual private network
  • Docketing server system 20 is a web server that includes a server engine 22 which generates and sends graphical documents including web pages 24 to client system 10. Client system 10 can then display the web pages. Each document generated by docketing server system 20 is uniquely identifiable by a Uniform Resource Locator ("URL") and is stored in a computer-readable memory 27 accessible to the server system.
  • URL Uniform Resource Locator
  • client system 10 uses a web browser 12 executing on the client system to specify the URL for the document in a request (e.g., a HyperText Transfer Protocol "HTTP" request).
  • HTTP HyperText Transfer Protocol
  • the request is forwarded to the web server supporting the document (docketing server system 20 in this instance), which when it receives the request, sends the requested document to the client system.
  • the web browser may then display a web page contained in the document, e.g., HTML documents.
  • Web pages 24 supported by docketing server system 20 are designed to guide client system 10 through the process of electronically filing a patent application 14 stored in a computer-readable memory (not shown) accessible by the client system. Web pages 24 may also be designed to guide client system 10 through the process of creating the patent application as described in co-pending application "Computer-Implemented Methods of Securing Intellectual Property” referred to above and previously incorporated by reference.
  • the computer-readable memory may be a hard disk drive (“HDD”), a floppy disk drive (“FDD”), a Zip drive or a random access memory (“RAM”) among others.
  • client ID client identification 16
  • docketing server system 20 is designed to handle the electronic filing of patent applications by many different client systems 10.
  • each client system 10 may handle the electronic filing of patent applications for many different patent assignees. Such is the situation if, for example, client system 10 is a law firm that represents, prepares and files patent applications for a number of different clients. Thus, unique client IDs will be associated with each client system 10.
  • client systems 10 will use different client IDs for each of the various clients (e.g., patent assignees) represented by the entity using client system 10.
  • client ED 16 a patent matter number (not shown) generated by the client system and unique to each patent application may be used by client systems 10 and requested by docketing server system 20 to better enable tracking of patent filings.
  • a password and/or digital certificate obtained from the appropriate patent office or other entity may be required for additional security. More specifics and details concerning web pages 24 are described below in conjunction with FlGS. 2 and 3.
  • FIG. 2 is a flowchart illustrating one embodiment of the computer-implemented docketing method of the present invention that can be used to file a patent application generated by client system 10 with patent office system 30.
  • FIG. 3, is a simplified block diagram illustrating the sequence of communications between client system 10, docketing service system 20 and patent office system 30 according to the embodiment of the invention described with respect to FlG. 2.
  • the same reference numbers are used in both FlGS. 1 and 3 to denote like elements.
  • the same reference numbers used to identify certain steps set forth in FlG. 2 are also used in FlG. 3 to denote the message sent between servers corresponding to the respective step of FlG. 2.
  • the method of the invention requires the preparation or generation of a document, e.g., patent application or an invention disclosure that is to be filed as a provisional patent application, that is to be filed in a patent office (FlG. 2, step 50).
  • the document may be prepared, for example, on a word processor executing on a client system 10 (FlG. 1) or on some other computer system and then transferred in electronic format to client system 10.
  • client system 10 FlG. 1
  • the patent application and associated forms are sent to docketing server system 20 for filing (step 52).
  • the client system specifies the URL for a patent application submission web page generated by server system 20.
  • the patent application submission web page requests a client ID 2d prior to requesting the patent application.
  • server system 20 Upon receiving the client ID number 16 and other information that may be requested through the patent submission web page (e.g., a password), server system 20 references a client ID/account table 25 which contains a mapping for each client ID to a customer account number and financial and other information associated with the account and stored in account database 26.
  • the database may be a relational database, for example, as provided by Oracle.
  • customers wishing to automatically docket electronic patent application filings according to the present invention from a client system 10 will have previously registered with docketing server system 20 prior to the filing as described in more detail later in this application.
  • the patent submission web page presents an option to client system 10 to submit patent application 14 for filing.
  • the filing option may be presented by way of an icon or hypertext link.
  • the user of client system 10 then activates the icon/link (i.e., clicking with a mouse) to begin the patent submission process of FlG. 2, step 52 which transfers a copy of patent application 14 from client system 10 to docketing server system 20.
  • Patent application 14 may actually include several files grouped together as a single submission. For example, in one embodiment application 14 includes separate files for the patent specification, drawings, assignment, inventor declaration, power of attorney and small entity forms with each form being saved in a format previously determined to be acceptable for electronic filing by patent office 30.
  • the submission process may provide for the user of client system 10 to sign the patent submission as may be required by certain patent offices.
  • a digital signature may be used to authenticate the user of the client system as is known to those of skill in the art.
  • a Java applet/program or Visual Basic program (FIG. 1, applet/program 18) is downloaded from server 20 to client system 10.
  • the downloaded applet or program then opens a window on client system 10 which allows the client system to select the file containing the patent application for transfer to server system 20.
  • the applet or program uses the link already established between the client and server systems through the Internet to upload the file as would be understood by a person of skill in the art.
  • the Java applet/program or Visual Basic program is downloaded from server system 20 to client system 10 when client system 22 first connects to a web page supported by server system 20.
  • an HTML file selection control command embedded in the web page may be used to upload a file to the server.
  • patent application 14 can be uploaded to server system 20 using the Internet's file transfer protocol ("FTP") and appropriate FTP software executing on client system 10.
  • FTP file transfer protocol
  • system 20 sends a confirmation of receipt message to the client system (FIG. 2, step 54), saves the application for archival purposes (FIG. 2, step 55) and forwards the prepared application to a patent office system 30 (FIG. 2, step 56).
  • the archival function of step 55 can be beneficially used to provide an accurate representation of the actual document(s) received and the date of receipt.
  • server system 20 can access the file representing patent application 14 to determine if the received application is complete and ready for filing.
  • server system 20 may analyze the patent application file to ensure that the file includes a complete Specification (Background of the Invention, Summary of the Invention, Detailed Description and Abstract sections, e.g., for a U.S. filing), at least one claim, drawings or figures and formal paperwork (e.g., signed Oath or Declaration, Power of Attorney, Assignment form, etc.).
  • server system 20 includes in message 54 a description of the missing information, a statement about whether or not the missing information is critical and a statement as to the possible ramifications of submitting the application in its current incomplete state.
  • message 54 also asks client system 10 if it wants to continue to proceed with electronic filing of the application.
  • the client system can then reply (message not shown) and if the application is still to be filed, server system 20 proceeds with step 56.
  • server system 20 forwards the received patent application to patent office system 30 over Internet 40 using a protocol previously determined by the patent office system 30 to be acceptable for filing the application.
  • a protocol includes the patent office system generating a confirmation of receipt after successfully receiving the application where the confirmation of receipt includes information denoting the filing date and serial number (or application number) assigned to the application (FIG. 2, step 54).
  • server system 20 receives this confirmation of receipt (FIG. 2, step 58) it forwards the receipt to client 10 (FIG. 2, step 60) and automatically enters the assigned filing date of the application into a docketing database 28 along with other identification information such as the application's application number or serial number (FIG. 2, step 62).
  • Server system 20 may also save a copy of the application as filed for archival purposes.
  • each of messages 52, 54, 56, 58, 60 and 62 is sent in real time while client system 10 is viewing one or more of web pages 24.
  • a single action by the client in step 52 of FIG. 2 e.g., clicking on a "submit patent application” icon
  • Docketing server system 20 then generates one or more reminder messages 64 that can be sent electronically or via paper mail/facsimile to client system 10 denoting an action that can or should be taken based on the application filing date stored in docketing database 28. Typically, these reminder messages are generated at a later date. Alternatively, the reminder message may be sent to another address (electronic or physical) specified by client system 10 either at the time the application was forwarded to server system 20 or at a later date. While not discussed above, some embodiments of the present invention transmit the patent application in steps 52 and 56 using a secure connection between the client system 20/server system 20 and between server system 20/patent office system 30.
  • client system 10 communicates the patent application to docketing server system 20 via an email message (thus not in real time), by a direct connection over a local or wide area network, or by communicating directly with system 20 using a modem or similar connection as is understood by persons of skill in the art.
  • Docketing server system 20 then communicates the application to patent office system 30 through an internet connection 40 as described above or by using one of the other types of connections between the client and docketing server systems just described.
  • customers e.g., users of client systems 10
  • a customer account can be used to track information related to the customer for patent filings such as an address at which future correspondence from the patent office and/or docketing system can be received, a patent office deposit account balance and other information.
  • a customer can tell docketing server system 20 the amount of money in the customer's deposit account and server system 20 can display this amount on a web page viewable during the process of FIG. 2. Then, after patent application 16 is filed in the patent office, the filing fee and other patent office charges can be automatically subtracted from the deposit account balance shown on the web page.
  • This embodiment also allows a customer to add to its deposit account through an appropriate web page.
  • docketing system 20 can either send a bill for the amount to the customer associated with the client ID number or electronically debit the customer's bank account if appropriate.
  • the customer deposit account can be either an actual patent office account (such as a USPTO Deposit Account) or a virtual account that is part of a larger account maintained by client system 10 for multiple customers.
  • client ID 16 was exemplified as an identifier entered by client system 10 in response to a request from server system 20, client ID number 16 may also be an identifier associated with a particular client and browser and stored in a file on the client, e.g., a "cookie" that is sent by client system 10 with every message sent to server system 20 to maintain a state in a stateless environment.
  • client ID number 16 may also be an identifier associated with a particular client and browser and stored in a file on the client, e.g., a "cookie" that is sent by client system 10 with every message sent to server system 20 to maintain a state in a stateless environment.
  • FIG. 4 is a flowchart illustrating an alternative embodiment of the present invention.
  • the embodiment of FIG. 4 is particularly useful for filing a patent application in any patent office for which software to interface and coordinate the patent application filing directly with the patent office is available.
  • FIG. 4 and FIG. 5A is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention shown in FIG. 4.
  • FIGS. 2 and 3 for ease of reference numerals used to identify transmitted messages in FlG. 5 A are identical to the reference number of the step generating the message shown in the flowchart of FIG. 3.
  • the method of this embodiment of the invention also begins with preparation of a patent application (FIG. 4, step 70).
  • the application is then sent from a client system 100 directly to the patent office system 110 over Internet 40 using a transfer protocol previously determined to be acceptable by the patent office (FlG. 4, step 72).
  • patent office system 110 Upon receipt of the patent application, patent office system 110 generates a confirmation of receipt message that is received by client system 100 (FIG. 4, step 74).
  • the confirmation of receipt includes an indication of the filing date assigned to the application.
  • Program code executing on client system 100 watches for receipt of the confirmation receipt and upon detecting such receipt automatically opens a communication link to a docketing server system 120.
  • the program code then generates a message identifying the filed application (e.g., by an assigned serial number received with confirmation of receipt 74) and the filing date assigned to the application and transmits the message to docketing server system 120 (FIG. 4, step 76).
  • Docketing server system 120 confirms receipt of message 76 (FIG. 4, step 78) and enters the serial number, filing date and other information as previously determined into a docketing database 122 (FIG. 4, step 80).
  • program code generates an email message to docketing server system 120 that can be sent at a later date and time for step 76.
  • Docketing server system 120 can then generate one or more reminder messages 82 in the future denoting an action that can or should be taken based on the filing date of the patent application to seek further patent rights or maintain present patent rights as described above with respect to FIG. 2.
  • the embodiment of the invention described with respect to FlGS. 4 and 5 A is particularly useful for automatically docketing filing dates for applications filed in the USPTO using the Electronic Filing System ("EFS").
  • the EFS includes a desktop software application program, electronic Packaging and Validation Engine (“ePAVE”), available free of charge from the USPTO that enables electronic filers participating in the EFS to author submission identification information and complete an electronic submission package including a patent application.
  • ePAVE electronic Packaging and Validation Engine
  • the currently available version of ePAVE software (Version 2.0) enables patent applicants and appointed practitioners to conduct real time electronic filing of utility patent applications. Complete details of the ePAVE software are available online through the USPTO's Electronic Business Center Web site at http ://pto-ebc.uspto. ov/. FlG.
  • FIG. 6 is a simplified block diagram of an exemplary hardware configuration that can be used to coordinate patent filings using the USPTO's EFS and the method of the present invention described with respect to FIGS. 4 and 5A.
  • FIG. 6 includes a remote client computer system 100, a patent office server system 110 and a docketing server system 120. Client system 100, patent office system 110 and docketing server 120 communicate with each other through Internet 40. The configuration shown in
  • FIG. 6 can automatically docket patent filings performed under the guidance of ePAVE software with or without modifications as more fully described below.
  • Reference numbers in FlG. 6 identical to reference numbers of FlG. 5A and/or FIG. 1 represent like components. In order to better understand the embodiment of the present invention shown in
  • FIG. 6 it is helpful to first understand the standard operation of the ePAVE patent submission-authoring software as provided by the USPTO.
  • the ePAVE patent submission software works in conjunction with Entrust Direct public key encryption software.
  • the electronic filer prior to using the ePAVE software to author patent submissions, the electronic filer must obtain a digital certificate from the USPTO to enable secure communication.
  • the digital certificate can be obtained by following procedures explained at the USPTO Electronic Business Center at http://pto-ebc.uspto.gov/.
  • the certificate includes two public key encryption certificates 104: a digital signing certificate and a confidentiality certificate. These encryption keys are used by the ePAVE application program and the Electronic Mailroom 111 of USPTO server 110 during the patent submission process to validate and authenticate the electronic patent filing.
  • the ePAVE patent submission process includes, in order, (1) authoring the patent application specification 14, including figures, using software approved by the USPTO for the electronic filing (e.g., WordPerfect® XML Template); (2) validating the authored document by analyzing the specification versus a checklist of information the USPTO has previously determined must be provided in each patent specification; (3) creating the patent application submission by associating filing information (e.g., invention title, inventor names, attorney docket number and an email address for receiving email from the USPTO associated with the submission, etc.), attachments (e.g., assignment, power of attorney and other forms including information disclosure statements), information identifying the electronic filer (person or entity signing the transmittal form) and fee calculation information; (4) validating the created patent submission to ensure there are no errors in the submission and then (5) finally having the electronic filer submit the submission to the USPTO by signing the document and sending the submission.
  • filing information e.g., invention title, inventor names, attorney docket number and an email address for receiving email from the USPTO
  • the ePAVE software Prior to transmitting the submission to the USPTO, the ePAVE software requires that the filer log into the security portion of the software (Entrust Direct software) and enter the profile and password the filer previously designated when creating his digital certificate. After the correct profile and password are entered, the submission is transmitted to USPTO server system 110 in an encrypted format using encryption keys 104.
  • the USPTO server system receives the submission at its Electronic Mailroom ("EMR") 111, which dates and timestamps the received submission, verifies that its contents have not been altered using PKI digital signature technology that references encryption key database 114 and returns an Acknowledgment of Receipt to client 100 in the same folder created by the ePAVE program for the patent submission.
  • EMR Electronic Mailroom
  • the Acknowledgment of Receipt includes a unique EMR transaction ID, the date and time received at the USPTO (filing date), the application serial number and other pertinent information. This Receipt is returned to the user's system in real time.
  • FlG. 6 modifies the standard ePAVE patent submission process just described by including either a program 105 that interfaces with an
  • API Application Programming Interface
  • ePAVE program or code modifications 106 e.g., additional subroutines added to the ePAVE program
  • the program 105 or code modification 106 reads the Acknowledgment of Receipt, extracts the filing date and serial number and generates a message to be sent to docketing server 120 with the filing date and serial number information (FIG. 4, step 76).
  • Docketing server 120 processes message 76 and generate future reminder messages 82 as described above with respect to FIG. 4.
  • program 105 or code modifications 106 detect receipt of the Acknowledgment of Receipt by repeatedly examining, i.e., polling, the folder created for submission of the patent application. The presence of a new file in the folder alerts program 205/code modification 106 to receipt of the Acknowledgment.
  • program 105 /code modification 106 monitors the port used for the secure communication session between client system 100 and patent office system 110. The Acknowledgment of Receipt is received at that port after the patent submission is sent to patent office system 110.
