WO2002043306A2 - Intellectual property case docketing and management system - Google Patents

Intellectual property case docketing and management system Download PDF

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Publication number
WO2002043306A2
WO2002043306A2 PCT/US2001/044733 US0144733W WO0243306A2 WO 2002043306 A2 WO2002043306 A2 WO 2002043306A2 US 0144733 W US0144733 W US 0144733W WO 0243306 A2 WO0243306 A2 WO 0243306A2
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WO
WIPO (PCT)
Prior art keywords
intellectual property
associated
patent
case
annuity
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PCT/US2001/044733
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French (fr)
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WO2002043306A3 (en
Inventor
Cecily Anne Snyder
Jeffry J. Grainger
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First To File, Inc
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Publication date
Priority to US25336000P priority Critical
Priority to US60/253,360 priority
Priority to US60/309,237 priority
Priority to US30923701P priority
Priority to US30919901P priority
Priority to US60/309,199 priority
Application filed by First To File, Inc filed Critical First To File, Inc
Publication of WO2002043306A2 publication Critical patent/WO2002043306A2/en
Publication of WO2002043306A3 publication Critical patent/WO2002043306A3/en

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    • GPHYSICS
    • G06COMPUTING; CALCULATING; COUNTING
    • G06QDATA PROCESSING SYSTEMS OR METHODS, SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES, NOT OTHERWISE PROVIDED FOR
    • G06Q10/00Administration; Management
    • G06Q10/10Office automation, e.g. computer aided management of electronic mail or groupware; Time management, e.g. calendars, reminders, meetings or time accounting
    • GPHYSICS
    • G06COMPUTING; CALCULATING; COUNTING
    • G06QDATA PROCESSING SYSTEMS OR METHODS, SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES, NOT OTHERWISE PROVIDED FOR
    • G06Q10/00Administration; Management
    • G06Q10/10Office automation, e.g. computer aided management of electronic mail or groupware; Time management, e.g. calendars, reminders, meetings or time accounting
    • G06Q10/109Time management, e.g. calendars, reminders, meetings, time accounting

Abstract

Docketing system (1100) for recording, tracking, and reporting deadlines associated with legal cases and a system for allowing payment of an annuity or maintenance fee associated with a patent document. The docketing system (1100) keeps track of deadlines related to one or more cases handled by one or more practitioners. In response to events (1102) related to the cases which result in one or more deadlines, the present invention automatically generates messages notifying users (1108) of deadlines associated with the events. The docketing messages are then automatically communicated to appropriate recipients (1110).

Description

DOCKETING SYSTEM

COPYRIGHT [01] A portion of the disclosure of this patent document contains material that is subject to copyright protection. The copyright owner has no objection to the xerographic reproduction by anyone of the patent document or the patent disclosure in exactly the form it appears in the U.S. Patent and Trademark Office patent file or records, but otherwise reserves all copyright rights whatsoever.

CROSS-REFERENCES TO RELATED APPLICATIONS

[02] This application claims priority to the following applications, the entire contents of which are herein incorporated by reference for all purposes:

[03] (1) U.S. Provisional Application No. 60/253,360, entitled "DATA PROCESSING SYSTEM FOR MANAGING INTELLECTUAL PROPERTY" filed November 27, 2000 (Attorney Docket No. 20313-000700US);

[04] (2) U. S . Provisional Application No . 60/309,237, entitled "COMPUTER IMPLEMENTED METHOD OF PAYING INTELLECTUAL PROPERTY ANNUITY AND MAINTENANCE FEES" filed July 31, 2001 (Attorney Docket No. 20313- 000400US); and [05] (3) U.S. Provisional Application No. 60/309,199, entitled

"DOCKETING SYSTEM" filed July 31, 2001 (Attorney Docket No. 20313-001800US). [06] This application also incorporates by reference for all purposes the entire contents of the following applications:

[07] (1) U.S. Non-Provisional Application No. 09/585,989, entitled "COMPUTER-IMPLEMENTED METHOD OF DOCKETING INTELLECTUAL PROPERTY FILINGS" filed June 2, 2000 (Attorney Docket No. 20313-000200US); [08] (2) U.S. Non-Provisional Application No. 09/642,619, entitled "COMPUTER-IMPLEMENTED METHOD OF DOCKETING INTELLECTUAL PROPERTY FILINGS" filed August 17, 2000 (Attorney Docket No. 20313-000210US); [09] (3) US. Provisional Application No. 60/309,311, entitled

"COMPUTER IMPLEMENTED METHOD OF TRACKING CORRESPONDENCE RECEIVED IN ELECTRONIC FORMAT" filed July 31, 2001 (Attorney Docket No. 20313- 001200US); and

[10] (4) U.S. Non-Provisional Application No. 09/919,764, entitled "USER INTERFACE FOR MANAGING INTELLECTUAL PROPERTY" filed on July 31, 2001 (Attorney Docket No. 20313-001100US).

BACKGROUND OF THE INVENTION [11] The present invention relates to systems for managing calendar-based deadlines and paying annuity and maintenance fee. More particularly , the invention relates to techniques for recording, tracking, and reporting out deadlines for performing actions in legal cases including intellectual property cases, and techniques for requesting and receiving instructions for the payment of annuity and maintenance fees associated with patent applications and other intellectual property documents.

[12] 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 (hereinafter "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.

[13] Typically, the process of obtaining intellectual property rights (e.g., patents, trademarks, copyrights, etc.) involves multiple communications between the intellectual property office (e.g., the USPTO for patent and trademark rights) and a practitioner (e.g., an attorney, a patent agent, etc.) who is helping a client secure the patent rights. For purposes of this application, the word "practitioner" is intended to include an attorney, an agent, or any other individual or person authorized to represent a client in legal cases including intellectual property cases. For example, patent practitioners may include patent attorneys, patents agents, foreign attorneys dealing with patent cases, foreign patent agents, and the like.

[14] As part of the process of securing patent rights, a patent practitioner representing a client applicant typically has to respond to communications received from the intellectual property office such as the USPTO within a given time period. The time period to respond is usually imposed by statutes, rules, and/or regulations governing time limits imposed by the intellectual property office or other governmental agencies. Failure to respond within the time period can have detrimental consequences including having to pay additional fees, or leading to the loss of intellectual property rights altogether. For example, in patent prosecution matters handled by the USPTO, a response to an Office Action mailed by the USPTO has to be filed within 3 months from the mailing date of the Office Action. If no response is filed within 3 months, the USPTO allows extensions up to an additional 3 months by paying extension fees for each additional month of extension. The patent application is however considered abandoned resulting in loss of patent rights if the response is not filed within the statutory six month time period (3 months of response time plus 3 months of extensions) from the mailing date of the Office Action.

[15] Further, failure to respond to a deadline may subject the patent practitioner and his/her law firm to malpractice lawsuits. Accordingly, a practitioner dealing with intellectual property cases, as part of his or her duty in representing a client, has to keep track of all deadlines related to client matters and has to respond to the deadlines in a timely manner to avoid compromising the client's intellectual property rights. The situation is further complicated when the practitioner deals with intellectual property offices in foreign countries that impose their own separate set of deadlines based upon rules and regulations of the foreign countries. The problem of keeping track of deadlines is particularly acute for patent practitioners who customarily handle a large number of separate patent-related cases and are forced to track deadlines for the cases being handled.

[16] As is evident from the above, it is impractical if not impossible for a practitioner working on intellectual property matters to rely on his/her memory to keep track of all relevant deadlines. Consequently, calendar-based deadline tracking systems (referred to as "docketing systems") have been developed to assist practitioners in keeping track of deadlines.