  • code modification 106 is actually a modification to the firewall program or application server (not shown) for client system 110. In this embodiment, the modified firewall program or application server monitors the port rather than the enhanced ePAVE program.
  • FIG. 7A is a simplified system-level block diagram of yet another embodiment of the present invention.
  • the system shown in FlG. 7 A is similar to the one of FIG. 1 except that docketing server 20 communicates with patent office 30 using a standard paper-based mail service 35 previously determined to be appropriate by the patent office.
  • Server system 20 acts as an intermediary between a client (e.g., a patent filer) and an patent office.
  • client e.g., a patent filer
  • the client electronically sends the application to the server system instead of mailing or otherwise sending the application to the patent office.
  • the server system then processes the received application, prints it and mails it to the patent office using a paper-based mail service or process previously determined to be appropriate by the patent office.
  • Processing the application includes automatically docketing the filing of the application without necessitating separate entry of the filing date by a docketing clerk or another employee of the client as described more fully below.
  • FIG. 7B illustrates one possible sequence of communications between client system 10, docketing server system 20 and patent office system 30. These communications can be similar to those discussed with respect to FIGS. 2 and 3 and are described in more detail in conjunction with FIG. 8.
  • FlG. 8 is a flowchart illustrating one embodiment of the computer-implemented docketing method of the present invention that can be used to file a patent application generated by client system 10 with patent office system 30 and automatically docket such filing.
  • the same reference numbers used to identify certain steps set forth in FlG. 8 are also used in FlG. 7B to denote the message sent between servers corresponding to the respective step of FlG. 8.
  • server system 20 determines whether the application from the client in step 52 was received in time for the application to be filed in the patent office that day.
  • filing the application will generally include printing a copy of the patent application, generating, assembling and completing various official documents for the filing (e.g., a transmittal form and express mail receipt for U.S. filings) as well as physically mailing the completed patent application package to the patent office. These steps generally require a certain amount of time in order to ensure that everything is done properly.
  • server system 20 will establish a predetermined cutoff time that will be made known to clients 10 via web pages 24 or another message.
  • server system 20 guarantees that the patent application will be filed that same day and thus will docket the filing date of the application as today (step 158A).
  • the application is assigned a filing date (step 158B) of the next available date for which a filing date may be assigned (e.g., next day that express mail service is available in the U.S.). If the application is received on a date on which the mail cannot be sent and thus a filing date cannot be assigned such receipt will be treated similar to missing the cutoff time and the application will be filed on the next available day. It is expected that the web pages 24 will make available to clients' information related to the cutoff time and dates on which mailing services are unavailable. In one embodiment, different cutoff times can be established for different clients based or based on different level of fee services.
  • server system 20 may charge client 10 $X to file an application using a 4 hour cutoff time (4 hours prior to midnight at the location of the mail room associated with server system 20 - 8:00 p.m.) and $2X to file an application using a 1 hour cutoff time (11:00 p.m.).
  • different cutoff times can be established depending on whether or not previous notice was provided by client 10 to server system 20 that a filing was to be expected.
  • server system 20 may use a 2 hour cutoff time for a client that notifies the server system a day in advance that an expected late patent filing will be performed and use a 4 hour cutoff time for other filings.
  • step 160 After the filing date is assigned, the application and all associated forms are printed and compiled into a package that is fit to be sent to the patent office (step 160).
  • the forms in this step are generated and printed based upon information the client submits with the patent application in step 52 and/or with information previously supplied by the client (e.g., information unlikely to change (e.g., small entity status, address information, etc.) that is supplied by the client when initially signing up for server system 20's filing service).
  • the application is mailed (step 162) using standard mailing procedures previously determined to be acceptable by the patent office.
  • step 160 may include printing a transmittal form, an express mail receipt and having the appropriate person sign the mailing certificate under 37 C.F.R. ⁇ 1.10 while step 162 includes delivering the completed package containing the application to a U.S. Post Office on the docketed filing date.
  • a message is sent from server system 20 to the client system confirming the filing date of the application (step 164).
  • this message is generated automatically by servers system 20 in response to assigning a docketing date in step 158A/158B.
  • message 164 is sent only after an employee or other appropriate person having access to server system 20 confirms to the server system that the application was correctly filed on the correct filing date. This process may include having server system 20 present an entry on a data entry screen that includes a "done" entry that can be "checked off” by the employee or other appropriate person.
  • a terminal (not shown) that accesses server system 20 displays a list of all applications that are docketed by and filed with the help of server system for a particular day. After making a trip to the Post Office, the employee returns to the terminal and clicks on the "done" entry for each of the applications that was just filed. Alternatively, the employee may click "done” after verifying the package contents and/or placing the package contents into an envelope addressed to the patent office, but prior to effecting delivery of the package. In this manner, confirmation of filing can be done without requiring entry of a filing date. In some embodiments, the initially docketed filing date is a soft or changeable date until such a confirmation process.
  • the discrepancy can be entered into the system and appropriate action taken (e.g., generation of a Request for Corrected Filing Receipt). If the filing date is confirmed, the "soft" date can be changed in status to a "hard” or locked, unchangeable date that can only be changed by system personnel with appropriate authority levels.
  • step 160 will list a mailing address associated with the company that owns/runs server system 20 as the official mailing address for correspondence with the patent office.
  • message 164 may be sent after the filing receipt, which is sent from the patent office to the address associated with the server system (message 168 in FIG. 7B), is received.
  • message 164 may be sent as described above and an additional message (not shown) may be sent from server system 20 to client 10 confirming that the filing date assigned by the patent office matches the filing date communicated in message 164.
  • steps 158A/158B, 160, 162 and 164 is flexible. That is, these steps may be performed in an order different than the order set forth in FIG. 8.
  • a single action by the client in step 52 e.g., clicking on a "submit patent application” icon
  • Docketing server system 20 then generates one or more reminder messages 66 that can be sent electronically or via paper mail/facsimile to client system 10 denoting an action that can or should be taken based on the application filing date stored in database 28. Typically, these reminder messages are generated at a later date. Alternatively, the reminder message may be sent to another address (electronic or physical) specified by client system 10 either at the time the application was forwarded to server system 20 or at a later date.
  • FIG. 9 is a simplified system-level block diagram of still another embodiment of the present invention.
  • the system shown in FlG. 9 includes an IP data processing system 200 according to the embodiment as well as various participants in the patent process.
  • the participants shown in FIG. 9 include technology developers 210, patent law firms 220, service providers 230, patent offices 240, prior art databases 250 and potential licensees 260.
  • IP data processing system 200 is a web-enabled electronic platform (e.g., an Application Service Provider ("ASP"), a VPN or an appropriately configured intranet that can be utilized by all participants in the patent process.
  • ASP Application Service Provider
  • Processing system 200 converts the paper-based patent prosecution system into an electronic workflow pipeline, allowing every step in the process to be executed from a computer desktop, lowering administrative costs and processing time for patent applications.
  • Processing system 200 provides technology developers 210 and its associated patent law firms 220 a highly secure, central data repository that can be shared between participants on an as-allowed basis. Information generated and used during the patent prosecution process can be shared between a technology developer 210 and appropriate patent law firm 220 and service providers 230 in order to create patent filings, prosecute such filings through issuance and then subsequently maintain patents after grant.
  • Some specific functions provided by IP data processing system 200 include:
  • FIG. 9 shows various patent process participants including technology developers 210, law firms 220, service providers 230, patent offices 240, prior art databases 250 and licensees 260 connected to IP data processing system 200 through the Internet 40.
  • technology developers 210 are shown in FIG. 9 as including individual technology developers 210(1), 210(2) through 210(n). It is to be understood that, while shown in FIG. 9 as a group, these multiple technology developers are separate entities that likely have no relation to each other than its classification within this patent application as developers of technology. It is also to be understood that, while not shown, each individual participant systems typically includes its own firewall system that implements access control functions to isolate the system from unwanted intrusions by others.
  • Patent law firms 220 include U.S. patent attorneys, patent agents and foreign patent attorneys and/or agents.
  • Service providers 230 include patent draftsman, prior art search companies, translation companies and other entities that provide services useful to the patent process as well as financial institutions and other parties that have tangential roles in the process.
  • Prior art databases 250 include public and licensed private databases, such as online patent databases (e.g., issued U.S. patents, published European and Japanese patents, etc.) and non-patent databases.
  • Patent offices 260 include patent offices worldwide including the USPTO, the EPO, the JPO, the Taiwanese Patent Office, etc. As shown in FIG.
  • IP data processing system 200 includes a web server 201, a database 206 and paper mailroom 208.
  • Web server 201 includes a server engine 202 that generates and sends graphical documents including web pages 204 to client systems as requested and an electronic mailroom 207.
  • a "client system” is a computer system that displays web pages generated by server engine 202, e.g., through a browser residing on the client system.
  • technology developers 210, patent law firms 220, service providers 230 and licensees 260 typically include one or more client systems within the group.
  • a corporation may have 250 inventors, 4 patent administrators and 2 in-house patent attorneys. Each of these individuals likely has their own computer system and can thus become a client system.
  • computers that are part of patent offices 240 can also be client systems in some embodiments of the invention as described below.
  • Each client system can display the web pages generated by server engine 202.
  • Each of such web pages is uniquely identifiable by a Uniform Resource Locator ("URL") and is stored in a computer-readable memory (not shown) accessible to the server engine as previously described.
  • URL Uniform Resource Locator
  • Database 206 stores all information pertaining to the patent developers' IP portfolios. Patent process participants (such as the technology developer employees and outside law firm personnel) access this information as needed and only to extent that their access rights permit.
  • the information in database 206 includes draft and completed invention disclosures, draft and completed patent application documents, messages and discussions pertaining to invention disclosures and patent applications, patent and patent application status information, prior art publications, etc. Having database 206 accessible to participants remotely through the World Wide Web provides a great deal of flexibility to each participant as defined and allowed by the security protocol and permission schemes implemented by IP data processing system 200.
  • IP data processing system 200 communicates with patent offices 240 over Internet 40 through electronic mailroom 207 and through standard snail mail (e.g., U.S. Postal Office Express Mail) using paper mailroom 208. For such communications, in some embodiments system 200 sets the correspondence address to mailroom 207 or 208 so that replies to the communications can be tracked and entered into database 206 as described below.
  • Electronic mailroom 207 is part of server 202 and includes a suite of programs that interface to the standards set by each patent office 240. Also, in order to track and update status information for pending U.S. patent applications, such as Examiner name, assigned art unit and class/subclass, etc., electronic mailroom 207 has the ability to interface to USPTO's Patent Application Information Retrieval ("PAIR") system using appropriate digital certificates.
  • PAIR Patent Application Information Retrieval
  • Electronic mailroom 207 also includes other programs to interface with other patent offices.
  • Paper mailroom 208 includes printers, fax machines and other appropriate equipment to carry out all the duties necessary to file patent applications and other formal papers in patent offices using standard mailing procedures.
  • Paper mailroom 208 also includes scanners and equipment necessary to scan papers received from technology developers 210, patent law firms 220 and patent offices 240 into computer- readable format. Such correspondence is scanned and analyzed by optical character recognition (“OCR”) software to create two version of the document: an image version and a text version created by the OCR software.
  • OCR optical character recognition
  • the OCR software is calibrated to recognize particular fields within common patent office forms to capture data from those forms so that appropriate data (e.g., due dates, Examiner's name, Applicant, application no., etc.) from such papers can be parsed and entered into database 206.
  • appropriate data e.g., due dates, Examiner's name, Applicant, application no., etc.
  • the fields of various patent office forms that are scanned by mailroom 208 are mapped to database 206 along with the document type (determined from the form recognition sequence) in order to enable the system to determine the appropriate docketing deadlines.
  • personnel in mailroom 208 can directly enter appropriate data into database 206 using computers or data entry terminals coupled to the database through a local area network or similar network.
  • IP data processing system 200 generates web pages 204 that facilitate all aspects of the patent process including the generation of patent disclosures, workflow routing, generation of and prosecution of patent applications, foreign filing, annuity and maintenance fee payments, attorney and service provider invoicing and patent licensing among others.
  • new customers Prior to using IP data processing system 200, however, new customers (technology developers, law firms, etc.) are generally asked to set-up an account.
  • the set-up process allows for varying degrees of customization. On one end of the spectrum, the set-up process can be very straight forward allowing the customer to enter address and billing information and select one of several generic, predefined manners of working with IP data processing system 200. On the other end of the spectrum, the set-up process can be rather lengthy allowing a customer to highly customize EP data processing system 200 to its requirements.
  • set-up procedure information is entered by the customer to set-up the customer's account, record billing information, record a patent office deposit account number and a customer number, define the user list, define the role of each user (thereby defining various home pages), define the organizational structure and hierarchy of users, establish any interfaces with appropriate databases or applications of the customer, define the customer's workflow process as described in more detail below, define any customizable aspects of the database such as field names, forms and template wizards, database organization, and user-access rights, set any user-definable preferences, arrange for importing any user-specific content, and implement appropriate security measures such as digital certificate assignment.
  • Set-up may also involve importing any legacy data (in supported formats) into the system using document upload process.
  • large corporations and law firms will implement an involved set-up procedure like this while individual inventors and small companies without in-house attorneys will opt for simpler set-up procedures.
  • the workflow process is the process of routing documents to predetermined users, notifying the appropriate users of required tasks, periodically reminding users of task completion deadlines, and tracking time periods associated with both tasks and the time between tasks, all according to a customer-defined workflow process design.
  • Workflow examples include the circulation of mvention disclosures to a review committee for filing decisions, routing of invention disclosures to a working attorney for drafting patent applications, circulation of draft patent applications to inventors and managers for review and comment, circulation of patent office forms to inventors and managers for signature, notification of attorneys of the receipt of patent office actions and papers, and routing of documents to service providers (e.g., informal drawings to a draftsperson for creation of formal drawings) as needed.
  • the workflow design is defined in the customer set-up process.
  • IP data processing system 200 has a mechanism for notifying users of required tasks, and for users to notify the system that tasks are complete.
  • the system makes available (for example, through html links to documents stored in database 206) to the appropriate users any documents necessary for performing the relevant task (e.g., a docketing due date reminder task for a foreign patent filing decision generated for an appropriate in-house attorney at a technology developer 210(x) may include an html link to the parent patent application or appropriate sections of the application so the attorney can quickly review the patent's abstract and claims).
  • any documents necessary for performing the relevant task e.g., a docketing due date reminder task for a foreign patent filing decision generated for an appropriate in-house attorney at a technology developer 210(x) may include an html link to the parent patent application or appropriate sections of the application so the attorney can quickly review the patent's abstract and claims).
  • IP data processing system 200 Once a customer (e.g., technology developer 210, patent law firm 220, etc.) has set-up IP data processing system 200 to its requirements, the system is ready to be used.
  • the functions available to a particular client system of a particular customer depend on the role of the client system in the patent process. For example, some of the functions provided through web pages 204 are restricted to only certain individuals and thus may not be accessible to others. Thus, web pages 204 include different "home" pages that are the initial web pages displayed to a client system based upon the role of the client system in the patent process. These home pages include html links to functions that have been determined to be appropriate for the particular client system as part of the set-up procedure.
  • IP data processing system 200 One benefit of IP data processing system 200 is the way information is assembled and managed. Much of the information is organized into Document Entities.
  • a Document Entity is a high-level description of a type of document that is created, manipulated, reported, tracked, etc. by IP data processing system 200.
  • Each Document Entity is described by a collection of rules that define necessary attributes including data fields that must be complied with/populated for the given Document Entity to be considered complete, such as unique identifiers for the document and the relationship between that document and other documents in system 200.
  • the document management function of EP data processing system 200 implements the access, edit and version control rules for all Document Entities in the system. Some of these rules may default to predefined rules while others are set in the user set-up process described above.
  • a Document Entity is created when it is given a unique set of the attributes listed in an Entities Table.
  • a Document Entity is created within the context of a case (i.e., the electronic file that is created in conjunction with the creation and/or submission of, for example, an invention disclosure)
  • the Document Entity acquires some of its attributes from that case. Any other required Document Entity attributes must be entered by the user before the Document Entity creation step is complete.
  • a Document Entity may be created before or after the underlying file is created.
  • IP data processing system 200 When a client system requests the creation of a new word-processed Document Entity, IP data processing system 200 creates a new Word® (or WordPerfect® or other suitable word processing document) document and passes the client system into that document after all required Document Entity attributes have been acquired or entered. Version and tracking control are provided to enable a user to track the document as it is routed through the system for review and approval. Importantly, inventors can review the document either sequentially or concurrently.
  • System 200 also includes an archival function that saves and locks all documents submitted to and received from patent offices so that they cannot be subsequently altered as well as an MIS log function that generates an "audit trail" that records events in a separate database table, including who, what object, what time, and what was done (read, write, edit, witness) to all documents for all customers.
  • Document Entity attributes that are associated with that Document Entity at creation or thereafter.
  • Relevant attributes include, for example: document type, status and security profile.
  • draft patent application specifications typically Word® or WordPerfect® documents
  • some documents sent from system 200 to patent offices 240 are actually collections of Document Entities.
  • an electronic patent application comprises a collection of Document Entities including word-processed document files (e.g., a patent specification), form-based document files (e.g., a transmittal form) and image files (e.g., figures).
  • IP data processing system 200 populates specific fields of the form as appropriate. For example, if the user is working on a filing for a particular case and creates a Transmittal Form for that filing, creation of the Transmittal Form Document Entity within the context of that case and that filing with cause the inventor, Patent Office Serial Number, external and/or internal docket number, invention title, filing date, art unit, and Examiner name fields to be populated from the attributes of the case.
  • the underlying document file is also created for further preparation and finahzation by the user. The system will prompt the user for specific information for unpopulated fields or confirmation (and validation) of populated fields.
  • IP data processing system 200 may include various form “wizards” for assisting client systems with the completion of numerous governmental applications and forms.
  • System 200 also includes software to "map" the data from the form wizards to the forms themselves so that the users can switch from the "wizard view” to a what you see is what you get (“Wysiwyg") view. Additionally, some of the Wysiwyg views will have direct editing capability of selected fields.
  • IP data processing system 200 provides a sophisticated document upload process.
  • the upload process provides the correct Document Entity designation.
  • Uploaded documents fall into two major categories: (1) documents created electronically, but not within the IP data processing system 200; and (2) paper-based documents.
  • Electronic documents that are uploaded into system 200 include patent applications, amendments, requests for reconsideration and other text-based documents prepared by client systems in Word® or WordPerfect®. These documents become Document Entities once they are in IP data processing system 200. Drawings are part of almost every patent application filed. Many drawings are prepared using some kind of graphics software.
  • IP data processing system 200 system converts such graphic images to a common file format (such as PDF) to allow access for all necessary participants. In addition, the original format will be retained for use with (e.g., revisions to) the original graphics tool.
  • system 200 also provides for paper documents to be scanned and/or uploaded (scanned) into database 206.
  • the current USPTO EFS does not provide office actions and other USPTO correspondence in electronic form. Rather, these mailings are made in hard copy only. Such hard copies of USPTO correspondence are uploaded into IP data processing system 200 through paper mailroom 208.
  • the current USPTO EFS also requires inventor declarations (the documents in which the inventors state that they are the actual and first inventors of the patent application's subject matter) to be signed by hand; scanned and uploaded as electronic documents for filing. As the USPTO and other patent offices permit the electronic communication of more and more documents between applications and the patent offices, such uploads into system 200 may no longer be necessary.
  • IP Data Processing system 200 may provide for an Alert system.
  • One of the features of IP data processing system 200 is its ability to facilitate communication between all parties associated with the patent process and its ability to notify users of alerts associated with cases assigned or associated with a user. Alerts include calendared docket items (e.g. due dates), messages (such as internal messages), threaded discussions and assigned tasks.
  • the web pages generated by IP data processing system 200 and displayed to client system includes an alert boards that tracks and displays such communications and notices to the user.
  • the alert board also provides the ability to conduct off-line discussions pertaining to cases and Document Entities within cases.
  • the alert board is available to, and can be presented to, all registered client systems of system 200.
  • the content of the alert board varies from client system to client system as the board displays messages, discussions, calendared docket items, and tasks that are specific to each client system.
  • a registered client system is a client system that has run the user set-up process itself or been defined by another client system during its user set-up process.
  • registered client systems can be contrasted to client systems that have no predefined relationship with system 200 and are just "browsing" its pages.
  • unregistered client systems are presented with an alert board that displays general information, e.g., updates on patent law, that such unregistered client systems may be interest in.
  • Discussion Items are posted and linked to a topic and to each other as in a threaded discussion model. Like Document Entity attributes, the Discussion Items contains attributes that connect the Discussion Items to cases and specify access and security rules. Discussion Items are an alternative to email and may be used in addition to the internal messaging function. Discussion items typically include the ability to have a threaded discussion. Tasks may also be created to send a message notifying a recipient that he or she has been assigned a project or task to perform in conjunction with the case. The user can specify who can see or respond to a given discussion item. Discussion Items are tracked and displayed like a Document Entity in the Alert Monitor as well as the electronic case file.
  • Tasks are another type of alert that can be generated.
  • Tasks include the name of the task to be performed (e.g., signature required, etc.), the date the task is due, and the identity of the user whose responsibility it is to perform the task. There may be multiple due dates for each task, a final due date and preliminary "ping" dates reminding the user that the final due date is approaching. Tasks are displayed in the Alert Monitor.
  • System 200 will notify client systems through the Simple Mail Transfer Protocol ("SMTP") that there is an alert in the system for pick-up.
  • SMSTP Simple Mail Transfer Protocol
  • One of the more common alerts that are sent to individual client systems through the alert board is a docketing reminder. Docketing is the heart of managing patent information because it tracks calendared due dates.
  • the docketing engine of IP data processing system 200 manages the calendar of due dates for all the cases tracked by the system and allows practitioners to keep track of the meta data for the case (i.e., bibliographic information) as well as the progress of a case, the relationship between cases and due dates.
  • the user can access meta data for a case through the electronic case file.
  • Meta data is case summary information including bibliographic information. Some examples of meta data fields are, for example, title, serial number, filing date, etc.
  • the software includes an engine that implement rules associated with the docketing process.
  • Notification of impending deadlines for cases is sent to client systems through the alert board. Users are provided notification of both reminder deadlines as well as the due dates for calendared items.
  • the frequency of reminders leading up to patent office deadlines may be determined by the client during the user set-up process as part of the client or user's workflow definitions. Some deadlines are defined based on dates documents are transmitted to an patent office while other deadlines are defined based on dates documents are mailed from patent offices or received by IP data processing system 200. For example, the date a patent application is first filed in a first patent office triggers deadlines for filing the application in foreign patent offices where novelty has been preserved. Similarly, the date an Office Action is mailed from an patent office typically triggers a due date for submitting a Response to that Office Action.
  • a new docket entry is created that reflects the action that needs to be resolved by the deadline.
  • appropriate docket entries are created automatically.
  • paper documents are received and scanned into the system docket entries can either be created automatically from the scanned information that is parsed into database 206 or can be created by personnel in paper mailroom 208. If created manually, only actions types that have been defined for the country in which the case has been filed in are available for selection when the mailroom 208 employee enters a task type.
  • system 200 identifies the document type from the scanned image or electronically received document and automatically associates a docket item in response to the scanned document.
  • These reminders and due dates appear in the alert board of an appropriate client system as a list of outstanding actions that require response.
  • customers are able to select an option where reminders appear on the alert board only until the date of the reminder and then automatically lapse in favor of the actual due date or a later reminder.
  • the home page for attorneys (both in-house and outside counsel) and patent administrators allows quick access to reporting capabilities that enable "big picture" views of a company (or client's) IP assets.
  • the home page also includes an alert board as described above that track and presents alerts to individual client systems including those associated with docketed due dates.
  • FIG. lOA is an example of a web page 300 generated by server 202 as the home page for an in-house attorney client system according to one embodiment of the present invention.
  • web page 300 includes five primary components: a navigation menu 301; an alert summary section 302, a portfolio overview section 304, a custom information section 306 and a search function 308.
  • Web page 300 is for example purposes only. Other home pages may include different components, provide access to different functions or features and/or display the components in a different layout.
  • Navigation menu 301 indicates to the user of the client system what function the client system is accessing in the menu system of various functions provided to that client system by IP data processing system 200. For example, on web page 300, the Home icon in menu system 301 is in bold indicating the client system is viewing the Home page. Menu 301 also allows the client system to select the icons shown in the menu system to go directly to the associated function. Five separate icons are included in menu section 301 of web page 300: Home, Monitors, Portfolio, Tools and Administration. Alert summary section 302 indicates what type of alerts are active on the client system as well as how many of each type.
  • this particular client system includes four alerts with deadlines (e.g., docket items), four message alerts (e.g., communications between attorneys or from an inventor) and two tasks (e.g., non-docket To-Do items, such as review and approve an initial draft application prepared by an outside attorney).
  • Portfolio overview section 304 provides quick access to some of the various reporting capabilities of P data processing system 200, and custom information section 306 provides access to functions such as patent watches, industry news and patent law updates.
  • Search section 308 is a search engine that allows the client system to perform full text searches on all information stored in database 206. Some typical information searched includes inventor name, case reference number, patent serial number and the like. The search engine provides both basic and advanced searching capabilities including Boolean and natural language searches among others.
  • FIG. lOB shows a web page 310 where the client system chose to view its alerts through menu section 301.
  • Web page 310 shows all the current alerts 313 for the client system including docket entries, tasks and discussion alerts.
  • a field 312 allows the client system to filter alerts 313 by alert type.
  • FlG. IOC shows a web page 314 generated when field 312 is selected to display only docket alerts.
  • each of web pages 310 and 314 individual alerts are shown with respect to the case reference number (file number), title, due date (if one exists) and originator of the alert. Further details of each alert (e.g., the text of a discussion alert message) can be viewed by selecting the html link underlying the selected alert in alert section 313. Additionally, all documents associated with a particular case are accessible by selecting the reference number or title of the case (although not shown in the FlGS., each of these entries is an html link to underlying information). For example, selecting file 320 having a File No. 435-78-2387456 and entitled “Mars Rover Controller” (hereinafter referred to as the "Mars Rover” file) from web page 310 results in display of a web page 322 as shown in FIG. 10D.
  • Web page 322 emulates the look and feel of an actual three sided paper file of the type commonly used by IP practitioners and referred to as a "trifold.” This electronic "trifold" view of a specific case is typically accessible from any menu options where data associated with specific cases is displayed including the portfolio view, search engine 308 and others.
  • correspondence section 324 There are three sections on web page 322: correspondence section 324, file history section 326 and document section 328.
  • Correspondence section 324 displays a list of all unofficial correspondence between the attorneys, patent administrators and inventors for the Mars Rover file.
  • Each entry in correspondence section 324 is an html link that leads to the underlying correspondence document.
  • the user of the client system simply selects the link associated with the desired correspondence document.
  • file history section 326 and document section 328 are also html links to underlying documents.
  • File history section 324 lists all the official papers that have been sent to and received from the patent office, while document section 328 lists all the patent documents associated with the Mars Rover file including documents, such as the Invention Disclosure, that are not filed in any patent office.
  • upload, create and submit icons 330a, 330b and 330c are also shown in FIG. 10D.
  • Selecting upload icon 230a allows a client system to upload a document that was not originally created through IP data processing system 200 into the system.
  • Create icon 330b allows the client system to initiate creation of a new document, such as a new patent application from an already filed Invention Disclosure or a new Amendment after receiving an Office Action.
  • create icon 330b is selected, all fields that can be populated with data already in database 106 are so populated.
  • Submit icon 330c allows the client system to submit a patent document including patent applications, amendments and other papers to an patent office using either electronic mailroom 207 or paper mailroom 208.
  • FIG. 11 is a flowchart depicting a sequence of events involved with filing an application through submit icon 330c according to one embodiment of the invention
  • appropriate filing papers including the patent specification, drawings and others are generally prepared prior to selecting submit icon 330c (step 340).
  • These papers are stored in database 206 and typically either created through data processing system 200 (e.g., word-processed documents such as the patent specification), uploaded to system 200 (e.g., image-based documents such as drawings scamied into PDF format) or created by system 200 (e.g., form-based documents such as the fee transmittal form).
  • system 200 Upon selecting submit icon 330c (step 345), system 200 analyzes the patent filing papers to determine that it is complete and ready to be submitted to an patent office. For example, if the document is a U.S. patent application, system 200 checks to ensure that the application includes a complete Specification (Background of the Invention, Summary of the Invention, Detailed Description and Abstract sections, e.g., for a U.S. filing), at least one claim, drawings or figures and formal paperwork (e.g., signed Oath or Declaration, Power of Attorney, Assignment form, etc.) and all the necessary signature blocks have been signed.
  • a complete Specification Background of the Invention, Summary of the Invention, Detailed Description and Abstract sections, e.g., for a U.S. filing
  • formal paperwork e.g., signed Oath or Declaration, Power of Attorney, Assignment form, etc.
  • system 200 determines the application is not complete, the system generates a message that displays the missing information, a statement about whether or not the missing information is critical and a statement as to the possible ramifications of submitting the document in its current incomplete state (step 350).
  • the message also asks the client system if it wants to continue to proceed with submission of the document.
  • the client system may also be given a chance to correct or create the documents sign specific documents (step 355) or cancel the filing process as appropriate (step 357).
  • system 200 next determines which option for submitting the patent document is available based on the document to be submitted and the patent office 240 to which it is being submitted. If such a determination indicates that only one mailing option is available, the procedures for that mailing option are initiated. If system 200 determines that either electronic or paper-based filing methods can be used, system 200 prompts the user for a preference (step 360). In other embodiments, user preference for such situations are defined in the user set-up process causing system 200 to default to such predefined preferences.
  • system 200 forwards the patent document to a patent office system 240 over Internet 40 using a protocol previously determined by the patent office system to be acceptable for filing such documents (steps 370-372).
  • a protocol previously determined by the patent office system to be acceptable for filing such documents (steps 370-372).
  • a protocol includes the patent office system generating a confirmation of receipt after successfully receiving the application as described above with respect to FlG. 6.
  • the confirmation of receipt may include, for example, information denoting the filing date and serial number (or application number) assigned to the application.
  • IP data processing system 200 receives this confirmation of receipt, it automatically enters the assigned filing date of the application into database 106 along with other identification information such as the application's application number or serial number.
  • System 200 also saves a copy of the application as filed for archival purposes. Preferably, this entire process occurs in real time while the client system is viewing the document submission web page.
  • a single action by the client e.g., clicking on a "submit patent application” icon
  • These reminder messages can then later be generated by system 200 and transmitted to appropriate client systems as described above (step 375).
  • system 200 is entrusted with highly sensitive IP documents that often represent the "crown jewels" of technology developers 210. Accordingly, system 200 has extensive security measures to ensure such information remains confidential. Some of these security measures include: verifying user identity (e.g., through a logon process) for each client system that logs onto system 200, controlling user access to resources based on permission levels, encrypting sensitive data in transit, encrypting sensitive data in database 206, detecting and responding to attacks in real time and providing complete audit information to track activity.
  • IP data processing system 200 permits client systems to place its electronic signatures on documents patent offices allow to be signed electronically. For all other signed documents, the document will contain a signature field. The signer's signature will be scanned, uploaded into IP data processing system 200 and the digitized signature will be merged onto the signature field of the document. The document will not be able to be modified after it has been signed. Other forms of electronic signatures will be supported by system 200 as patent office rules are changed to allow them.
  • patent office 240 is likely to be authentication that the client system has the intent and authority to file the patent application.
  • some patent offices e.g., the USPTO, may require a digital certificate and password or other security measures as previously mentioned to provide a higher degree of certainty for such authentication then permitted by just a signature.
  • the digital certificate and password are associated with client system 210, a number of different techniques can be developed to pass the certificate to patent office 240. For example, in one embodiment, the certificate/password combination is passed to or stored on server system 200 and sent from system 200 to patent office system 240 with the patent application.