[17] According to one conventional docketing system, all correspondence that is either received from or mailed to an intellectual property office (e.g., the USPTO) by a law firm is forwarded to one or more docketing clerks who manually store information related to the correspondence in a central database. A paper report is then generated on a periodic basis (e.g., weekly, monthly, etc.) based upon data stored in the database that lists pending deadlines for one or more intellectual property practitioners affiliated with the law firm. The paper report is then forwarded to each individual practitioner and may be used by the practitioner to keep track of the deadlines. However, such a system is error-prone. Since the paper reports are generated only at pre-determined times, the paper report may not reflect the latest status of deadlines for a practitioner (e.g., the report does not reflect deadlines associated with correspondence received or mailed to the intellectual property office between the pre-determined times). Further, since the paper report has to be routed from the location (e.g., a docketing office) where the report is generated to the practitioner's office, the report can get delayed or even lost in the routing process. The paper report may even get lost in the reams of paperwork typically handled by an intellectual property practitioner.

[18] According to another conventional practice, docketing system responsibilities are outsourced to docketing services such as Computer Packages Inc. (CPI) of Rockville, MD, or Computer Patent Annuities (CPA). These services, however, do not interface well with law firms, technology developers, intellectual property offices, and other entities involved in the process of securing intellectual property rights.

[19] Additionally, depending on the country in which protection is sought, a patent applicant will be required to pay one or more annuity fees during the life of the patent or patent application or one or more maintenance fees after a patent is granted. Most countries require the payment of yearly annuity fees. The United States does not require payment of amiuity fees, but instead requires maintenance fee payments at intervals of 3 lA, 7 Vi and 11 Vz years after issuance of the patent in order to maintain an issued patent in force.

[20] The payment of such annuity fees and maintenance fees is an administrative task that can become quite burdensome. Typically, companies and law firms contract with various service providers such as Computer Packages, Inc. (CPI) or others.

While contracting the payment of these fees to a third party relieves the law firm or company from many of the administrative burdens associated with the fees, a problem still exists in the decision making process. Namely, annuity and maintenance fee payment decisions are frequently made with incomplete information because obtaining the necessary or desired information is often quite burdensome. For example, it may be desirable when deciding to pay an annuity or maintenance fee on a particular file to review the allowed or pending claims, review the abstract, summary of the invention or detailed description, to review previous payment decisions, to review comments related to the importance of the patent application and/or to review decisions made for payment of annuity or maintenance fees for related applications, such as foreign counterpart applications. Typically, however, detailed information such as this is not easily and readily available to the decision maker, and even if available, it is not linked or associated in any way with the annuity or maintenance fee instruction request. [21] Accordingly, based upon the above, improved docketing systems and processes are desirable. Improved methods of allowing payment decisions for annuity and maintenance fee payments to be made are also desirable.

BRIEF SUMMARY OF THE INVENTION

[22] Embodiments of the present invention pertain to a docketing system for recording, tracking, and reporting deadlines associated with legal cases. The docketing system is useful for intellectual property practitioners, such as patent attorneys, who have to keep track of several deadlines related to intellectual property cases. According to an embodiment of the present invention, the docketing system keeps track of deadlines related to one or more cases handled by one or more practitioners. In response to events related to the cases which result in one or more deadlines, the present invention automatically generates messages notifying users of deadlines associated with the events. The docketing messages are then automatically communicated to appropriate recipients. Embodiments of the present invention also pertain to a system and method for allowing payment decisions for annuity and maintenance fee payments associated with an intellectual property document such as a patent document (e.g., a granted patent or pending patent application) to be made.

[23] According to an embodiment of the present invention, techniques are provided for generating a message for a first intellectual property case. In this embodiment, information related to a plurality of intellectual property cases is stored on a computer- readable medium, the plurality of intellectual property cases including the first intellectual property case. The docketing system receives a signal indicating occurrence of an event related to the first intellectual property case. Responsive to receiving the signal, the docketing system identifies one or more rules associated with the event. The docketing system then identifies at least a first rule from the one or more rules based upon filter criteria information associated with the one or more rules and based upon information related to the first intellectual property case stored on the computer-readable medium. The docketing system generates at least one message using the at least first rule, the message identifying an action to be performed in response to the event and identifying a date associated with the action, and the at least one message is communicated to a first designated client system.

[24] According to one embodiment, a computer-implemented method of allowing payment of an annuity or maintenance fee associated with a patent document is disclosed. In this embodiment the method includes (a) storing, on a computer readable medium accessible to a server system, patent information related to the patent application, the patent information including one or more of a patent claim and a summary section; (b) generating, from the server system, a notice of a due date for the annuity or the maintenance fee; (c) communicating the notice to a first designated client system via a Web page, wherein the Web page allows said client system to view the patent information and indicate whether the annuity or the maintenance fee should be paid; (d) receiving a payment instruction from the client system regarding payment of the annuity or the maintenance fee; (e) storing the payment instruction in a database; and (e) communicating the payment instruction to a second designated client system. In another embodiment the second designated client system is an annuity/maintenance fee payment service that pays the fee pays and thereafter, communicates confirmation of the payment to the server system.

[25] Other embodiments of the invention pertain to a method of allowing payment of annuity fees associated with intellectual property documents other than patent documents, including trademark applications.

[26] The foregoing, together with other features, embodiments, and advantages of the present invention, will become more apparent when referring to the following specification, claims, and accompanying drawings.

BRIEF DESCRIPTION OF THE DRAWINGS [27] Fig. 1 is a simplified block diagram of a distributed system that may incorporate an embodiment of the present invention;

[28] Fig. 2 is a simplified block diagram of a computer system according to an embodiment of the present invention;

[29] Fig. 3 is a simplified high-level flowchart depicting a method of configuring the docketing system to generate docketing messages according to an embodiment of the present invention;

[30] Fig. 4 is a simplified high-level flowchart depicting a method of configuring a triggering event according to an embodiment of the present invention;

[31] Fig. 5 depicts an example of a simplified user interface for creating new triggering events according to an embodiment of the present invention; [32] Fig. 6 is a simplified high-level flowchart depicting a method of configuring a docket rule according to an embodiment of the present invention;

[33] Fig. 7 depicts an example of a simplified user interface for creating a rule according to an embodiment of the present invention; [34] Fig. 8 depicts a simplified table listing examples of rules that may be configured according to an embodiment of the present invention;

[35] Fig. 9 is a simplified high-level flowchart depicting a method of associating rules with a triggering event according to an embodiment of the present invention;

[36] Figs. 10A and 10B depict an example of a simplified user interface for associating one or more rules with a triggering event according to an embodiment of the present invention;

[37] Fig. 11 is a simplified high-level flowchart depicting a method of generating docketing messages in response to a triggering event according to an embodiment of the present invention;

[38] Fig. 12 depicts an example of a simplified user interface for outputting docketing messages to a user according to an embodiment of the present invention;

[39] Fig. 13 is a simplified high-level flowchart showing a method of modifying a previously configured rule according to an embodiment of the present invention;

[40] Fig. 14 is a simplified high-level flowchart showing a method of deleting a previously configured rule according to an embodiment of the present invention;

[41] Fig. 15 is a simplified high-level flowchart depicting a method of modifying a previously configured triggering event according to an embodiment of the present invention.

[42] Fig. 16 is a simplified high-level flowchart showing a method of deleting a previously configured triggering event according to an embodiment of the present invention.