  • patent office 240 does not allow a third party such as server system 200 to store both the patent application documents and the security certificate and password on its system
  • an alternative technique stores the certificate/password on the client system and interfaces these elements of the filing package through another vendor software package, e.g., a program that interfaces with the USPTO's PAIR system, such as Partridge available through Patents.com.
  • a further alternative includes having server system 200 assign a transaction ID to a filing event and sending the transaction ED to the client system.
  • An applet or similar program running on the client system then can transfer the appropriate digital certificate and password combination along with the transaction ID directly to patent office system 240 via the Internet while the patent application filing documents are matched with the same transaction ED and sent by server system 200 to patent office system 240 as described above.
  • Patent office system 240 can then match the filing papers with the certificate/password combination using the transaction ID.
  • the client system can manually select to forward the transaction ED, once received, to patent office system 240 using the Internet, email or other appropriate electronic medium.
  • FIG. 13 illustrates a second embodiment of an IP data processing system 300 according to the present invention.
  • IP data processing system 300 instead of transmitting and receiving patent and patent application documents and other information to and from patent offices via email or snail mail, patent office personnel access such documents and other information directly through an electronic fileroom 306 via a web browser.
  • Electronic fileroom 306 is part of database 206.
  • Patent office personnel receive alerts and messages from IP data processing system 300 whenever actionable events occur. Actionable events include, for example, filing a patent application and other formal patent documents.
  • EP data processing system 300 instead of transmitting those documents over the Internet to an patent office, EP data processing system 300 sets an internal status field within database 206 associated with the document to "filed.” System 300 then sends a message that it is received by the appropriate patent office personnel on their home page for IP data processing system 300 indicating that such a document was filed.
  • FIG. 14 illustrates one possible application of the present invention used to partially automate and simplify the creation of an information disclosure statement to the USPTO based on references cited in a communication from another patent office such as a PCT Search Report. While such search reports are not currently transmitted to clients electronically, the present invention contemplates that electronic transmittal of many different patent office documents will be common place in the future.
  • the PCT Search Report for a particular patent application is electronically received from the International Searching Authority ("ISA") in step 130.
  • ISA International Searching Authority
  • the date of the search report is automatically docketed and entered into a database (step 132), for example one of the databases 28, 122 or 109 shown in FlGS. 3, 5A and 5B respectively, along with identifying information for each citation noted in the search report (step 134).
  • This identifying information is then automatically compared to a database entry for the U.S. patent application corresponding to the PCT application that tracks the references considered by the USPTO during prosecution of the application (step 136).
  • an IDS is generated listing the citations (step 138) and sent to an appropriate practitioner (patent agent, patent attorney or inventor as appropriate) for review and signature (step 140).
  • the signed IDS (as either scanned into electronic form or signed electronically) then becomes the document that can be sent to the
  • an Office Action is received electronically.
  • the date of the Office Action and due date for a response are then entered into the database (the due date can either be calculated or entered from a field in the received office action) and future reminder messages are generated and sent based on these dates.
  • the documents are generated by the patent office and sent to a docketing server as in FlG. 3 or where the documents are sent directly to a client server as in FlGS. 5A and 5B.
  • the docketing server first receives documents from a patent office, the docketing server generally, but not necessarily, forwards the documents to the appropriate client in addition to creating appropriate docketing and other entries in the database.

Description

COMPUTER-IMPLEMENTED METHOD OF DOCKETING INTELLECTUAL
PROPERTY FILINGS
CROSS-REFERENCES TO RELATED APPLICATIONS This application claims priority to U.S. Application No. 09/585,989, entitled COMPUTER-IMPLEMENTED METHOD OF DOCKETING INTELLECTUAL
PROPERTY FILINGS, filed on June 2, 2000 and listing Jeffry J. Grainger as inventor. This application also claims priority to U.S. Provisional Application No. 60/253,360, entitled DATA PROCESSING SYSTEM FOR MANAGING INTELLECTUAL PROPERTY ASSETS, filed on November 27, 2000 and listing Jeffry J. Grainger as inventor and claims priority to U.S. Application No. 09/642,619, entitled COMPUTER- IMPLEMENTED METHOD OF DOCKETING INTELLECTUAL PROPERTY FILINGS, filed August 17, 2000 and listing Jeffry J. Grainger as inventor. The disclosures of 09/585,989, 60/253,360 and 09/642,619 are hereby incorporated herein by reference in their entirety.
BACKGROUND OF THE INVENTION The present invention relates to managing intellectual property. More particularly, the present invention relates to a computer-implemented method of automatically docketing dates (e.g., filing dates, foreign filing due dates, due dates for responses to official office actions, amiuity due dates, etc.) associated with filing, obtaining and maintaining intellectual property rights such as patent rights.
As the world economy has become more information and technology oriented, patents and other intellectual property are of growing importance. In order to secure such intellectual property rights appropriate paperwork needs to be completed and filed in an intellectual property office. For example, in order to secure patent protection within the United States, a patent application describing and claiming an invention needs to be filed in the United States Patent and Trademark Office (USPTO). Once filed, previously established rules and guidelines are followed by a Patent Examiner to determine whether or not patent rights to the invention should be granted. Typically, the process for obtaining these rights includes communications between the patentee and the patent office with many of such communications requiring a response within a given time period. Traditional methods of preparing, filing and examining patent applications and other intellectual property documents have been centered around a paper-based methodology. In order to track communications between a patentee and patent office in such situations many law firms and corporations maintain docketing databases that keep information on various due dates for responses to communications or other due dates associated with the patent filing. Typically, such due dates are manually entered into a docketing database by a docketing clerk or other appropriate personnel.
Such a process is inherently filled with a risk of error and the resulting potential for liability. An incorrectly entered docketing date or an unentered date may result in the delay of obtaining desired patent rights, extra costs associated in obtaining such rights and in some circumstances in the loss of patent rights altogether and/or potential liability to the party at fault. Similar issues exist for other intellectual property filings including, for example, trademark filings and patent filings in countries other than the United States. The USPTO has recently instituted procedures that allow for the electronic filing of patent applications and other countries are either in the process of doing the same or may do so in the future. These procedures may be extended in the future to include the electronic mailing of Office Actions and other papers as well as the electronic filing of Responses to the same. Such electronic procedures allow for a paperless and possibly expedited method of filing and prosecuting patent applications and may be extended to include Responses to Office Actions and other papers in the future. None of the electronic patent filing programs or procedures known to the present inventor, however, provides for a solution to the potential problems associated with docketing such filings or other papers as discussed above. Instead, filing and docketing remain two disparate functions that are not linked in any effective manner.
Accordingly in view of the above, improved methods of docketing and tracking intellectual property filings, including patent applications, Office Actions and the like are desirable.
SUMMARY OF THE INVENTION Embodiments of the present invention solve the problems described above with respect to previously known methods of managing intellectual property filings including the problems associated with docketing patent filings. Specifically the present invention provides a computer-implemented method of automatically docketing the filing date of an electronically filed intellectual property document. Such automatic docketing reduces the likelihood that errors will be introduced into a docketing database and thus reduces potential liability for law firms and reduces the likelihood of lost rights for intellectual property owners.
In one embodiment, the computer-implemented method of the present invention includes receiving an electronic version of a patent application from a client and automatically forwarding the received electronic patent application to a patent office. An acknowledgment of receipt of the patent application, including a timestamp indicating the application's filing date, is then received from the patent office and, in response to receiving this acknowledgment of receipt, information corresponding to the filing date is automatically entered into a database.
In another embodiment, the computer-implemented method of the present invention includes electronically submitting an electronic version of a patent application to a patent office and electronically receiving a receipt, including a timestamp indicating a filing date of the patent application verifying the electronic document was received by the patent office. Upon receiving the receipt, the filing date is automatically entered into a computer-readable database. Subsequently, a message may be generated in an automated manner related to a due date for a future interaction with the patent office or another patent office, where the due date is directly related to the application's filing date.
In another embodiment the method of the present invention includes receiving an instruction to file an electronic version of an intellectual property document from a client at a received time; determining whether the received time is prior to a cutoff time; and if so entering a first date representing a filing date of the intellectual property document into a database. If the received time is after the cutoff date, a second date representing a different filing date of the said intellectual property document is entered into the database.
These and other embodiments of the present invention, as well as its advantages and features, are described in more detail in conjunction with the text below and attached figures. In some instances, the same reference numbers are used in more than one figure to indicate like elements. BRIEF DESCRIPTION OF THE DRAWINGS FIG. 1 is a simplified block diagram of an example of a hardware system according to one embodiment of the present invention;
FIG. 2 is a flowchart illustrating one embodiment of the method of the present invention;
FIG. 3 is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention described with respect to FIG. 1;
FIG. 4 is a flowchart illustrating a second embodiment of the method of the present invention;
FIG. 5 A is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention described with respect to FIG. 4;
FIG. 5B is a diagram illustrating a possible sequence of communications between a client, a docketing database and patent office in another embodiment of the method of the present invention;
FIG. 6 is a simplified block diagram of an exemplary configuration of a client, docketing service and patent office designed to coordinate patent filings using the Electronic Filing System developed by the United States Patent and Trademark Office; FIG. 7A is a simplified block diagram of an example of a hardware system according to another embodiment of the present invention;
FIG. 7B is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention described with respect to FlG. 7A; FIG. 8 is a flowchart illustrating one embodiment of the method of the present invention discussed with respect to FlGS. 7A and 7B;
FIG. 9 is a simplified block diagram showing the relationship between an intellectual property data processing system 200 according to another embodiment of the present invention and participants in the patent process; FlG. lOA is an example of a web page generated by IP data processing system 200 as the home page for an in-house attorney client system according to one embodiment of the present invention;
FlGS. 10B-10D are example web pages generated by IP data processing system 200 that are accessible to a client system through the home web page shown in FlG. 10A according to one embodiment of the present invention;
FlG. 11 is a flowchart illustrating one embodiment of the method of the present invention discussed with respect to FlG. 9;
FlG. 12 is a simplified block diagram of an intellectual property data processing system 300 according to a further embodiment of the present invention; and
FlG. 13 is a flowchart illustrating an embodiment of the present invention used to automatically docket due dates associated with a patent document electronically received from a patent office.
DESCRIPTION OF THE SPECIFIC EMBODIMENTS
The present invention provides a computer-implemented method of docketing dates associated with filing, obtaining and maintaining intellectual property rights. For convenience, the invention is described below with respect to docketing due dates associated with the filing and prosecution of patent applications in a patent office. It is to be understood, however, that the present invention is useful for managing and docketing other forms of intellectual property including trademarks and copyrights providing that a due date associated with and directly related to the electronic filing or receipt of the intellectual property ("IP") related document can be entered in a database to generate a future reminder message. As used herein, a "patent office" is any patent office designated to receive patent filings for an individual country or collection of countries as provided for by various treaties or other compacts that countries may enter. Examples of patent offices include, but are not limited to, the United States Patent and Trademark Office ("USPTO"), the European Patent Office ("EPO"), the German Patent Office, the Japanese Patent Office ("JPO") and any designated receiving office for patent applications filed under the Patent Cooperation Treaty ("PCT"). The docketing services provided by the method of the present invention are available for patent filings in any patent office that allows for the electronic filing of patent applications and/or papers associated with the prosecution of such patent applications, e.g., official search reports or office actions and amendments or responses to the same.
The computer implemented automated docketing service of the present invention enables the automatic docketing of dates including filing dates for patent applications filed electronically and by other means and due dates associated with office actions among others without necessitating separate entry of the dates by a docketing clerk or by another method. Thus, the method of the present invention reduces the likelihood that errors may occur in docketing such dates which in turn reduces the likelihood that future due dates, e.g., foreign filing due dates, response due dates or annuity dates, are missed. Among other techniques, the method of the present invention may be implemented by program code operating on a server system, by program code operating on a client system or by program code operating on both server and client systems. A first embodiment of the present invention in which dedicated software executing on a docketing server system interfaces a client system to a patent office system is described below in conjunction with FlGS. 1 through 3. This embodiment is particularly suited for some applications in which the docketing server system generates and maintains web pages that guide the client system through the process of filing the patent application.
FIG. 1 is a simplified, system-level block diagram of an example of a hardware configuration that can be used to implement the first embodiment of the present invention. FlG. 1 includes a remote client computer system 10, a docketing server system 20 and a patent office computer system 30. Client system 10, docketing server system 20 and patent office computer system 30 all communicate with each other through Internet 40. In some embodiments, communication between two or more of client system 10, server system 20 and patent office system 30 occurs through a virtual private network ("VPN"), or intranet.
Docketing server system 20 is a web server that includes a server engine 22 which generates and sends graphical documents including web pages 24 to client system 10. Client system 10 can then display the web pages. Each document generated by docketing server system 20 is uniquely identifiable by a Uniform Resource Locator ("URL") and is stored in a computer-readable memory 27 accessible to the server system. To view a specific document, including a web page, client system 10 uses a web browser 12 executing on the client system to specify the URL for the document in a request (e.g., a HyperText Transfer Protocol "HTTP" request). The request is forwarded to the web server supporting the document (docketing server system 20 in this instance), which when it receives the request, sends the requested document to the client system. The web browser may then display a web page contained in the document, e.g., HTML documents.
Web pages 24 supported by docketing server system 20 are designed to guide client system 10 through the process of electronically filing a patent application 14 stored in a computer-readable memory (not shown) accessible by the client system. Web pages 24 may also be designed to guide client system 10 through the process of creating the patent application as described in co-pending application "Computer-Implemented Methods of Securing Intellectual Property" referred to above and previously incorporated by reference. The computer-readable memory may be a hard disk drive ("HDD"), a floppy disk drive ("FDD"), a Zip drive or a random access memory ("RAM") among others.
While specific web pages 24 are not shown or described in detail herein, generally the pages request a client identification 16 ("client ID") prior to requesting transfer of the patent application from the client system 10 to docketing server system 20. Such a client ID 2d is particularly useful because docketing server system 20 is designed to handle the electronic filing of patent applications by many different client systems 10. Furthermore, each client system 10 may handle the electronic filing of patent applications for many different patent assignees. Such is the situation if, for example, client system 10 is a law firm that represents, prepares and files patent applications for a number of different clients. Thus, unique client IDs will be associated with each client system 10. It is also contemplated that some client systems 10 will use different client IDs for each of the various clients (e.g., patent assignees) represented by the entity using client system 10. Alternatively, or in addition to the client ED 16, a patent matter number (not shown) generated by the client system and unique to each patent application may be used by client systems 10 and requested by docketing server system 20 to better enable tracking of patent filings. In addition to a client ID, a password and/or digital certificate obtained from the appropriate patent office or other entity may be required for additional security. More specifics and details concerning web pages 24 are described below in conjunction with FlGS. 2 and 3.
FIG. 2 is a flowchart illustrating one embodiment of the computer-implemented docketing method of the present invention that can be used to file a patent application generated by client system 10 with patent office system 30. FIG. 3, on the other hand, is a simplified block diagram illustrating the sequence of communications between client system 10, docketing service system 20 and patent office system 30 according to the embodiment of the invention described with respect to FlG. 2. For convenience, the same reference numbers are used in both FlGS. 1 and 3 to denote like elements. Similarly, the same reference numbers used to identify certain steps set forth in FlG. 2 are also used in FlG. 3 to denote the message sent between servers corresponding to the respective step of FlG. 2.
As shown in FIG. 2, the method of the invention requires the preparation or generation of a document, e.g., patent application or an invention disclosure that is to be filed as a provisional patent application, that is to be filed in a patent office (FlG. 2, step 50). The document may be prepared, for example, on a word processor executing on a client system 10 (FlG. 1) or on some other computer system and then transferred in electronic format to client system 10. Once prepared and ready to file, the patent application and associated forms are sent to docketing server system 20 for filing (step 52). As described above, in one embodiment before the patent application is sent by client system 10 to server system 20, the client system specifies the URL for a patent application submission web page generated by server system 20. The patent application submission web page requests a client ID 2d prior to requesting the patent application. Upon receiving the client ID number 16 and other information that may be requested through the patent submission web page (e.g., a password), server system 20 references a client ID/account table 25 which contains a mapping for each client ID to a customer account number and financial and other information associated with the account and stored in account database 26. The database may be a relational database, for example, as provided by Oracle. Generally, customers wishing to automatically docket electronic patent application filings according to the present invention from a client system 10 will have previously registered with docketing server system 20 prior to the filing as described in more detail later in this application. Assuming a correct client ID number is received by server system 20 and the associated customer account is in good standing, the patent submission web page presents an option to client system 10 to submit patent application 14 for filing. The filing option may be presented by way of an icon or hypertext link. The user of client system 10 then activates the icon/link (i.e., clicking with a mouse) to begin the patent submission process of FlG. 2, step 52 which transfers a copy of patent application 14 from client system 10 to docketing server system 20. Patent application 14 may actually include several files grouped together as a single submission. For example, in one embodiment application 14 includes separate files for the patent specification, drawings, assignment, inventor declaration, power of attorney and small entity forms with each form being saved in a format previously determined to be acceptable for electronic filing by patent office 30. Also, the submission process may provide for the user of client system 10 to sign the patent submission as may be required by certain patent offices. In an embodiment, a digital signature may be used to authenticate the user of the client system as is known to those of skill in the art. Once transferred, application 14 is stored in memory 27.
In one embodiment in response to activating the icon that requests the patent submission to docketing server 20, a Java applet/program or Visual Basic program (FIG. 1, applet/program 18) is downloaded from server 20 to client system 10. The downloaded applet or program then opens a window on client system 10 which allows the client system to select the file containing the patent application for transfer to server system 20. For the transfer, the applet or program uses the link already established between the client and server systems through the Internet to upload the file as would be understood by a person of skill in the art. In another embodiment, the Java applet/program or Visual Basic program is downloaded from server system 20 to client system 10 when client system 22 first connects to a web page supported by server system 20. In yet another embodiment, an HTML file selection control command embedded in the web page may be used to upload a file to the server. In still other embodiments, patent application 14 can be uploaded to server system 20 using the Internet's file transfer protocol ("FTP") and appropriate FTP software executing on client system 10.
Once the patent application is successfully received by server system 20, system 20 sends a confirmation of receipt message to the client system (FIG. 2, step 54), saves the application for archival purposes (FIG. 2, step 55) and forwards the prepared application to a patent office system 30 (FIG. 2, step 56). The archival function of step 55 can be beneficially used to provide an accurate representation of the actual document(s) received and the date of receipt. Prior to steps 54-56, server system 20 can access the file representing patent application 14 to determine if the received application is complete and ready for filing. For example, in some embodiments, server system 20 may analyze the patent application file to ensure that the file includes a complete Specification (Background of the Invention, Summary of the Invention, Detailed Description and Abstract sections, e.g., for a U.S. filing), at least one claim, drawings or figures and formal paperwork (e.g., signed Oath or Declaration, Power of Attorney, Assignment form, etc.). If the application is not complete, server system 20 includes in message 54 a description of the missing information, a statement about whether or not the missing information is critical and a statement as to the possible ramifications of submitting the application in its current incomplete state. In such a case, message 54 also asks client system 10 if it wants to continue to proceed with electronic filing of the application. The client system can then reply (message not shown) and if the application is still to be filed, server system 20 proceeds with step 56.
In step 56, server system 20 forwards the received patent application to patent office system 30 over Internet 40 using a protocol previously determined by the patent office system 30 to be acceptable for filing the application. Generally such a protocol includes the patent office system generating a confirmation of receipt after successfully receiving the application where the confirmation of receipt includes information denoting the filing date and serial number (or application number) assigned to the application (FIG. 2, step 54). When server system 20 receives this confirmation of receipt (FIG. 2, step 58) it forwards the receipt to client 10 (FIG. 2, step 60) and automatically enters the assigned filing date of the application into a docketing database 28 along with other identification information such as the application's application number or serial number (FIG. 2, step 62). Server system 20 may also save a copy of the application as filed for archival purposes. Preferably, each of messages 52, 54, 56, 58, 60 and 62 is sent in real time while client system 10 is viewing one or more of web pages 24. In this manner, a single action by the client in step 52 of FIG. 2 (e.g., clicking on a "submit patent application" icon) both files the patent application and enters information into docketing database 28 necessary to create future reminder messages to maintain or pursue protection for the ideas and concepts disclosed in the patent application.
Docketing server system 20 then generates one or more reminder messages 64 that can be sent electronically or via paper mail/facsimile to client system 10 denoting an action that can or should be taken based on the application filing date stored in docketing database 28. Typically, these reminder messages are generated at a later date. Alternatively, the reminder message may be sent to another address (electronic or physical) specified by client system 10 either at the time the application was forwarded to server system 20 or at a later date. While not discussed above, some embodiments of the present invention transmit the patent application in steps 52 and 56 using a secure connection between the client system 20/server system 20 and between server system 20/patent office system 30. Such a secure comiection is beneficial in maintaining the privacy/confidentiality of the information in the patent application. One well known method of ensuring such privacy is to follow the well known Secure Sockets Layer ("SSL") protocol which is supported by currently up-to-date versions of both the Netscape Navigator and Microsoft Internet Explorer browsers. Another method employs public and private key encryption technology as is known in the art. Still another method relies on the security protocols built into an appropriate VPN. In other embodiments of the method of the invention shown in FlG. 2, client system 10 communicates the patent application to docketing server system 20 via an email message (thus not in real time), by a direct connection over a local or wide area network, or by communicating directly with system 20 using a modem or similar connection as is understood by persons of skill in the art. Docketing server system 20 then communicates the application to patent office system 30 through an internet connection 40 as described above or by using one of the other types of connections between the client and docketing server systems just described.
Prior to filing patent applications according to the method described in FIG. 2, customers (e.g., users of client systems 10) will typically have registered as a customer of docketing server system 20 and set up a customer account. Such a customer account can be used to track information related to the customer for patent filings such as an address at which future correspondence from the patent office and/or docketing system can be received, a patent office deposit account balance and other information. In one embodiment, a customer can tell docketing server system 20 the amount of money in the customer's deposit account and server system 20 can display this amount on a web page viewable during the process of FIG. 2. Then, after patent application 16 is filed in the patent office, the filing fee and other patent office charges can be automatically subtracted from the deposit account balance shown on the web page. This embodiment also allows a customer to add to its deposit account through an appropriate web page. Once the account is added to, docketing system 20 can either send a bill for the amount to the customer associated with the client ID number or electronically debit the customer's bank account if appropriate. The customer deposit account can be either an actual patent office account (such as a USPTO Deposit Account) or a virtual account that is part of a larger account maintained by client system 10 for multiple customers.
While client ID 16 was exemplified as an identifier entered by client system 10 in response to a request from server system 20, client ID number 16 may also be an identifier associated with a particular client and browser and stored in a file on the client, e.g., a "cookie" that is sent by client system 10 with every message sent to server system 20 to maintain a state in a stateless environment.
FIG. 4 is a flowchart illustrating an alternative embodiment of the present invention. The embodiment of FIG. 4 is particularly useful for filing a patent application in any patent office for which software to interface and coordinate the patent application filing directly with the patent office is available.
In order to better illustrate the embodiment of the method of the present invention shown in FIG. 4, the discussion below references both FIG. 4 and FIG. 5A, which is a diagram illustrating a possible sequence of communications between a client, a docketing service and patent office in the embodiment of the invention shown in FIG. 4. As with FIGS. 2 and 3, for ease of reference numerals used to identify transmitted messages in FlG. 5 A are identical to the reference number of the step generating the message shown in the flowchart of FIG. 3. As shown in FIG. 4, the method of this embodiment of the invention also begins with preparation of a patent application (FIG. 4, step 70). The application is then sent from a client system 100 directly to the patent office system 110 over Internet 40 using a transfer protocol previously determined to be acceptable by the patent office (FlG. 4, step 72). Upon receipt of the patent application, patent office system 110 generates a confirmation of receipt message that is received by client system 100 (FIG. 4, step 74). The confirmation of receipt includes an indication of the filing date assigned to the application.
Program code executing on client system 100 watches for receipt of the confirmation receipt and upon detecting such receipt automatically opens a communication link to a docketing server system 120. The program code then generates a message identifying the filed application (e.g., by an assigned serial number received with confirmation of receipt 74) and the filing date assigned to the application and transmits the message to docketing server system 120 (FIG. 4, step 76). Docketing server system 120 confirms receipt of message 76 (FIG. 4, step 78) and enters the serial number, filing date and other information as previously determined into a docketing database 122 (FIG. 4, step 80). In an alternative embodiment, program code generates an email message to docketing server system 120 that can be sent at a later date and time for step 76. Docketing server system 120 can then generate one or more reminder messages 82 in the future denoting an action that can or should be taken based on the filing date of the patent application to seek further patent rights or maintain present patent rights as described above with respect to FIG. 2.
In still another embodiment of the method of the present invention shown in FlG. 5B, upon receipt of confirmation of receipt message 74 in FlG. 4, program code executing on client system 100 enters the assigned serial number, filing date and other predetermined information into a docketing database 109 that is directly accessible to client system 100 over a local or wide area network (message 84). Thus this embodiment does not require the services of a separate docketing server system 110. Instead, a computer program similar to the program that executes on docketing server system 10 in the embodiment of FlG. 5 A to perform docketing and other functions according to the present invention executes on client system 100. This embodiment may be preferred by large corporations or law firms that want to maintain its docketing services in-house or within the firm. It is currently thought that this embodiment will be less favored by small companies or small law firms because of the potential cost savings associated with hiring an outside service to maintain and update the computer program associated with docketing server system 100 as needed.
The embodiment of the invention described with respect to FlGS. 4 and 5 A is particularly useful for automatically docketing filing dates for applications filed in the USPTO using the Electronic Filing System ("EFS"). The EFS includes a desktop software application program, electronic Packaging and Validation Engine ("ePAVE"), available free of charge from the USPTO that enables electronic filers participating in the EFS to author submission identification information and complete an electronic submission package including a patent application. The currently available version of ePAVE software (Version 2.0) enables patent applicants and appointed practitioners to conduct real time electronic filing of utility patent applications. Complete details of the ePAVE software are available online through the USPTO's Electronic Business Center Web site at http ://pto-ebc.uspto. ov/. FlG. 6 is a simplified block diagram of an exemplary hardware configuration that can be used to coordinate patent filings using the USPTO's EFS and the method of the present invention described with respect to FIGS. 4 and 5A. FIG. 6 includes a remote client computer system 100, a patent office server system 110 and a docketing server system 120. Client system 100, patent office system 110 and docketing server 120 communicate with each other through Internet 40. The configuration shown in
FIG. 6 can automatically docket patent filings performed under the guidance of ePAVE software with or without modifications as more fully described below. Reference numbers in FlG. 6 identical to reference numbers of FlG. 5A and/or FIG. 1 represent like components. In order to better understand the embodiment of the present invention shown in
FIG. 6 it is helpful to first understand the standard operation of the ePAVE patent submission-authoring software as provided by the USPTO. The ePAVE patent submission software works in conjunction with Entrust Direct public key encryption software. Thus, prior to using the ePAVE software to author patent submissions, the electronic filer must obtain a digital certificate from the USPTO to enable secure communication. The digital certificate can be obtained by following procedures explained at the USPTO Electronic Business Center at http://pto-ebc.uspto.gov/. The certificate includes two public key encryption certificates 104: a digital signing certificate and a confidentiality certificate. These encryption keys are used by the ePAVE application program and the Electronic Mailroom 111 of USPTO server 110 during the patent submission process to validate and authenticate the electronic patent filing. The ePAVE patent submission process includes, in order, (1) authoring the patent application specification 14, including figures, using software approved by the USPTO for the electronic filing (e.g., WordPerfect® XML Template); (2) validating the authored document by analyzing the specification versus a checklist of information the USPTO has previously determined must be provided in each patent specification; (3) creating the patent application submission by associating filing information (e.g., invention title, inventor names, attorney docket number and an email address for receiving email from the USPTO associated with the submission, etc.), attachments (e.g., assignment, power of attorney and other forms including information disclosure statements), information identifying the electronic filer (person or entity signing the transmittal form) and fee calculation information; (4) validating the created patent submission to ensure there are no errors in the submission and then (5) finally having the electronic filer submit the submission to the USPTO by signing the document and sending the submission. Prior to transmitting the submission to the USPTO, the ePAVE software requires that the filer log into the security portion of the software (Entrust Direct software) and enter the profile and password the filer previously designated when creating his digital certificate. After the correct profile and password are entered, the submission is transmitted to USPTO server system 110 in an encrypted format using encryption keys 104. The USPTO server system receives the submission at its Electronic Mailroom ("EMR") 111, which dates and timestamps the received submission, verifies that its contents have not been altered using PKI digital signature technology that references encryption key database 114 and returns an Acknowledgment of Receipt to client 100 in the same folder created by the ePAVE program for the patent submission. The Acknowledgment of Receipt includes a unique EMR transaction ID, the date and time received at the USPTO (filing date), the application serial number and other pertinent information. This Receipt is returned to the user's system in real time.
The embodiment of FlG. 6 modifies the standard ePAVE patent submission process just described by including either a program 105 that interfaces with an
Application Programming Interface ("API") provided with the ePAVE program or code modifications 106 (e.g., additional subroutines added to the ePAVE program) to the ePANE program itself to monitor the submission process and detect when the Acknowledgment of Receipt is received by client system 100. Once detected, the program 105 or code modification 106 reads the Acknowledgment of Receipt, extracts the filing date and serial number and generates a message to be sent to docketing server 120 with the filing date and serial number information (FIG. 4, step 76). Docketing server 120 processes message 76 and generate future reminder messages 82 as described above with respect to FIG. 4.
In one embodiment, program 105 or code modifications 106 detect receipt of the Acknowledgment of Receipt by repeatedly examining, i.e., polling, the folder created for submission of the patent application. The presence of a new file in the folder alerts program 205/code modification 106 to receipt of the Acknowledgment. In another embodiment, program 105 /code modification 106 monitors the port used for the secure communication session between client system 100 and patent office system 110. The Acknowledgment of Receipt is received at that port after the patent submission is sent to patent office system 110. In still another embodiment, code modification 106 is actually a modification to the firewall program or application server (not shown) for client system 110. In this embodiment, the modified firewall program or application server monitors the port rather than the enhanced ePAVE program.
FIG. 7A is a simplified system-level block diagram of yet another embodiment of the present invention. The system shown in FlG. 7 A is similar to the one of FIG. 1 except that docketing server 20 communicates with patent office 30 using a standard paper-based mail service 35 previously determined to be appropriate by the patent office. Server system 20 acts as an intermediary between a client (e.g., a patent filer) and an patent office. When a client wishes to file a patent application, the client electronically sends the application to the server system instead of mailing or otherwise sending the application to the patent office. The server system then processes the received application, prints it and mails it to the patent office using a paper-based mail service or process previously determined to be appropriate by the patent office. Processing the application includes automatically docketing the filing of the application without necessitating separate entry of the filing date by a docketing clerk or another employee of the client as described more fully below.
As described above with respect to FlGS. 1-3, docketing server system 20 generates and maintains web pages (not shown) that guide the client system through the process of filing a patent application. FlG. 7B illustrates one possible sequence of communications between client system 10, docketing server system 20 and patent office system 30. These communications can be similar to those discussed with respect to FIGS. 2 and 3 and are described in more detail in conjunction with FIG. 8.
FlG. 8 is a flowchart illustrating one embodiment of the computer-implemented docketing method of the present invention that can be used to file a patent application generated by client system 10 with patent office system 30 and automatically docket such filing. For convenience, the same reference numbers used to identify certain steps set forth in FlG. 8 are also used in FlG. 7B to denote the message sent between servers corresponding to the respective step of FlG. 8. In step 156, server system 20 determines whether the application from the client in step 52 was received in time for the application to be filed in the patent office that day. As discussed below, filing the application will generally include printing a copy of the patent application, generating, assembling and completing various official documents for the filing (e.g., a transmittal form and express mail receipt for U.S. filings) as well as physically mailing the completed patent application package to the patent office. These steps generally require a certain amount of time in order to ensure that everything is done properly. Thus, embodiments of the invention contemplate that server system 20 will establish a predetermined cutoff time that will be made known to clients 10 via web pages 24 or another message. If a patent application is received by server system 20 prior to the cutoff time on a day in which the appropriate mail service is available (e.g., not a federal holiday in the U.S.), server system 20 guarantees that the patent application will be filed that same day and thus will docket the filing date of the application as today (step 158A).