[43] Figs. 17A-17C are exemplary Web pages that can be used to define routing rules for requesting payment instructions for annuity and/or maintenance fee payments IP data processing system 100;

[44] Fig. 18 is an example Web page that is used to request and receive annuity and maintenance fee payment instructions from a client system in one embodiment of the invention; [45] Figs. 19, 20, and 21 are exemplary Web pages that can be generated by

IP data processing system 100 to provide various features according to certain embodiments of the invention; and [46] Fig. 22 is a diagram showing communications between IP data processing system 100, a technology developer 110(i) and an annuity/maintenance fee payment service 130(i) according to one embodiment of the invention.

DETAILED DESCRIPTION OF THE INVENTION

[47] The present invention provides a docketing system for recording, tracking, and reporting deadlines associated with legal cases. The docketing system is useful for intellectual property practitioners, such as patent attorneys, who have to keep track of several deadlines related to intellectual property cases. As described above, for purposes of this application, the word "practitioner" is intended to include an attorney, an agent, or any other individual or person authorized to represent a client in legal cases including intellectual property cases. For example, patent practitioners may include patent attorneys, patents agents, foreign attorneys dealing with patent cases, foreign patent agents, and the like.

[48] According to an embodiment of the present invention, the docketing system keeps track of deadlines related to one or more cases handled by one or more practitioners. In response to events related to the one or more cases which result in one or deadlines (e.g., when correspondence is mailed to or received from an intellectual property office like the USPTO), the present invention automatically generates messages notifying users of deadlines associated with the events. The docketing messages are then automatically communicated to their appropriate recipients, who may be intellectual property practitioners (e.g., patent attorneys, agents, foreign associates, etc.) and other individuals involved in the process of securing intellectual property rights such as inventors, patent coordinators, paralegals, legal secretaries, workflow managers, and the like. In this manner, the present invention eliminates the error-prone task of generating periodic paper reports. According to an embodiment of the present invention, the docketing system interfaces with electronic interfaces provided by intellectual property offices and integrates information received from or sent to the intellectual property offices with the docketing process.

[49] The present invention also provides a novel and useful method and system for calculating patent term extensions for a granted patent application. The method can be embodied in, among other systems, a stand-alone computer system or a distributed computer network. For convenience, the description of one embodiment of the invention is set forth below with respect to an application service provider (ASP) model that communicates with client systems over the Internet. In this ASP model, an intellectual property data processing system 100 tracks all data necessary for calculating patent term adjustments, performs the term adjustment calculation and notifies an appropriate user of a calculated adjustment when appropriate. One of ordinary skill in the art would recognize other variations, modifications and alternatives to this embodiment. Accordingly, the ASP system described below is not intended to limit the scope of the invention in any way. [50] For convenience, one embodiment of the present invention is described below that provides docketing services for patent-related cases and a system for calculating patent term extensions for a granted patent application. It should however be apparent that the docketing system according to the teachings of the present invention may be used in any environment, system, or application that involves tracking, recording, and reporting of calendar-based deadlines. For example, in addition to patent-related cases, the docketing system may also be used to provide docketing services for trademark-related cases, copyright-related cases, litigation cases, and the like. Accordingly, the description of the present invention set forth below is not intended to limit the scope of the present invention in any way. One of ordinary skill in the art would recognize variations, modifications, and alternatives.

[51] Fig. 1 is a simplified block diagram of a distributed system 10 that might incorporate an embodiment of the present invention. As depicted in Fig. 1, distributed system 10 includes a docketing system (DS) 105 that provides docketing services according to the teachings of the present invention. According to the embodiment depicted in Fig. 1, DS 105 may be part of an intellectual property (IP) data processing system 100 that may be used by participants in the patent process to secure patent rights. According to an embodiment of the present invention, IP data processing system 100 is a Web-enabled electronic platform that can be utilized by all participants in the patent process to convert the traditional paper-based patent prosecution system into an electronic workflow pipeline that allows every step in the process to be executed from a computer desktop.

[52] As depicted in Fig. 1, various other devices or computer systems belonging to participants in the process of securing and/or exploiting patent rights may be coupled to DS 105 via communication network 115 and communication links 50. These systems include systems of technology developers 110, patent law firms 120, service providers 130, patent offices 140, prior art databases 150, potential licensees 160, and the like. For convenience, each of the participants depicted in Fig. 1 is referenced by a dotted line that encompasses individual entities and systems of the participant type. For example, technology developers 110 are shown in Fig. 1 as including individual technology developers 110(1), 110(2), through 110(n). It is to be understood that, while shown in Fig. 1 as a group, these multiple technology developers are separate entities that likely have no relation to each other than their classification within this patent application as developers of technology.

[53] It should be apparent that distributed system 10 depicted in Fig. 1 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives. For example, in alternative embodiments of the present invention, DS 105 may be deployed in various other environments such as an enterprise environment, a stand-alone system, and the like.

[54] Communication network 115 provides a mechanism allowing the various devices and computer systems depicted in Fig. 1 to communicate and exchange data and information with each other. Communication network 115 may itself be comprised of many interconnected computer systems and communication links. While in one embodiment, communication network 115 is the Internet, in other embodiments, communication network 115 may be any suitable communication network including a local area network (LAN), a wide area network (WAN), a wireless network, an intranet, a private network, a public network, a switched network, an enterprise network, a virtual private network, and the like. [55] Communication links 50 that are used to connect the various systems depicted in Fig. 1 may be of various types including hardwire links, optical links, satellite or other wireless communications links, wave propagation links, or any other mechanisms for communication of information. Various communication protocols may be used to facilitate communication of information via communication links 50. These communication protocols may include TCP/IP, HTTP protocols, extensible markup language (XML), wireless application protocol (WAP), protocols under development by industry standard organizations, vendor-specific protocols, customized protocols, and others. [56] Technology developers 110 may include corporations, universities, individual inventors, and other like entities seeking to file patent applications and receive issued patents. For example, technology developers may include inventors, in-house patent practitioners, in-house patent administrator, and the like. Patent law firms 120 may include patent practitioners such as U.S. patent attorneys, patent agents, foreign patent attorneys and/or agents, and other individuals such as patent secretaries, paralegals, legal assistants, docketing personnel, workflow coordinators, etc., that help technology developers to secure patent rights. Service providers 130 may include patent draftspersons, 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 150 may include public and licensed private databases, such as online patent databases (e.g., issued U.S. patents, published U.S. applications, published European and Japanese patents, published PCT applications, and other publications) and non- patent databases. Patent offices 140 may include intellectual property offices and government agencies that are authorized to grant patent rights. These intellectual property offices may include the USPTO, the European Patent Office (EPO), the Japanese Patent Office (JPO), the Taiwanese Patent Office, etc.

[57] Processing system 100 provides technology developers 110 and their associated patent law firms 120 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 110 and appropriate patent law firm(s) 120 and service provider(s) 130 in order to create patent filings, prosecute such filings through issuance and then subsequently maintain patent rights after grant. [58] As stated above, according to an embodiment of the present invention,

DS 105 provides docketing services for patent-related cases. According to an embodiment of the present invention, DS keeps track of deadlines related to one or more patent cases handled by one or more patent practitioners. In response to events which result in one or deadlines (e.g., when correspondence is mailed to or received from an intellectual property office like the USPTO), DS 105 automatically generates docketing messages identifying actions to be performed in response to the events and dates associated with the actions. The docketing messages are then automatically communicated to the appropriate recipients, who may be intellectual property practitioners and others involved in securing intellectual property rights. According to an embodiment of the present invention, DS 105 interfaces with electronic interfaces provided by intellectual property offices and integrates information received from or sent to the intellectual property offices with the docketing process.

[59] As shown in Fig. 1, DS 105 may be implemented as part of an intellectual property (IP) data processing system 100 that may be used by participants in the patent process to secure patent rights. As shown in Fig. 1, IP data processing system 100 includes a server 101 (e.g., a Web server), a data storage repository such as database 106, and a paper mailroom 108. Server 101 may include a server engine 102 that is configured to generate and communicate documents including web pages 104 to other systems coupled to IP data processing system 100. These web pages may be viewed by other systems of the participants depicted in Fig. 1 using a browser application program executing on systems of the participants. Server 101 may also include an electronic mailroom 107.

[60] In a distributed system such as system 10 depicted in Fig. 1, computer systems that request data or services are classified as client computer systems while computer systems that provide the data or services requested by client computers are classified as server systems. Accordingly, the computer system(s) of IP data processing system 100, including DS 105, may be classified as server systems while computer systems of the participants may be classified as client systems. It should be apparent that a particular computer system may function both as a client system and a server system based upon whether the computer system is requesting data and/or services or receiving data and/or services.

[61] Technology developers 110, patent law firms 120, service providers 130 and licensees 160 typically include one or more client systems. For example, a large corporation (technology developer) may have 150 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. Specific categories of client systems are also sometimes referred to herein. For example, an "inventor client system" is any client system associated with an inventor from one of the technology developers 110. Similarly, an "in-house client system" is any client system associated with a patent attorney, patent agent, patent administrator, secretary or other employee or contractor of a technology developer other than an inventor that has rights to create, edit or view information related to patent applications owned by the technology developer. An "outside representative client system" is an outside patent attorney, patent agent, patent administrator, secretary or other employee or contractor associated with a patent law firm 120 that represents a particular technology developer. [62] Each client system can display the Web pages generated by server engine 102. 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. To view a specific document, including a Web page, a client system uses a Web browser executing on the client system to specify the URL for the document in a request (e.g., a HyperText Transfer Protocol "HTTP" request) as is known to those of skill in the art. The request is forwarded to the Web server supporting the document (server system 101 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 document. [63] Database 106 stores information related to the patent process. For example, database 106 may store information pertaining to the technology developers' intellectual property portfolios. The information in database 106 may include draft and completed invention disclosures, draft and completed patent application documents, draft and completed prosecution filings (e.g., amendments), information about discussions pertaining to invention disclosures and patent applications, patent and patent application status information, prior art publications, office actions, assignment papers, other forms and papers filed in or generated by a patent office, etc. According to an embodiment of the present invention, information used by DS 105 for providing docketing services may be stored by database 106. In alternative embodiments, DS 105 may itself store the information. As described in detail below, much of this information for an individual patent application is easily accessible to a user through the user interface of the present invention.

[64] Patent process participants (such as technology developer employees, outside law firm personnel, etc.) may access the information stored in database 106 as needed and only to the extent that their access rights permit. The information stored in database 106 may be shared between participants on an as-allowed basis. For example, a technology developer 110 and an appropriate patent law firm(s) 120 servicing the technology developer may share data related to invention disclosures, patent filings, patent prosecution related information and filings, and other like information. [65] IP data processing system 100 may communicate with patent offices

140 using electronic mailroom 107 and/or using paper mailroom 108 that uses standard mail (e.g., U.S. Postal Office First Class and Express Mail). For such communications in some embodiments, system 100 sets the correspondence address to mailroom 107 or 108 so that replies to the communications can be tracked and entered into database 106 as described below.

[66] Electronic mailroom 107 may include a suite of programs that interface with programs provided by one or more patent offices 140. For example, in order to file patent applications electronically through the USPTO, the system comports to the standards required by the USPTO's Electronic Filing System (EFS). This includes using the Electronic Packaging and Validation Engine (ePAVE) or compatible software to facilitate electronic filing. Complete details of the ePAVE software are available online through the USPTO's Electronic Business Center Web site at http://pto-ebc.uspto.gov/. Also, in order to track and update status information for pending patent applications, such as Examiner name, assigned art unit and class/subclass, etc., electronic mailroom 107 may have the ability to interface to the USPTO's Patent Application Information Retrieval (PAIR) system using appropriate digital certificates. Electronic mailroom 107 may also include other programs to interface with other patent offices. The information received from the patent offices by electronic mailroom 107 may be used by DS 105 to provide docketing services. [67] Paper mailroom 108 includes printers, fax machines, fax servers 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 108 also includes scanners and equipment necessary to scan papers received from technology developers 110, patent attorneys 120 and patent offices 140 into computer-readable format. Such correspondence is scanned and analyzed by optical character recognition (OCR) software to create two versions of the document: an image version and a text version created by the OCR software. The image version is stored for archival purposes. 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 106. To this end, the fields of various patent office forms that are scanned by mailroom 108 are mapped to database 106 along with the document type (determined from the form recognition sequence) in order to enable the system to determine the appropriate docketing deadlines. The information extracted from OCR analysis may be stored in database 106 along with the scanned documents. Alternatively, or in addition to such scanning, personnel in maihoom 108 can directly enter appropriate data into database 106 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 100 and technology developers 110 can proceed in a manner that, from the standpoint of a technology developer, seems entirely paperless.

[68] The computer systems depicted in Fig. 1 may be of the form depicted in Fig. 2. Fig. 2 is a simplified block diagram of a computer system 200 according to an embodiment of the present invention. As shown in Fig. 2, computer system 200 includes at least one processor 202 that communicates with a number of peripheral devices via a bus subsystem 204. These peripheral devices may include a storage subsystem 206, comprising a memory subsystem 208 and a file storage subsystem 210, user interface input devices 212, user interface output devices 214, and a network interface subsystem 216. The input and output devices allow user interaction with computer system 200. A user may be a human user, a device, a process, another computer, and the like. Network interface subsystem 216 provides an interface to other computer systems and communication networks including communication network 115.

[69] Bus subsystem 204 provides a mechanism for letting the various components and subsystems of computer system 200 communicate with each other as intended. The various subsystems and components of computer system 200 need not be at the same physical location but may be distributed at various locations within network 115. Although bus subsystem 204 is shown schematically as a single bus, alternative embodiments of the bus subsystem may utilize multiple buses.

[70] User interface input devices 212 may include a keyboard, printing devices, a mouse, trackball, touchpad, a graphics tablet, a scanner, a barcode scanner, a touchscreen incorporated into the display, audio input devices such as voice recognition systems, microphones, and other types of input devices. In general, use of the teπn "input device" is intended to include all possible types of devices and ways to input information using computer system 200. [71] User interface output devices 214 may include a display subsystem, a printer, a fax machine, or non- visual displays such as audio output devices. The display subsystem may be a cathode ray tube (CRT), a flat-panel device such as a liquid crystal display (LCD), or a projection device. In general, use of the term "output device" is intended to include all possible types of devices and ways to output information from computer system 200.