If, on the other hand, the application is received by server system 20 after the cutoff time, the application is assigned a filing date (step 158B) of the next available date for which a filing date may be assigned (e.g., next day that express mail service is available in the U.S.). If the application is received on a date on which the mail cannot be sent and thus a filing date cannot be assigned such receipt will be treated similar to missing the cutoff time and the application will be filed on the next available day. It is expected that the web pages 24 will make available to clients' information related to the cutoff time and dates on which mailing services are unavailable. In one embodiment, different cutoff times can be established for different clients based or based on different level of fee services. For example, server system 20 may charge client 10 $X to file an application using a 4 hour cutoff time (4 hours prior to midnight at the location of the mail room associated with server system 20 - 8:00 p.m.) and $2X to file an application using a 1 hour cutoff time (11:00 p.m.). In still another embodiment, different cutoff times can be established depending on whether or not previous notice was provided by client 10 to server system 20 that a filing was to be expected. For example, server system 20 may use a 2 hour cutoff time for a client that notifies the server system a day in advance that an expected late patent filing will be performed and use a 4 hour cutoff time for other filings.
After the filing date is assigned, the application and all associated forms are printed and compiled into a package that is fit to be sent to the patent office (step 160). The forms in this step are generated and printed based upon information the client submits with the patent application in step 52 and/or with information previously supplied by the client (e.g., information unlikely to change (e.g., small entity status, address information, etc.) that is supplied by the client when initially signing up for server system 20's filing service). Then the application is mailed (step 162) using standard mailing procedures previously determined to be acceptable by the patent office. As an example, for a U.S. patent application, step 160 may include printing a transmittal form, an express mail receipt and having the appropriate person sign the mailing certificate under 37 C.F.R. § 1.10 while step 162 includes delivering the completed package containing the application to a U.S. Post Office on the docketed filing date.
Once the application has been mailed, a message is sent from server system 20 to the client system confirming the filing date of the application (step 164). In one embodiment, this message is generated automatically by servers system 20 in response to assigning a docketing date in step 158A/158B. In another embodiment, message 164 is sent only after an employee or other appropriate person having access to server system 20 confirms to the server system that the application was correctly filed on the correct filing date. This process may include having server system 20 present an entry on a data entry screen that includes a "done" entry that can be "checked off" by the employee or other appropriate person. As an example, in one embodiment, a terminal (not shown) that accesses server system 20 displays a list of all applications that are docketed by and filed with the help of server system for a particular day. After making a trip to the Post Office, the employee returns to the terminal and clicks on the "done" entry for each of the applications that was just filed. Alternatively, the employee may click "done" after verifying the package contents and/or placing the package contents into an envelope addressed to the patent office, but prior to effecting delivery of the package. In this manner, confirmation of filing can be done without requiring entry of a filing date. In some embodiments, the initially docketed filing date is a soft or changeable date until such a confirmation process. If the actual filing date differs from the docketed filing date the discrepancy can be entered into the system and appropriate action taken (e.g., generation of a Request for Corrected Filing Receipt). If the filing date is confirmed, the "soft" date can be changed in status to a "hard" or locked, unchangeable date that can only be changed by system personnel with appropriate authority levels.
In some embodiments, step 160 will list a mailing address associated with the company that owns/runs server system 20 as the official mailing address for correspondence with the patent office. In these embodiments, message 164 may be sent after the filing receipt, which is sent from the patent office to the address associated with the server system (message 168 in FIG. 7B), is received. Alternatively, message 164 may be sent as described above and an additional message (not shown) may be sent from server system 20 to client 10 confirming that the filing date assigned by the patent office matches the filing date communicated in message 164. A person of ordinary skill in the art will appreciate that the order in which steps 158A/158B, 160, 162 and 164 is flexible. That is, these steps may be performed in an order different than the order set forth in FIG. 8.
In each of the embodiments described above in conjunction with FlGS. 7A, 7B and 8, a single action by the client in step 52 (e.g., clicking on a "submit patent application" icon) both files the patent application and enters information into docketing database 28 necessary to create future reminder messages to maintain or pursue protection for the ideas and concepts disclosed in the patent application.
Docketing server system 20 then generates one or more reminder messages 66 that can be sent electronically or via paper mail/facsimile to client system 10 denoting an action that can or should be taken based on the application filing date stored in database 28. Typically, these reminder messages are generated at a later date. Alternatively, the reminder message may be sent to another address (electronic or physical) specified by client system 10 either at the time the application was forwarded to server system 20 or at a later date.
FIG. 9 is a simplified system-level block diagram of still another embodiment of the present invention. The system shown in FlG. 9 includes an IP data processing system 200 according to the embodiment as well as various participants in the patent process. The participants shown in FIG. 9 include technology developers 210, patent law firms 220, service providers 230, patent offices 240, prior art databases 250 and potential licensees 260. As described in detail below, IP data processing system 200 is a web-enabled electronic platform (e.g., an Application Service Provider ("ASP"), a VPN or an appropriately configured intranet that can be utilized by all participants in the patent process. Processing system 200 converts the paper-based patent prosecution system into an electronic workflow pipeline, allowing every step in the process to be executed from a computer desktop, lowering administrative costs and processing time for patent applications. Processing system 200 provides technology developers 210 and its associated patent law firms 220 a highly secure, central data repository that can be shared between participants on an as-allowed basis. Information generated and used during the patent prosecution process can be shared between a technology developer 210 and appropriate patent law firm 220 and service providers 230 in order to create patent filings, prosecute such filings through issuance and then subsequently maintain patents after grant. Some specific functions provided by IP data processing system 200 include:
• online creation of invention disclosures, witnessing, archiving and secure sharing of invention disclosures between technology developers and patent counsel;
• automated conversion of invention disclosures into patent applications and instant electronic filing of such applications in the PTO, giving inventions the earliest possible filing dates;
• electronic filing and prosecution of patent applications in patent and offices worldwide, allowing all correspondence to and from patent offices to be paperless; • automated docketing in a standardized database accessible to all authorized participants, electronic notification of due dates and electronic payment of annuity fees; and
• online receipt and examination of patent applications and issuance of office actions by patent offices worldwide.
As mentioned above, in addition to IP data processing system 200, FIG. 9 shows various patent process participants including technology developers 210, law firms 220, service providers 230, patent offices 240, prior art databases 250 and licensees 260 connected to IP data processing system 200 through the Internet 40. For convenience, each of these participants is referenced by a dotted line that encompasses individual entities of the participant type. For example, technology developers 210 are shown in FIG. 9 as including individual technology developers 210(1), 210(2) through 210(n). It is to be understood that, while shown in FIG. 9 as a group, these multiple technology developers are separate entities that likely have no relation to each other than its classification within this patent application as developers of technology. It is also to be understood that, while not shown, each individual participant systems typically includes its own firewall system that implements access control functions to isolate the system from unwanted intrusions by others.
Technology developers 210 include corporations, universities and individual inventors seeking to file patent applications and receive issued patents. Patent law firms 220 include U.S. patent attorneys, patent agents and foreign patent attorneys and/or agents. Service providers 230 include patent draftsman, prior art search companies, translation companies and other entities that provide services useful to the patent process as well as financial institutions and other parties that have tangential roles in the process. Prior art databases 250 include public and licensed private databases, such as online patent databases (e.g., issued U.S. patents, published European and Japanese patents, etc.) and non-patent databases. Patent offices 260 include patent offices worldwide including the USPTO, the EPO, the JPO, the Taiwanese Patent Office, etc. As shown in FIG. 9, IP data processing system 200 includes a web server 201, a database 206 and paper mailroom 208. Web server 201 includes a server engine 202 that generates and sends graphical documents including web pages 204 to client systems as requested and an electronic mailroom 207. As used herein, a "client system" is a computer system that displays web pages generated by server engine 202, e.g., through a browser residing on the client system. Thus, technology developers 210, patent law firms 220, service providers 230 and licensees 260 typically include one or more client systems within the group. For example, a corporation (technology developer) may have 250 inventors, 4 patent administrators and 2 in-house patent attorneys. Each of these individuals likely has their own computer system and can thus become a client system. Additionally, computers that are part of patent offices 240 can also be client systems in some embodiments of the invention as described below. Each client system can display the web pages generated by server engine 202.
Each of such web pages is uniquely identifiable by a Uniform Resource Locator ("URL") and is stored in a computer-readable memory (not shown) accessible to the server engine as previously described.
Database 206 stores all information pertaining to the patent developers' IP portfolios. Patent process participants (such as the technology developer employees and outside law firm personnel) access this information as needed and only to extent that their access rights permit. The information in database 206 includes draft and completed invention disclosures, draft and completed patent application documents, messages and discussions pertaining to invention disclosures and patent applications, patent and patent application status information, prior art publications, etc. Having database 206 accessible to participants remotely through the World Wide Web provides a great deal of flexibility to each participant as defined and allowed by the security protocol and permission schemes implemented by IP data processing system 200.
IP data processing system 200 communicates with patent offices 240 over Internet 40 through electronic mailroom 207 and through standard snail mail (e.g., U.S. Postal Office Express Mail) using paper mailroom 208. For such communications, in some embodiments system 200 sets the correspondence address to mailroom 207 or 208 so that replies to the communications can be tracked and entered into database 206 as described below. Electronic mailroom 207 is part of server 202 and includes a suite of programs that interface to the standards set by each patent office 240. Also, in order to track and update status information for pending U.S. patent applications, such as Examiner name, assigned art unit and class/subclass, etc., electronic mailroom 207 has the ability to interface to USPTO's Patent Application Information Retrieval ("PAIR") system using appropriate digital certificates. Electronic mailroom 207 also includes other programs to interface with other patent offices. Paper mailroom 208 includes printers, fax machines and other appropriate equipment to carry out all the duties necessary to file patent applications and other formal papers in patent offices using standard mailing procedures. Paper mailroom 208 also includes scanners and equipment necessary to scan papers received from technology developers 210, patent law firms 220 and patent offices 240 into computer- readable format. Such correspondence is scanned and analyzed by optical character recognition ("OCR") software to create two version of the document: an image version and a text version created by the OCR software. The OCR software is calibrated to recognize particular fields within common patent office forms to capture data from those forms so that appropriate data (e.g., due dates, Examiner's name, Applicant, application no., etc.) from such papers can be parsed and entered into database 206. To this end, the fields of various patent office forms that are scanned by mailroom 208 are mapped to database 206 along with the document type (determined from the form recognition sequence) in order to enable the system to determine the appropriate docketing deadlines. Alternatively, or in addition to such scanning, personnel in mailroom 208 can directly enter appropriate data into database 206 using computers or data entry terminals coupled to the database through a local area network or similar network. Once scanned into computer-readable format, communication between IP data processing system 200, technology developers 210 and patent law firms 220 can proceed in a manner that, from the standpoint of the participants, seems entirely paperless.
IP data processing system 200 generates web pages 204 that facilitate all aspects of the patent process including the generation of patent disclosures, workflow routing, generation of and prosecution of patent applications, foreign filing, annuity and maintenance fee payments, attorney and service provider invoicing and patent licensing among others. Prior to using IP data processing system 200, however, new customers (technology developers, law firms, etc.) are generally asked to set-up an account. The set-up process allows for varying degrees of customization. On one end of the spectrum, the set-up process can be very straight forward allowing the customer to enter address and billing information and select one of several generic, predefined manners of working with IP data processing system 200. On the other end of the spectrum, the set-up process can be rather lengthy allowing a customer to highly customize EP data processing system 200 to its requirements. For example, in one set- up procedure information is entered by the customer to set-up the customer's account, record billing information, record a patent office deposit account number and a customer number, define the user list, define the role of each user (thereby defining various home pages), define the organizational structure and hierarchy of users, establish any interfaces with appropriate databases or applications of the customer, define the customer's workflow process as described in more detail below, define any customizable aspects of the database such as field names, forms and template wizards, database organization, and user-access rights, set any user-definable preferences, arrange for importing any user-specific content, and implement appropriate security measures such as digital certificate assignment. Set-up may also involve importing any legacy data (in supported formats) into the system using document upload process. Typically, large corporations and law firms will implement an involved set-up procedure like this while individual inventors and small companies without in-house attorneys will opt for simpler set-up procedures.
The workflow process is the process of routing documents to predetermined users, notifying the appropriate users of required tasks, periodically reminding users of task completion deadlines, and tracking time periods associated with both tasks and the time between tasks, all according to a customer-defined workflow process design. Workflow examples include the circulation of mvention disclosures to a review committee for filing decisions, routing of invention disclosures to a working attorney for drafting patent applications, circulation of draft patent applications to inventors and managers for review and comment, circulation of patent office forms to inventors and managers for signature, notification of attorneys of the receipt of patent office actions and papers, and routing of documents to service providers (e.g., informal drawings to a draftsperson for creation of formal drawings) as needed. The workflow design is defined in the customer set-up process. In the set-up process, users are assigned roles that play a part in the workflow. Rules are established that dictate to whom documents are routed at each stage in the process, how often users should be reminded of a task, and what task is required next after each preceding task. IP data processing system 200 has a mechanism for notifying users of required tasks, and for users to notify the system that tasks are complete. The system makes available (for example, through html links to documents stored in database 206) to the appropriate users any documents necessary for performing the relevant task (e.g., a docketing due date reminder task for a foreign patent filing decision generated for an appropriate in-house attorney at a technology developer 210(x) may include an html link to the parent patent application or appropriate sections of the application so the attorney can quickly review the patent's abstract and claims).
Once a customer (e.g., technology developer 210, patent law firm 220, etc.) has set-up IP data processing system 200 to its requirements, the system is ready to be used. The functions available to a particular client system of a particular customer depend on the role of the client system in the patent process. For example, some of the functions provided through web pages 204 are restricted to only certain individuals and thus may not be accessible to others. Thus, web pages 204 include different "home" pages that are the initial web pages displayed to a client system based upon the role of the client system in the patent process. These home pages include html links to functions that have been determined to be appropriate for the particular client system as part of the set-up procedure.
As an example, the home page that is presented to the client system for an inventor working at a particular technology developer 210(x) is different from the home page that is presented to an in-house attorney working at the same technology developer 210(x). Similarly, both of these home pages are different from the home page presented to an outside attorney working at patent law firm 220(y) that works with and represents technology developer 210(x). One benefit of IP data processing system 200 is the way information is assembled and managed. Much of the information is organized into Document Entities. A Document Entity is a high-level description of a type of document that is created, manipulated, reported, tracked, etc. by IP data processing system 200. Each Document Entity is described by a collection of rules that define necessary attributes including data fields that must be complied with/populated for the given Document Entity to be considered complete, such as unique identifiers for the document and the relationship between that document and other documents in system 200. The document management function of EP data processing system 200 implements the access, edit and version control rules for all Document Entities in the system. Some of these rules may default to predefined rules while others are set in the user set-up process described above.
A Document Entity is created when it is given a unique set of the attributes listed in an Entities Table. When a Document Entity is created within the context of a case (i.e., the electronic file that is created in conjunction with the creation and/or submission of, for example, an invention disclosure), the Document Entity acquires some of its attributes from that case. Any other required Document Entity attributes must be entered by the user before the Document Entity creation step is complete. A Document Entity may be created before or after the underlying file is created.
When a client system requests the creation of a new word-processed Document Entity, IP data processing system 200 creates a new Word® (or WordPerfect® or other suitable word processing document) document and passes the client system into that document after all required Document Entity attributes have been acquired or entered. Version and tracking control are provided to enable a user to track the document as it is routed through the system for review and approval. Importantly, inventors can review the document either sequentially or concurrently.
System 200 also includes an archival function that saves and locks all documents submitted to and received from patent offices so that they cannot be subsequently altered as well as an MIS log function that generates an "audit trail" that records events in a separate database table, including who, what object, what time, and what was done (read, write, edit, witness) to all documents for all customers.