[72] Storage subsystem 206 may be configured to store the basic programming and data constructs that provide the functionality of the computer system and of the present invention. For example, according to an embodiment of the present invention, software modules implementing the functionality of the present invention may be stored in storage subsystem 206 of DS 105 or server 101. For example, software modules that facilitate generation of docketing messages and software modules that facilitate payment of an annuity or maintenance fee associated with a patent document may be stored in storage subsystem 206 of DS 105 or server 101. These software modules may be executed by processor(s) 202 of DS 105 or server 101. In a distributed environment, the software modules may be stored on a plurality of computer systems and executed by processors of the plurality of computer systems. Storage subsystem 206 may also provide a repository for storing various databases and files that may be used by the present invention. For example, the multimedia documents may be stored in storage subsystem 206. Storage subsystem 306 may comprise memory subsystem 208 and file storage subsystem 210. [73] Memory subsystem 208 may include a number of memories including a main random access memory (RAM) 318 for storage of instructions and data during program execution and a read only memory (ROM) 220 in which fixed instructions are stored. File storage subsystem 210 provides persistent (non- volatile) storage for program and data files, and may include a hard disk drive, a floppy disk drive along with associated removable media, a Compact Disk Read Only Memory (CD-ROM) drive, an optical drive, removable media cartridges, and other like storage media. One or more of the drives may be located at remote locations on other connected computers.

[74] Computer system 200 itself can be of varying types including a personal computer, a portable computer, a workstation, a computer terminal, a network computer, a mainframe, a kiosk, a personal digital assistant (PDA), a communication device such as a cell phone, a game controller, or any other data processing system. Due to the ever- changing nature of computers and networks, the description of computer system 200 depicted in Fig. 2 is intended only as a specific example for purposes of illustrating the preferred embodiment of the computer system. Many other configurations of a computer system are possible having more or fewer components than the computer system depicted in Fig. 2. For example, several other subsystems may be included in computer system 200 depending upon the functions performed by system 200.

) f751 DOCKETING SYSTEM EMBODIMENT

[76] As can be appreciated from the above description, IP data processing system 100 provides a system to track all correspondence, communications, relevant dates and relevant events for patent applications owned by a given technology developer 110(i) or for patent applications for which a given patent law firm 120(i) is responsible for. Of course system 100 can also be used to track correspondence, communications, relevant dates and relevant events for a subset of such patent applications. For example, for all applications related to a particular technology, owned by a particular company group, owned by a particular law firm client, or filed after a particular date. In tracking such information, system 100 tracks information that is used by DS 105 to provide docketing services. [77] As described above, in the embodiment depicted in Fig. 1, IP data processing system 100 tracks and records information related to the various patent cases. In alternative embodiments, IP data processing system 100 may track and record information related to other cases such as trademark cases, copyright cases, litigation cases, and the like. According to an embodiment of the present invention, information related to each case is stored in a case data unit. The case may refer to a patent application, a trademark application, a copyright application, a litigation case, and the like. For purposes of the following example, it is assumed that a case refers to a patent -related case, e.g., a patent application, a patent application filed in a particular country or jurisdiction, a patent application filed according to a convention or treaty (e.g., PCT), and the like.

[78] A case data unit stores data and/or a collection of electronic documents (or references to the electronic documents) that are related to a particular case, e.g., a patent application in a particular country. The electronic documents may include scanned copies of paper documents related to the particular case. For example, the electronic documents stored or referred to by the case data unit may include a scanned copy of an Office Action received from the USPTO. In some instances a patent case may actually include more than one patent application, for example, where a Continued Prosecution Application (CPA) is filed in the USPTO under rule 37 C.F.R. 1.53(d).

[79] The case data unit may be implemented as a data structure, a file, a database, or any other structure capable of storing data and/or documents. In one embodiment, the data stored by a case data unit includes a variety of bibliographic information (referred to herein as "case meta data") associated with a patent case, as well as one or more documents related to the patent case. Case meta data stored in the case data unit for a particular patent case may include, for example, a case title, a patent application number (serial number), a filing date, a patent number, a patent date, publication numbers and associated publication dates, a client reference number, a law firm reference number, the country the application is filed in, a list of inventors, a status indicator (e.g., patent application filed, issued, abandoned, etc.), an assignee, information related to the assignment (e.g., an assignment recordation date and reel and frame number), a responsible patent practitioner, a working attorney, priority information (e.g., serial numbers, filing dates and countries of any parent cases), etc.

[80] The documents stored in or referred to by a case data unit may include a variety of documents of different document types. Specific examples of document types include an invention disclosure, a filed patent application, patent drawings, old versions of patent applications and drawings, other patent papers (e.g., other documents filed in the patent office including Responses to Office Actions, Information Disclosure Statements, Petitions, etc.); forms, image files (e.g., locked documents of .pdf or a similar type of image file format corresponding to a granted patent (if a patent was granted for the case) as well as electronic scanned copies of any office actions received, responses filed in the patent office, filing receipts, etc. received during prosecution of the patent application, notes (e.g., practitioner notes, inventor notes, notes from other interested parties regarding the importance of the patent to a companies business, products or competitors business or products, etc.), mail (e.g., email messages or alerts), and prior art references among others. It is to be understood that this list is for illustrative purposes only and various embodiments of the invention can include more or fewer document types and information as appropriate. [81] Each document stored in a case data unit also includes appropriate document meta-data that identifies the document and its history. Examples of document meta data include document ID, document type, originator, status, security profile, file format, creation date, last modified date, last modified by, physical file attributes, search field key words, completion date, witness names and dates, etc. The combination of a document, its document meta-data and other information related to the document may be referred to herein as a document entity.

[82] According to an embodiment of the present invention, the case data unit may also store docketing information (e.g., notifications and docketing messages related to deadlines) generated by DS 105 for the particular patent case.

[83] According to an embodiment of the present invention, DS 105 automatically generates messages (referred to as "docketing messages") for the cases in response to occurrence of events related to the cases. Each message generated by DS 105 identifies an action to be performed and identifies a date associated with the action. According to an embodiment of the present invention, the date indicated by a message generated by DS 105 may be of a particular type. Several types of dates may be configured including a reminder date, a due date, an absolute due date (also referred to as a "drop dead date"), and the like. [84] A "reminder date" is a date that reminds the user of an action that is to be due to be performed at some future point in time. A reminder date thus reminds a user of an action to be performed in the future, e.g., a future pending deadline.

[85] A "due date" associated with an action is a date that indicates the latest date by which the action associated with the due date has to be performed without paying any penalties or late fees or incurring any loss of intellectual property rights. For example, a message containing a due date may indicate that a response to an Office Action in a patent application mailed 4/8/2001 has to be filed by 7/8/2001. The 7/8/2001 is a due date for responding to the Office Action. [86] A "drop dead date" indicates the last possible date, including extensions available by paying penalties, late fees, etc., by which the action associated with the date has to be performed. Failure to perform the action by the drop dead date may result in loss of intellectual property rights. For example, for the Office Action mailed 4/8/2001, the absolute last date to respond to the Office Action with a maximum 3 month extension is 10/8/2001. The patent application is considered abandoned if the response is not filed by 10/8/2001.

[87] Reminder dates may also be referred to as "soft dates" while due dates and drop dead dates may be referred to as "hard dates". According to an embodiment of the present invention, the different types of dates are user configurable. Reminders can be further customized to each individual user's preferences rather than be set by a group's setup.

[88] Fig. 3 is a simplified high-level flowchart 300 showing a method of configuring DS 105 to generate docketing messages according to an embodiment of the present invention. Flowchart 300 depicted in Fig. 3 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[89] As depicted in Fig. 3, the method is initiated by configuring one or more triggering events (step 302) and one or more rules (step 304). Steps 302 and 304 may be performed concurrently. According to an embodiment of the present invention, a triggering event is any event that occurs in a case and which requires some action or response from a user (e.g., the patent practitioner handling the case) associated with the case. The action or response is generally required within a certain timeframe. Examples of triggering events for a U.S. patent case include filing of a patent application, receipt of a Notice to File Missing parts of a patent application, receipt of an office action for a patent application, receipt of a final office action for the patent application, issuance of a patent, and the like. In addition to events related to a case, changes in data stored in a case data unit for a case may also be configured as triggering events.

[90] Triggering events may be defined by providers of IP data processing system 100 or may also be defined by users (e.g., other participants in the patent process) of the present invention. Information related to the triggering events may be stored in database 106 from where it can be accessed by DS 105. Fig. 4 is a simplified high-level flowchart 400 depicting a method of configuring a triggering event according to an embodiment of the present invention. Flowchart 400 depicted in Fig. 4 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[91] As depicted in Fig. 4, the method is initiated when DS 105 receives a request from a user to create a new triggering event (step 402). The request may be received from a computer system belonging to one or participants in the patent process depicted in Fig. 1. For example, the request may be received from a docketing specialist from a law firm, from an in-house patent attorney, and the like. The request may also be received from a provider of IP data processing system 100. [92] DS 105 then prompts the user to provide an identifier for the triggering event to be created (step 404). According to an embodiment of the present invention, a user interface such as user interface 500 depicted in Fig. 5 may be displayed to user. The user may enter the triggering event identifier in field 502. Selection of "Save" button 504 instructs DS 105 to create a triggering event having the name or identifier entered in field 502. The user may cancel the process of configuring a triggering event by selecting "Cancel" button 506.

[93] DS 105 then receives information comprising the identifier to be used for naming the triggering event (step 406). DS 105 then determines if the identifier received in step 406 is unique (step 408). As part of step 408, DS 105 checks if any previously configured triggering events have the same identifier (name) as the triggering event identifier received in step 406. If a duplicate identifier is detected, processing reverts back to step 404 wherein the user is prompted to enter another identifier for the triggering event. If the triggering event identifier is determined to be unique, DS 105 then creates a new triggering event using the identifier received in step 406 (step 410). Information related to the triggering event configured in step 410 is then stored in a memory location from where it can be accessed by DS 105 (step 412).

[94] According to an embodiment of the present invention, in step 412, information related to the user who requested creation of the triggering event is also stored along with the triggering event related information. The user information is used to ensure that the triggering event can be modified or deleted only by the user who configured the triggering event or by someone who is authorized by the user who created the triggering event.

[95] Referring back to Fig. 3, in step 304, one or more rales may be configured. Each rule comprises information for generating one or more docketing messages that are generated to alert the user that an action or response is required for a particular case in response to a triggering event. Fig. 6 is a simplified high-level flowchart 600 depicting a method of configuring a docket rule according to an embodiment of the present invention. Flowchart 600 depicted in Fig. 6 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives. [96] As depicted in Fig. 6, the method is initiated when DS 105 receives a request from a user to create a new docket rule (step 602). The request may be received from a computer system belonging to one or participants depicted in Fig. 1. For example, the request may be received from a docketing specialist from a law firm, from an in-house patent attorney, and the like. The request may also be received from a provider of IP data processing system 100.

[97] DS 105 then prompts the user to provide information related to the docket rule to be created (step 604). According to an embodiment of the present invention, a user interface such as user interface 700 depicted in Fig. 7 (described below) may be displayed to enable the user to enter information related to the rule to be created.

[98] DS 105 then receives information provided by the user that is to be used for creating the rule (step 606). The information received in step 606 includes an identifier to be used for naming the rule. DS 105 then determines if the identifier received in step 606 is unique (step 608). As part of step 608, DS 105 checks if any previously configured docket rule has the same identifier (name) as the identifier received in step 606. If a duplicate identifier is detected, the user is prompted to enter another rule identifier (step 610). If the identifier is determined to be unique in step 608, DS 105 then creates a new docket rule using the information received in step 606 (step 612). Information related to the rule configured in step 612 is then stored in a memory location from where it can be accessed by DS 105 (step 614).

[99] According to an embodiment of the present invention, in step 614, information related to the user who requested creation of the docket rule is also stored along with the rule information. The user information is used to ensure that the rule can be modified or deleted only by the user who configured the rule or by someone who is authorized by the user who created the rule.

[100] Fig. 7 depicts an example of a simplified user interface 700 for creating a rule according to an embodiment of the present invention. User interface 700 depicted in Fig. 7 is merely illustrative of an embodiment of the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives. As depicted in Fig. 7, interface 700 comprises three sections 702, 704, and 706. The fields in each of the sections are described below. [101] Section 702 of user interface 700 includes a field 708 wherein a user may enter a country to which the rule applies. Information used for identifying a rale may be entered in fields 710 and 712. For example, a name identifier for the rale may be entered in field 712. According to an embodiment of the present invention, DS 105 automatically generates an internal rule number or key number for the rale. A rule may have an effective period characterized by an effective date and an end date. The effective period identifies a period of time when the rale is valid and is to be applied. For example, the effective period of a rule may be based upon the filing date of a patent application. The effective date for a rale can be entered in field 714 and marks the start of the time period when the rale is effective. The end date for the rale can be entered in field 716. [102] According to an embodiment of the present invention, multiple versions of a rule may be stored. The current version of the rule is indicated in field 718. The revision date 720 for each version is also indicated. Comments related to the rale can be entered in field 722.

[103] Section 704 of user interface 700 provides fields for specifying attributes of a case that have to be satisfied in order for the rale to be applied for the case. The information entered in section 704 thus identifies criteria (referred to as "filter criteria") that are used to determine if a particular rule is applicable for a particular case. According to an embodiment of the present invention depicted in Fig. 7, the user can select a status 724 of the case to which the rale is to apply. For example, the user may specify if the rale is to be applied to a disclosure (i.e., to a case that has not been filed as yet), to a pending patent application, or to an issued patent. The application type 726 to which the rule is to be applied may also be specified. For example, the rale may be applied to a utility patent case, a design patent case, a plant patent case, a utility model patent case, a petty patent case, a provisional patent application case, and the like. The priority type 728 of a case to which the rale is to apply may also be specified. As will be explained below, DS 105 uses this information to identify whether a particular rule is to be applied to a particular case.

[104] Section 706 provides fields for specifying information that is used to generate docketing messages according to an embodiment of the present invention. As described above, each docketing message comprises information identifying an action to be performed and a date associated with the action. Accordingly, in section 706, a user may specify actions (or descriptions of actions) to be associated with the rale. For example, a user can input information identifying an action to be associated with the rale in field 730.

[105] The user may also specify a formula to be used for generating a date to be associated with each action specified for the rule. According to an embodiment of the present invention, the date generation formula is generally a mathematical formula that takes as input a "base date" and calculates a date to be associated with the action based upon the base date. The base date may correspond to a date when a triggering event occurred, or some other date indicated in the information stored in the case data unit for a case, or some other date. The date generation formulae are generally based upon legal rales, statutes, or regulations applicable to the triggering event. For example, a base date may correspond to the date of filing of an application, the priority date for an application, the date of mailing of correspondence from the patent office, and the like. The date generation formula may also be based upon preferences configured by users of the present invention. According to an embodiment of the present invention, date generation formulae used for generating soft dates are usually based upon user preferences while formulae for calculating hard dates are usually based upon legal laws applicable to the triggering event or to a particular case.

[106] As depicted in Fig. 7, the priority or base date to be used for calculating a date for the action may be specified in field 732. A date generation formula for calculating the date to be associated with the action may be specified in fields 734. The type of the date (i.e., reminder date, due date, drop dead date, etc.) may be specified in field 736. Drop-down list menus may be provided to facilitate the selection process.