The way that a Document Entity is managed depends on the Document Entity attributes that are associated with that Document Entity at creation or thereafter. Relevant attributes include, for example: document type, status and security profile. For example, draft patent application specifications (typically Word® or WordPerfect® documents) may be set up to be edited only by the originator, or may allow for an editable version to be routed to co-inventors for review and comment. All others who have authority to access the draft patent application will be able to edit new versions of the document. It should be noted that some documents sent from system 200 to patent offices 240 are actually collections of Document Entities. For example, an electronic patent application comprises a collection of Document Entities including word-processed document files (e.g., a patent specification), form-based document files (e.g., a transmittal form) and image files (e.g., figures).
When a client system requests the creation of a form-based Document Entity, IP data processing system 200 populates specific fields of the form as appropriate. For example, if the user is working on a filing for a particular case and creates a Transmittal Form for that filing, creation of the Transmittal Form Document Entity within the context of that case and that filing with cause the inventor, Patent Office Serial Number, external and/or internal docket number, invention title, filing date, art unit, and Examiner name fields to be populated from the attributes of the case. The underlying document file is also created for further preparation and finahzation by the user. The system will prompt the user for specific information for unpopulated fields or confirmation (and validation) of populated fields.
IP data processing system 200 may include various form "wizards" for assisting client systems with the completion of numerous governmental applications and forms. System 200 also includes software to "map" the data from the form wizards to the forms themselves so that the users can switch from the "wizard view" to a what you see is what you get ("Wysiwyg") view. Additionally, some of the Wysiwyg views will have direct editing capability of selected fields.
There are a variety of documents that will not be created within the IP data processing system 200. Accordingly, system 200 provides a sophisticated document upload process. The upload process provides the correct Document Entity designation. Uploaded documents fall into two major categories: (1) documents created electronically, but not within the IP data processing system 200; and (2) paper-based documents. Electronic documents that are uploaded into system 200 include patent applications, amendments, requests for reconsideration and other text-based documents prepared by client systems in Word® or WordPerfect®. These documents become Document Entities once they are in IP data processing system 200. Drawings are part of almost every patent application filed. Many drawings are prepared using some kind of graphics software. IP data processing system 200 system converts such graphic images to a common file format (such as PDF) to allow access for all necessary participants. In addition, the original format will be retained for use with (e.g., revisions to) the original graphics tool.
As previously mentioned, system 200 also provides for paper documents to be scanned and/or uploaded (scanned) into database 206. The current USPTO EFS does not provide office actions and other USPTO correspondence in electronic form. Rather, these mailings are made in hard copy only. Such hard copies of USPTO correspondence are uploaded into IP data processing system 200 through paper mailroom 208. The current USPTO EFS also requires inventor declarations (the documents in which the inventors state that they are the actual and first inventors of the patent application's subject matter) to be signed by hand; scanned and uploaded as electronic documents for filing. As the USPTO and other patent offices permit the electronic communication of more and more documents between applications and the patent offices, such uploads into system 200 may no longer be necessary.
Other types of paper documents that may be uploaded into system 200 include invention disclosures that are typed, handwritten or otherwise created in other than electronic form; handmade informal or informal drawings; and any correspondence, memos and notes associated with a patent application created in hard copy outside IP data processing system 200 that are associated with the corresponding patent application file and desired to be tracked in system 200. IP Data Processing system 200 may provide for an Alert system. One of the features of IP data processing system 200 is its ability to facilitate communication between all parties associated with the patent process and its ability to notify users of alerts associated with cases assigned or associated with a user. Alerts include calendared docket items (e.g. due dates), messages (such as internal messages), threaded discussions and assigned tasks. To this end, the web pages generated by IP data processing system 200 and displayed to client system includes an alert boards that tracks and displays such communications and notices to the user. The alert board also provides the ability to conduct off-line discussions pertaining to cases and Document Entities within cases. In one embodiment, the alert board is available to, and can be presented to, all registered client systems of system 200. The content of the alert board, however, varies from client system to client system as the board displays messages, discussions, calendared docket items, and tasks that are specific to each client system. A registered client system is a client system that has run the user set-up process itself or been defined by another client system during its user set-up process. Thus, registered client systems can be contrasted to client systems that have no predefined relationship with system 200 and are just "browsing" its pages. In another embodiment, however, even such unregistered client systems are presented with an alert board that displays general information, e.g., updates on patent law, that such unregistered client systems may be interest in.
In one embodiment Discussion Items are posted and linked to a topic and to each other as in a threaded discussion model. Like Document Entity attributes, the Discussion Items contains attributes that connect the Discussion Items to cases and specify access and security rules. Discussion Items are an alternative to email and may be used in addition to the internal messaging function. Discussion items typically include the ability to have a threaded discussion. Tasks may also be created to send a message notifying a recipient that he or she has been assigned a project or task to perform in conjunction with the case. The user can specify who can see or respond to a given discussion item. Discussion Items are tracked and displayed like a Document Entity in the Alert Monitor as well as the electronic case file.
Tasks are another type of alert that can be generated. Tasks include the name of the task to be performed (e.g., signature required, etc.), the date the task is due, and the identity of the user whose responsibility it is to perform the task. There may be multiple due dates for each task, a final due date and preliminary "ping" dates reminding the user that the final due date is approaching. Tasks are displayed in the Alert Monitor. System 200 will notify client systems through the Simple Mail Transfer Protocol ("SMTP") that there is an alert in the system for pick-up. One of the more common alerts that are sent to individual client systems through the alert board is a docketing reminder. Docketing is the heart of managing patent information because it tracks calendared due dates. The docketing engine of IP data processing system 200 manages the calendar of due dates for all the cases tracked by the system and allows practitioners to keep track of the meta data for the case (i.e., bibliographic information) as well as the progress of a case, the relationship between cases and due dates. The user can access meta data for a case through the electronic case file. Meta data is case summary information including bibliographic information. Some examples of meta data fields are, for example, title, serial number, filing date, etc. The software includes an engine that implement rules associated with the docketing process.
Notification of impending deadlines for cases is sent to client systems through the alert board. Users are provided notification of both reminder deadlines as well as the due dates for calendared items. The frequency of reminders leading up to patent office deadlines may be determined by the client during the user set-up process as part of the client or user's workflow definitions. Some deadlines are defined based on dates documents are transmitted to an patent office while other deadlines are defined based on dates documents are mailed from patent offices or received by IP data processing system 200. For example, the date a patent application is first filed in a first patent office triggers deadlines for filing the application in foreign patent offices where novelty has been preserved. Similarly, the date an Office Action is mailed from an patent office typically triggers a due date for submitting a Response to that Office Action. For each such deadline or due date a new docket entry is created that reflects the action that needs to be resolved by the deadline. When documents are received electronically by system 200, appropriate docket entries are created automatically. When paper documents are received and scanned into the system docket entries can either be created automatically from the scanned information that is parsed into database 206 or can be created by personnel in paper mailroom 208. If created manually, only actions types that have been defined for the country in which the case has been filed in are available for selection when the mailroom 208 employee enters a task type.
Typically there is an ability to designate responsibility for completing the tasks or docket items in the system. In one implementation, system 200 identifies the document type from the scanned image or electronically received document and automatically associates a docket item in response to the scanned document.
There are two types of dates typically associated with a docket entry. The first is a reminder (soft date), the second is an actual due date (hard date) of the document, the date of the application, the date of the patent, or the date of the priority application, or the earliest priority application (where there are multiple cases). These reminders and due dates appear in the alert board of an appropriate client system as a list of outstanding actions that require response. In one embodiment, customers are able to select an option where reminders appear on the alert board only until the date of the reminder and then automatically lapse in favor of the actual due date or a later reminder. Actual due dates, however, are removed from a client system's alert board by either extending the due date (manually), by indicating that docket item was completed (e.g., the Response was filed) or assigning the docket item to another client system that acknowledged and accepted the assignment of responsibility.
The home page for attorneys (both in-house and outside counsel) and patent administrators allows quick access to reporting capabilities that enable "big picture" views of a company (or client's) IP assets. The home page also includes an alert board as described above that track and presents alerts to individual client systems including those associated with docketed due dates.
FIG. lOA is an example of a web page 300 generated by server 202 as the home page for an in-house attorney client system according to one embodiment of the present invention. As shown in FlG. 10A, web page 300 includes five primary components: a navigation menu 301; an alert summary section 302, a portfolio overview section 304, a custom information section 306 and a search function 308. Web page 300 is for example purposes only. Other home pages may include different components, provide access to different functions or features and/or display the components in a different layout.
Navigation menu 301 indicates to the user of the client system what function the client system is accessing in the menu system of various functions provided to that client system by IP data processing system 200. For example, on web page 300, the Home icon in menu system 301 is in bold indicating the client system is viewing the Home page. Menu 301 also allows the client system to select the icons shown in the menu system to go directly to the associated function. Five separate icons are included in menu section 301 of web page 300: Home, Monitors, Portfolio, Tools and Administration. Alert summary section 302 indicates what type of alerts are active on the client system as well as how many of each type. As evident from page 300, this particular client system includes four alerts with deadlines (e.g., docket items), four message alerts (e.g., communications between attorneys or from an inventor) and two tasks (e.g., non-docket To-Do items, such as review and approve an initial draft application prepared by an outside attorney). Portfolio overview section 304 provides quick access to some of the various reporting capabilities of P data processing system 200, and custom information section 306 provides access to functions such as patent watches, industry news and patent law updates. Search section 308 is a search engine that allows the client system to perform full text searches on all information stored in database 206. Some typical information searched includes inventor name, case reference number, patent serial number and the like. The search engine provides both basic and advanced searching capabilities including Boolean and natural language searches among others. The search engine only returns results for information the particular client system has rights to view. In order to view the current alerts the client system is tracking, the client system can select one of the entries in alert summary section 302 or can select the monitor icon from menu section 301. FIG. lOB shows a web page 310 where the client system chose to view its alerts through menu section 301. Web page 310 shows all the current alerts 313 for the client system including docket entries, tasks and discussion alerts. A field 312 allows the client system to filter alerts 313 by alert type. FlG. IOC shows a web page 314 generated when field 312 is selected to display only docket alerts.
In each of web pages 310 and 314, individual alerts are shown with respect to the case reference number (file number), title, due date (if one exists) and originator of the alert. Further details of each alert (e.g., the text of a discussion alert message) can be viewed by selecting the html link underlying the selected alert in alert section 313. Additionally, all documents associated with a particular case are accessible by selecting the reference number or title of the case (although not shown in the FlGS., each of these entries is an html link to underlying information). For example, selecting file 320 having a File No. 435-78-2387456 and entitled "Mars Rover Controller" (hereinafter referred to as the "Mars Rover" file) from web page 310 results in display of a web page 322 as shown in FIG. 10D.
Web page 322 emulates the look and feel of an actual three sided paper file of the type commonly used by IP practitioners and referred to as a "trifold." This electronic "trifold" view of a specific case is typically accessible from any menu options where data associated with specific cases is displayed including the portfolio view, search engine 308 and others. There are three sections on web page 322: correspondence section 324, file history section 326 and document section 328. Correspondence section 324 displays a list of all unofficial correspondence between the attorneys, patent administrators and inventors for the Mars Rover file. Each entry in correspondence section 324 is an html link that leads to the underlying correspondence document. Thus, to view an individual correspondence document in section 324, the user of the client system simply selects the link associated with the desired correspondence document. Similarly, each of the documents shown in file history section 326 and document section 328 is also html links to underlying documents. File history section 324 lists all the official papers that have been sent to and received from the patent office, while document section 328 lists all the patent documents associated with the Mars Rover file including documents, such as the Invention Disclosure, that are not filed in any patent office.
Also shown in FIG. 10D are upload, create and submit icons 330a, 330b and 330c. Selecting upload icon 230a allows a client system to upload a document that was not originally created through IP data processing system 200 into the system. Create icon 330b, on the other hand, allows the client system to initiate creation of a new document, such as a new patent application from an already filed Invention Disclosure or a new Amendment after receiving an Office Action. When create icon 330b is selected, all fields that can be populated with data already in database 106 are so populated.
Submit icon 330c allows the client system to submit a patent document including patent applications, amendments and other papers to an patent office using either electronic mailroom 207 or paper mailroom 208. Referring to FIG. 11, which is a flowchart depicting a sequence of events involved with filing an application through submit icon 330c according to one embodiment of the invention, appropriate filing papers including the patent specification, drawings and others are generally prepared prior to selecting submit icon 330c (step 340). These papers are stored in database 206 and typically either created through data processing system 200 (e.g., word-processed documents such as the patent specification), uploaded to system 200 (e.g., image-based documents such as drawings scamied into PDF format) or created by system 200 (e.g., form-based documents such as the fee transmittal form). Upon selecting submit icon 330c (step 345), system 200 analyzes the patent filing papers to determine that it is complete and ready to be submitted to an patent office. For example, if the document is a U.S. patent application, system 200 checks to ensure that the application includes a complete Specification (Background of the Invention, Summary of the Invention, Detailed Description and Abstract sections, e.g., for a U.S. filing), at least one claim, drawings or figures and formal paperwork (e.g., signed Oath or Declaration, Power of Attorney, Assignment form, etc.) and all the necessary signature blocks have been signed. If system 200 determines the application is not complete, the system generates a message that displays the missing information, a statement about whether or not the missing information is critical and a statement as to the possible ramifications of submitting the document in its current incomplete state (step 350). In such a case, the message also asks the client system if it wants to continue to proceed with submission of the document. The client system may also be given a chance to correct or create the documents sign specific documents (step 355) or cancel the filing process as appropriate (step 357).
Assuming the document is to be filed (e.g., the documents are completed (or the user selects an override option), system 200 next determines which option for submitting the patent document is available based on the document to be submitted and the patent office 240 to which it is being submitted. If such a determination indicates that only one mailing option is available, the procedures for that mailing option are initiated. If system 200 determines that either electronic or paper-based filing methods can be used, system 200 prompts the user for a preference (step 360). In other embodiments, user preference for such situations are defined in the user set-up process causing system 200 to default to such predefined preferences.
If a paper-based filing is selected documents are printed and mailed through paper mailroom 208. The mailing and docketing of the filing can be achieved in a manner similar to that described above with respect to FIGS. 7A, 7B and 8 (steps 365-367). If the patent document (e.g., a patent application) is to be submitted electronically, system 200 forwards the patent document to a patent office system 240 over Internet 40 using a protocol previously determined by the patent office system to be acceptable for filing such documents (steps 370-372). Generally such a protocol includes the patent office system generating a confirmation of receipt after successfully receiving the application as described above with respect to FlG. 6. When the patent document is a new patent application the confirmation of receipt may include, for example, information denoting the filing date and serial number (or application number) assigned to the application. When IP data processing system 200 receives this confirmation of receipt, it automatically enters the assigned filing date of the application into database 106 along with other identification information such as the application's application number or serial number. System 200 also saves a copy of the application as filed for archival purposes. Preferably, this entire process occurs in real time while the client system is viewing the document submission web page. In this manner, a single action by the client (e.g., clicking on a "submit patent application" icon) both files the patent application and enters docketing information into database 206 that can be subsequently used to create future reminder messages to maintain or pursue protection for the ideas and concepts disclosed in the patent application. These reminder messages can then later be generated by system 200 and transmitted to appropriate client systems as described above (step 375).
As described above, system 200 is entrusted with highly sensitive IP documents that often represent the "crown jewels" of technology developers 210. Accordingly, system 200 has extensive security measures to ensure such information remains confidential. Some of these security measures include: verifying user identity (e.g., through a logon process) for each client system that logs onto system 200, controlling user access to resources based on permission levels, encrypting sensitive data in transit, encrypting sensitive data in database 206, detecting and responding to attacks in real time and providing complete audit information to track activity.