[107] The user can add multiple actions for a rale by selecting "Add" button 738. A list of actions, a date generation formula associated with each action in the list, and a date type associated with each action specified for the rule are displayed in section 706. A particular selected action associated with a rale may be removed by selecting the action and then selecting "Remove" button 740.

[108] Information for a rale may be saved by selecting "Save" button 742. An existing rale may be deleted by selecting "Delete" button 744. According to an embodiment of the present invention, various versions of a rale may be saved. For example, if information related to a pre-existing rule is modified, the modified information may be saved as a new version of the rule. New versions for a rule may be saved by selecting "Add New Version" button 746. [109] Fig. 8 depicts a simplified table 800 listing examples of rules that may be configured according to an embodiment of the present invention. Information related to three rules is depicted in Fig. 8. Rule identifiers are displayed in column 802. For each rale, one or more actions defined for the rule are shown in column 804. For each action, the base date to be used for generating a date for the action, a formula to be used for generating the date, and the type of the date associated with the action are displayed in columns 806, 808, and 810, respectively.

[110] The rales depicted in Fig. 8 include an "IDS Due" rale, a "Foreign filing" rale, and an "Office Action response" rale. Two actions are defined for the "IDS Due" rale. The description for both actions is "File IDS." Both actions use a filing date of an application as the base date. The date generated for the first action is of type "Reminder" and is calculated by adding two months to the base date. The date generated for the second action is of type "Due" date and is calculated by adding three months to the base date.

[Ill] Two actions are defined for the "Foreign Filing" rale. The description for both actions is "File foreign application." Both actions use a priority date of an application as the base date. The date generated for the first action is of type "Reminder" and is calculated by adding six months to the base date. The date generated for the second action is of type "Due" date and is calculated by adding twelve months to the base date.

[112] Three actions are defined for the "Office Action response" rule. The description for all three actions is "File response to office action." All three actions use a mailing date of an Office Action as the base date. The date generated for the first action is of type "Reminder" and is calculated by adding two months to the base date. The date generated for the second action is of type "Due" date and is calculated by adding three months to the base date. The date generated for the third action is of type "Drop dead" date and is calculated by adding six months to the base date.

[113] The rales depicted in Fig. 8 are not intended to limit the scope of the present invention as recited in the claims. Additional rales may be defined as desired by users of the present invention.

[114] Referring back to Fig. 3, after triggering events and rules have been configured, one or more rules may be associated with each triggering event (step 306).

Associations between triggering events and rules are generally based on laws and regulations applicable to cases managed by IP data processing system 100. The associations may also be based upon criteria provided by users of DS 105. Fig. 9 is a simplified high-level flowchart 900 showing a method of associating rules with a triggering event according to an embodiment of the present invention. Flowchart 900 depicted in Fig. 9 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives. [115] As depicted in Fig. 9, the method is initiated when DS 105 receives a request to associate one or more rules with a particular triggering event (step 902). DS 105 receives information identifying a triggering event with which the rales are to be associated (step 904). DS then receives information identifying one or more rales to be associated with the triggering event received in step 904 (step 906). A particular version of a rule may also be associated with a triggering event. DS 105 then creates associations between the triggering event received in step 904 and the one or more rules received in step 906 (step 908). Information related to the associations between the triggering event and the rules may then be stored in a memory location accessible to DS 105 (e.g., the associations information may be stored in database 106) (step 910). [116] Figs. 10A and 10B depict an example of a simplified user interface

1000 for associating one or more rules with a triggering event according to an embodiment of the present invention. User interface 1000 depicted in Figs. 10A and 10B is merely illustrative of an embodiment of the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[117] As depicted in Fig. 10A, the triggering event with which the rales are to be associated can be specified in field 1002. A drop-down menu is provided to facilitate the selection of a particular triggering event from pre-cόnfigured triggering events. The expanded drop-down menu is depicted in Fig. 10B showing multiple pre-configured triggering events including "Office Action," "Office Action FINAL," "Ex Parte Quayle Action," "Notice of Allowance," and the like. The user can select a particular triggering event from the list of triggering events. As previously indicated, a triggering event may refer to an event associated with a case or a change in data stored in a case data unit for a case. The country for which the triggering event and the associated rules are to be applied can be specified in field 1004.

[118] Field 1006 displays a list of pre-configured rales that may be associated with the triggering event identified in field 1002. Using an input device such as a mouse, a user may select one or more rules to be associated with the triggering event from the displayed list. In order to associate a particular rale with the triggering event, a user may select the particular rule in field 1006 and then select "Add" button 1008. Upon selecting "Add" button 1008, the rales selected in field 1006 are transferred to field 1010, thereby indicating that the rule have been selected to be associated with the triggering event identified in field 1002. Rules that have been selected to be associated with the triggering event are displayed in field 1010. A user may deselect a previously selected rale by selecting the particular rule in field 1010 and then selecting "Remove" button 1012. Upon selecting "Remove" button 1012, the rales selected in field 1010 are transferred back to field 1006, thereby indicating that the rales are not to be associated with the triggering event.

[119] Selecting "Save" button 1014 causes information related to the triggering event and the associated rales to be saved. As indicated above, the information related to the associations may be stored in database 106 or any other memory location accessible to DS 105. According to an embodiment of the present invention, associations configured by providers of DS 105 are stored in a system level storage (or system library) in database 106. Information configured by customers of DS 105 is stored in a customer level storage (or customer library) in database 106.

[120] Referring back to Fig. 3, after one or more rales are associated with triggering events, recipients of the docketing messages generated by DS 105 are specified for each case (step 308). For each case, information identifying recipients of docketing messages generated in response to triggering events associated with the case may be stored in the case data unit corresponding to the case. One or more recipients may be specified for each case. The recipients may include a practitioner responsible for the case, a docketing specialist, or other entities associated with the case.

[121] The triggering events and the associated rales are then used to automatically generate docketing messages alerting users of deadlines associated with cases (step 310). Further information related to generation of messages is described below.

[122] Fig. 11 is a simplified high-level flowchart 1100 depicting a method of generating docketing messages in response to a triggering event according to an embodiment of the present invention. Flowchart 1100 depicted in Fig. 11 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[123] As depicted in Fig. 11, according to an embodiment of the present invention, the method is initiated when DS 105 detects the occurrence of or receives a signal indicating the occurrence of a particular triggering event for a particular case (step 1102). DS 105 may user various different techniques to detect the occurrence of the triggering event for the particular case. According to an embodiment of the present invention, DS 105 may track information stored by the case data unit corresponding to the particular case. DS 105 may detect the occurrence of a triggering event when some data, which has been defined as a triggering event, associated with the particular case has changed or been updated (i.e., specific changes in the case data unit information may signal occurrence of the triggering event). In other embodiments, DS 105 may receive a signal indicating the occurrence of a triggering event. The signal may be received from various sources. For example, the signal may be received from a docketing person who is responsible for tracking occurrences of triggering events. For example, a docketing person in a law firm may be responsible for tracking all correspondences received from and mailed to the USPTO, and for sending signals to DS 105 indicating occurrences of triggering events for one or more cases. The signal may also be received from one or more software applications that are configured to analyze documents received from or mailed to the USPTO (or any other intellectual property agency) and send a signal to DS 105 for documents that result in triggering events. If DS 105 is coupled to computer systems used by one or more patent offices, the signal may be received directly from the patent offices (e.g., from the USPTO) via electronic interfaces (e.g., PAIR) provided by the patent offices. In an automated workflow environment, DS 105 may automatically detect the occurrence of the particular event. [124] Upon detecting the occurrence of a triggering event in step 1102, DS

105 detenriines one or more rales associated with the particular triggering event (step 1104). The one or more rules determined in step 1104 may include rales configured by customers of IP data processing system 100 or rales configured by providers of DS 105. As previously stated, information related to the triggering event and rales associated with the triggering event are stored in a memory location accessible to DS 105 (e.g., in database 106).