Many documents submitted to patent offices require the signature of a person, such as the inventor, an officer of the assignee, the agent or attorney of the inventor or assignee among others. When such documents are submitted electronically to system 200 by a customer for filing in an patent office, such documents must be signed in a manner that will be acceptable to that patent office. For example, the USPTO's electronic filing system allows documents to be submitted electronically using their ePAVE software and Entrust's system of digital certificates. Currently the USPTO will accept "electronic signatures" on certain kinds of documents that are currently signed by attorneys. These electronic signatures are simply a string of characters placed by the attorney between two forward slashes; e.g., /joe_smith/. The USPTO currently requires copies of actual signatures, however, on inventor declarations, power of attorney and other documents signed by inventors or corporate applicants. IP data processing system 200 permits client systems to place its electronic signatures on documents patent offices allow to be signed electronically. For all other signed documents, the document will contain a signature field. The signer's signature will be scanned, uploaded into IP data processing system 200 and the digitized signature will be merged onto the signature field of the document. The document will not be able to be modified after it has been signed. Other forms of electronic signatures will be supported by system 200 as patent office rules are changed to allow them.
Also, one primary concern of patent office 240 is likely to be authentication that the client system has the intent and authority to file the patent application. To this end, some patent offices, e.g., the USPTO, may require a digital certificate and password or other security measures as previously mentioned to provide a higher degree of certainty for such authentication then permitted by just a signature. If the digital certificate and password are associated with client system 210, a number of different techniques can be developed to pass the certificate to patent office 240. For example, in one embodiment, the certificate/password combination is passed to or stored on server system 200 and sent from system 200 to patent office system 240 with the patent application.
If patent office 240 does not allow a third party such as server system 200 to store both the patent application documents and the security certificate and password on its system, an alternative technique stores the certificate/password on the client system and interfaces these elements of the filing package through another vendor software package, e.g., a program that interfaces with the USPTO's PAIR system, such as Partridge available through Patents.com. A further alternative includes having server system 200 assign a transaction ID to a filing event and sending the transaction ED to the client system. An applet or similar program running on the client system then can transfer the appropriate digital certificate and password combination along with the transaction ID directly to patent office system 240 via the Internet while the patent application filing documents are matched with the same transaction ED and sent by server system 200 to patent office system 240 as described above. Patent office system 240 can then match the filing papers with the certificate/password combination using the transaction ID. In another embodiment, rather than having an applet forward the transaction ID, certificate and password from the client system to the patent office system, the client system can manually select to forward the transaction ED, once received, to patent office system 240 using the Internet, email or other appropriate electronic medium.
FIG. 13 illustrates a second embodiment of an IP data processing system 300 according to the present invention. In FlG. 13, elements similar to those identified in FIG. 2 are given identical reference numbers. One primary difference between IP data processing system 300 and IP data processing system 200 is that instead of transmitting and receiving patent and patent application documents and other information to and from patent offices via email or snail mail, patent office personnel access such documents and other information directly through an electronic fileroom 306 via a web browser. Electronic fileroom 306 is part of database 206. Patent office personnel receive alerts and messages from IP data processing system 300 whenever actionable events occur. Actionable events include, for example, filing a patent application and other formal patent documents. As previously mentioned, instead of transmitting those documents over the Internet to an patent office, EP data processing system 300 sets an internal status field within database 206 associated with the document to "filed." System 300 then sends a message that it is received by the appropriate patent office personnel on their home page for IP data processing system 300 indicating that such a document was filed.
Having fully described several embodiments of the present invention, other equivalent or alternative methods of practicing the present invention will be apparent to those skilled in the art. For example, while the flowcharts of FlGS. 2 and 4 indicate that the date entered into the docketing database is the date included in the electronic receipt received from the patent office, the date could be generated by the server system in the embodiment of FIG. 2 or by the client system in the embodiment of FlG. 4. Also, while the description of FIGS. 1 through 6 above spoke genetically of the submission of a patent application to an patent office, the method of the present invention is equally applicable to track and docket the submission of any official paper in an patent office. Such official papers include but are not limited to responses to office actions, amendments, information disclosure statements and issue fee payments among others. The document submitted to the patent office in FlGS. 2 and 4 could even be a document created automatically based upon the receipt of a communication from another patent office. FIG. 14 illustrates one possible application of the present invention used to partially automate and simplify the creation of an information disclosure statement to the USPTO based on references cited in a communication from another patent office such as a PCT Search Report. While such search reports are not currently transmitted to clients electronically, the present invention contemplates that electronic transmittal of many different patent office documents will be common place in the future. In FIG. 6, the PCT Search Report for a particular patent application is electronically received from the International Searching Authority ("ISA") in step 130. The date of the search report is automatically docketed and entered into a database (step 132), for example one of the databases 28, 122 or 109 shown in FlGS. 3, 5A and 5B respectively, along with identifying information for each citation noted in the search report (step 134). This identifying information is then automatically compared to a database entry for the U.S. patent application corresponding to the PCT application that tracks the references considered by the USPTO during prosecution of the application (step 136). If any of the citations identified in the PCT search report are not already known to the USPTO (i.e., either cited by the patent Applicants in a previous IDS or cited by the Examiner on a PTO-892 or similar form), an IDS is generated listing the citations (step 138) and sent to an appropriate practitioner (patent agent, patent attorney or inventor as appropriate) for review and signature (step 140). The signed IDS (as either scanned into electronic form or signed electronically) then becomes the document that can be sent to the
USPTO in either FlG. 1, step 8 or FlG. 3, step 34 as described above. Also, messages can be sent to the client system or other address as appropriate reminding the customer of any due dates associated with receipt of the PCT Search Report from step 130. These reminders may include the due date for the automatically generated IDS, if applicable, and the due date for a response to the Search Report if appropriate.
In another example, an Office Action is received electronically. The date of the Office Action and due date for a response are then entered into the database (the due date can either be calculated or entered from a field in the received office action) and future reminder messages are generated and sent based on these dates. Either of these examples and others can be implemented in embodiments of the invention where the documents are generated by the patent office and sent to a docketing server as in FlG. 3 or where the documents are sent directly to a client server as in FlGS. 5A and 5B. In embodiments where the docketing server first receives documents from a patent office, the docketing server generally, but not necessarily, forwards the documents to the appropriate client in addition to creating appropriate docketing and other entries in the database. These and other embodiments as well as alternatives and equivalents to the invention will be recognizable to those of skill in the art after reading the description of the present invention. The scope of the invention should not, therefore, be determined solely by reference to the above description, but instead should be determined with reference to the appended claims along with their full scope of equivalents and alternatives.

Claims

WHAT IS CLAIMED IS:
1. A computer-implemented method of tracking data related to an intellectual property filing, said method comprising: (a) electronically submitting an electronic version of an intellectual property document to an official intellectual property office; (b) electronically receiving a receipt verifying said electronic document was received by said official intellectual property office; and (c) in response to either (a) or (b), automatically entering a filing date associated with said intellectual property document into a computer-readable database.
2. The method of claim 1 wherein said intellectual property document is a patent application.
3. The method of claim 2 wherein said patent application is electronically submitted in an encrypted format to said patent office over the public Internet.
4. The method of claim 1 further comprising generating a message in an automated manner related to a due date for a future interaction with an official intellectual property office, wherein said due date is determined by said filing date.
5. The method of claim 1 wherein said receipt includes a timestamp indicating the filing date of said intellectual property document and said filing date is automatically entered in said computer-readable database in (c).
6. The method of claim 2 wherein (a) and (b) are performed by computer code executing on a client system.
7. The method of claim 2 wherein said patent application is submitted to said patent office after a client system selects a submit icon, and wherein said submit icon is generated by computer code executed as part of a first computer program executing on said client system.
8. The method of claim 7 wherein said filing date is automatically entered into said computer-readable database by computer code executed as part of said first computer program.
9. The method of claim 7 wherein said filing date is automatically entered into said computer-readable database by computer code executed as part of a second computer program different from said first computer program but also executing on said client system.
10. The method of claim 2 wherein said patent application is submitted to said patent office after a client system selects a submit icon, and wherein said submit icon is generated by computer code executing on a server system.
11. The method of claim 10 wherein said server system receives said electronic version of said patent application from said client system prior to submitting said application to said patent office.
12. The method of claim 11 wherein said server system generates Web pages that guide said client system through a process to submit said patent application to said server system.
13. The method of claim 10 wherein, prior to said client system selecting said submit icon, said electronic version of said patent application is stored on a database associated with said server system.
14. The method of claim 10 wherein said server system displays an indication of a dollar amount available in a deposit account associated with and specific to said client identifier and wherein money is deducted from said deposit account in response to filing said patent application.
15. A computer-implemented method of docketing the filing of a patent application in an patent office, said method comprising: (a) receiving an electronic version of said patent application from a client; (b) automatically forwarding said received electronic patent application to said patent office; (c) receiving an acknowledgment of receipt of said patent application from said patent office, said acknowledgment of receipt including a timestamp indicating a filing date of said patent application in said patent office; and (d) in response to receiving said acknowledgment, automatically entering into a database information corresponding to said filing date.
16. The method of claim 15 further comprising, in response to receiving said acknowledgment, automatically generating and forwarding an electronic message to said client confirming filing of said patent application and confirming docketing of said filing date.
17. The method of claim 15 further comprising generating and sending a message in an automated manner to said client reminding said client of a due date for a future interaction with an patent office, wherein said due date is determined by said filing date.
18. The method of claim 15 wherein said acknowledgment of receipt is received in real time with respect to forwarding said electronic patent application to said patent office.
19. A computer-implemented method of tracking data related to an intellectual property filing, said method comprising: (a) electronically submitting an electronic version of an intellectual property document to an official intellectual property office; (b) electronically receiving a receipt verifying said electronic document was received by said official intellectual property office, said receipt including a timestamp indicating a filing date of said intellectual property document; and (c) automatically entering said filing date into a computer-readable database.
20. The method of claim 19 further comprising generating a message in an automated manner related to a due date for a future interaction with an official intellectual property office, wherein said due date is determined by said filing date.
21. The method of claim 19 wherein said intellectual property filing is a patent application and said intellectual property office is a patent office.
22. The method of claim 19 wherein said patent application is submitted to said patent office in response to a user selection of a submit icon, wherein said submit icon is generated by computer code executed as part of a first computer program executing on a client system.
23. The method of claim 22 wherein said filing date is automatically entered into said computer-readable database by computer code executed as part of said first computer program.
24. The method of claim 22 wherein said filing date is automatically entered into said computer-readable database by computer code executed as part of a second computer program different from said first computer program but also executing on said client system.
25. A computer-implemented method of docketing a due date associated with a response from an intellectual property office, said method comprising: (a) receiving an electronic version of a paper electronically mailed from said intellectual property office; (b) automatically entering a date associated with said electronic version of said paper into a database.
26. The method of claim 25 further comprising generating a message to a client informing said client of a future due date associated with said electronic version of said paper.
27. The method of claim 25 wherein said intellectual property office is a patent office and said paper is an office action.
28. A computer system comprising: (a) a computer processor; (b) a computer-readable memory, coupled to said computer processor, said computer-readable memory including computers instructions to: (i) electronically submit an electronic version of a patent application to an official intellectual property office; (ii) electronically receive a receipt verifying said patent application was received by said official intellectual property; and (iii) in response to either (i) or (ii), automatically enter a filing date of said patent application into a computer-readable database.
29. The computer system of claim 28 wherein said computer-readable memory further includes computer-instructions to open a secure channel over the Internet between said computer system and a computer associated with said official intellectual property office.
30. A server system comprising: (a) a computer processor; (b) a computer-readable memory, coupled to said computer processor, said computer-readable memory including computers instructions to: (i) generate Web pages that guide a client system through a process to submit a patent application to an official intellectual property office; (ii) receive said patent application from said client system; (iii) forward said patent application to said intellectual property office; (iv) receive an acknowledgment of receipt of said patent application from said official intellectual property office; and (v) in response to either (ii), (iii) or (iv) automatically enter into a database information corresponding to a filing date of said patent application.
31. The sever system of claim 30 wherein said computer-readable memory further includes computer-instructions automatically generating and forwarding an electronic message to said client confirming filing of said patent application and confirming docketing of said filing date.
32. The sever system of claim 30 wherein said computer-readable memory further includes computer-instructions to generate and send a message in an automated manner to said client reminding said client of a due date for a future interaction with said official intellectual property office, wherein said due date is determined by said filing date.
33. A computer-implemented method of docketing a date an intellectual property document is filed in an official intellectual property office, said method comprising: (a) receiving an instruction to file an electronic version of said intellectual property document from a client at a received time; (b) determining whether said instruction was received prior to a cutoff time; and (c) if said application was received is before said cutoff time entering a first date representing a filing date of said intellectual property document into a database and if said application was received after said cutoff date entering a second date representing a filing date of said intellectual property document into said database.
34. The method of claim 33 further comprising generating a message in an automated manner related to a due date for a future interaction with an official intellectual property office, wherein said due date is determined by said filing date.
35. The method of claim 33 wherein said intellectual property document is a patent application and said intellectual property office is a patent office.
36. The method of claim 35 wherein said first date is the date the application was electronically received.
37. The method of claim 36 wherein said second date is the first available date on which said application can be filed in said patent office after the date said application is received.
38. The method of claim 33 further comprising generating and sending a message in an automated manner to said client reminding said client of a due date for a future interaction with said patent office, wherein said due date is determined by said filing date.
39. The method of claim 33 wherein said official intellectual property office is a patent office selected from the group including the United States Patent and Trademark Office, the European Patent Office, the Japanese Patent Office or a Patent Cooperation Treaty receiving office.
40. The method of claim 33 further comprising: (d) sending an electronic message comprising said filing date to said client system.
41. The method of claim 33 wherein (a)-(d) are performed under control of a server system, said server system generating web pages viewable over the Internet by client systems.
42. The method of claim 41 wherein said electronic version of said patent application is received with said instruction.
43. The method of claim 41 wherein said electronic version of said patent application is stored in a database associated with said server system.
44. The method of claim 41 wherein said server system asks for a client identifier prior to receiving said electronic version of said patent application from said client.
45. The method of claim 44 wherein said server system displays an indication of a dollar amount available in a deposit account associated with and specific to said client identifier and wherein money is deducted from said deposit account in response to filing said patent application.
46. The method of claim 41 wherein said instruction is received as an email message.
47. The method of claim 41 wherein said instruction is received through a Web page generated by a server system.
48. A server system comprising: (a) a computer processor; (b) a computer-readable memory, coupled to said computer processor, said computer-readable memory including computers instructions to: (i) generate Web pages that guide a client system through a process to submit a patent application to an patent office; (ii) receive an instruction to file said patent application in an patent office from said client system; (iii) determine whether said instruction is received prior to a cutoff time; and (iv) entering into a database information a filing date of said patent application wherein said filing date is the date said instruction is received if said instruction was received prior to said cutoff time and said filing date is the first available date on which said application can be filed in said patent office after the date said instruction is received if received after said cutoff time.
49. The sever system of claim 48 wherein said computer-readable memory further includes computer-instructions automatically generating and forwarding an electronic message to said client indicating said filing date of said patent application.
50. The sever system of claim 48 wherein said computer-readable memory further includes computer-instructions to generate and send a message in an automated manner to said client reminding said client of a due date for a future interaction with said patent office, wherein said due date is determined by said filing date.
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Cited By (3)

* Cited by examiner, † Cited by third party
Publication number Priority date Publication date Assignee Title
WO2003098518A2 (en) * 2002-05-16 2003-11-27 Fernandez Dennis S Patent resource systems and methods
WO2010025508A1 (en) * 2008-09-03 2010-03-11 Fgh Ip Pty Ltd Processing a request for an ip right
US20130013519A1 (en) * 1999-09-30 2013-01-10 Lee Eugene M Method and system for electronic ip prosecution

Cited By (4)

* Cited by examiner, † Cited by third party
Publication number Priority date Publication date Assignee Title
US20130013519A1 (en) * 1999-09-30 2013-01-10 Lee Eugene M Method and system for electronic ip prosecution
WO2003098518A2 (en) * 2002-05-16 2003-11-27 Fernandez Dennis S Patent resource systems and methods
WO2003098518A3 (en) * 2002-05-16 2004-04-29 Dennis S Fernandez Patent resource systems and methods
WO2010025508A1 (en) * 2008-09-03 2010-03-11 Fgh Ip Pty Ltd Processing a request for an ip right

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