[125] From the one or more rules determined in step 1104, DS 105 then identifies a set of rales that are applicable to the particular case (step 1106). According to an embodiment of the present invention, DS 105 is configured to sift through the rales associated with the triggering event to select only those rules that apply to the particular case. Whether or not a rule is applicable for the particular case depends on the filter criteria defined for the rule. As described previously, the filter criteria for a rale may be specified when the rale is created (e.g., information specified in sections 702 and 704 of user interface 700 depicted in Fig. 7). According to an embodiment of the present invention, for each rule in the one or more rales identified in step 1104, DS 105 determines if the filter criteria defined for the rale matches the case information stored in the case data unit corresponding to the particular case. A rule is deemed to be applicable to the particular case, and is included in the set of rales identified in step 1106, if the case information associated with the particular case contains attributes that match or satisfy the filter criteria specified for the rale. It should be apparent that various other techniques may also be used to identify the set of rules in alternative embodiments of the present invention. For example, if the filter criteria for a rale specifies that the rule is to apply to a pending US utility patent application, then the rale will be selected in step 1106 if the particular case is a pending US utility patent application.

[126] DS 105 then generates one or more docketing messages for each rule in the set of rales identified in step 1106 (step 1108). According to an embodiment of the present invention, each docketing message comprises information identifying an action to be performed in response to the particular triggering event, a date associated with the action, and information identifying the type of the date. As previously stated, for each rule, information used for generating one or more docketing messages for the rale is specified when the rale is configured. For example, according to an embodiment of the present invention, information specified in section 706 of user interface 700 depicted in Fig. 7 is used to generate the one or more docketing messages. DS 105 calculates the date for each message using the base date and the date generation formula associated with the action for the rule. The base date may con-espond to a date associated with the particular triggering event (e.g., if the triggering event corresponds to an Office Action received from the USPTO, the base date for an action may correspond to the mailing date of the Office Action) or to a date associated with the case and stored in the case data unit (e.g., if the triggering event corresponds to filing of a patent application, the base date for an action related to IDS filings may correspond to the date of filing of the application). [127] DS 105 then determines one or more recipients for each docketing message generated in step 1108 (step 1110). Information identifying the recipients may be stored in the case data unit for the particular case. The docketing messages generated in step 1108 are then communicated to the appropriate recipients determined in step 1110 (step 1112). According to an embodiment of the present invention, the docketing messages are communicated to client computers used by the recipients determined in step 1110. For example, docketing messages generated in response to receiving an office action may be communicated to a client system of a practitioner handling the particular case and to a partner in charge of the case. The docketing messages may be communicated to the recipients using various different communication channels including emails, faxes, instant messages, pages, telephone calls, electronic docket reports, electronic to-do-lists, and other information communication techniques.

[128] According to an embodiment of the present invention, the docketing messages generated in step 1108 are also stored in the case data unit corresponding to the particular case for which the messages have been generated (step 1114). Accordingly, a user can access information stored in the case data unit to get information about all docketing messages that have been generated for the case corresponding to the case data unit.

[129] Fig. 12 depicts an example of a simplified user interface 1200 for outputting docketing messages to a user according to an embodiment of the present invention. User interface 1200 depicted in Fig. 12 is merely illustrative of an embodiment of the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[130] User interface 1200 may be used to display docketing messages, other non-docketing messages, disclosures, or all of the aforementioned categories. As depicted in Fig. 12, user interface 1200 displays docketing messages (as indicated by selection of radio button 1202) for a user "Jeff Grainger." A time period specified by a start time and an end time may be specified. The start time for the time period may be specified in field 1204 and an end time may be specified in field 1206. Only those docketing messages having dates that fall within the time period are displayed. [131] For each docketing message, user interface 1200 displays information identifying the case for which the docketing message was generated. As depicted in Fig. 12, the case identification information for a case includes a case number 1208 and a title 1210 for the case. For each docketing message a description of the action to be performed 1212, the country 1214 associated with the case, the date 1216 associated with the action, and the date 1218 when the docketing message was generated and communicated to the recipient is displayed. According to an embodiment of the present invention, each docketing message displayed in user interface 1200 may be color-coded to indicate the degree of urgency of the docketing message. For example, docketing messages that comprise "drop dead dates" may be displayed in red color to emphasize their importance, docketing messages that comprise "reminder dates" and "due dates" may be displayed in various different colors.

[132] Information 1220 identifying an origination point of the docketing message may also be displayed. The recipient of a docketing message may dismiss (or de- docket) a particular docketing message by selecting a "Dismiss" button 1222 corresponding to the docketing message. Dismissing a docketing message results in removal of the docketing message from the recipient's docket. According to an embodiment of the present invention, only docketing messages containing soft dates (i.e., docketing messages comprising reminder dates) can be dismissed by a recipient. In this embodiment, the recipient cannot dismiss docketing messages that contain hard dates (i.e., due date or drop dead dates). According to an embodiment of the present invention, a docketing message may be dismissed when DS 105 determines that the action described by the docketing message has been performed. Clicking on an case displayed in user interface 1200 may open another interface displaying data and documents stored by the case data unit related to the selected case. [133] As shown above, user interface 1200 provides an integrated interface for displaying docketing messages, other messages (e.g., in-box messages, task lists, mail messages, etc.), invention disclosures, and the like. Accordingly, user interface 1200 eliminates the need to have separate user interfaces for mail, task lists, docket reminders, etc. which can be inefficient and can even lead to deficiencies in communication. Further, unlike conventional docketing systems that generate a hard copy docketing report that is then routed to the practitioner in charge of a case, according to the present invention, the docketing messages are automatically generated and electronically communicated to the user.

[134] As described above, triggering events and rales may be configured by providers by IP data processing system 100 or may be configured by users who use services provided by IP data processing system 100. In order to maintain the integrity of the docketing system, DS 105 performs special processing when a particular triggering event or rale is to be modified or deleted.

[135] Information related to a rale may be modified for various reasons, e.g., to add new actions, to change the description for a pre-defined action, to change the formula for calculating a date for an action associated with the rale, to change the rule name, to change the base date to be used, and the like. Fig. 13 is a simplified high-level flowchart 1300 showing a method of modifying a previously configured rule according to an embodiment of the present invention. Flowchart 1300 depicted in Fig. 13 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[136] The method is initiated when DS 105 receives a request from a user to modify a particular pre-configured rale (step 1302). DS 105 then determines if the user from whom the request is received is permitted to modify the particular rale (step 1304). If the user is not permitted to modify the particular rale, an error message is communicated to the user and the rale modification process is terminated (step 1306). If the user is allowed to modify the rule, DS 105 then receives the modified rale information (step 1308).

[137] DS 105 then determines if the modified rale information received in step 1308 is to be saved as a new rale version (step 1310). As described above, according to an embodiment of the present invention, the user may specify that the modified information is to be stored as a new version by selecting "Add New Version" button 746 depicted in Fig. 7. If the modified rule information is to be saved as a new rale version, the version number of the rale is incremented (step 1312), and the modified information is stored as a new version (step 1314). If the modified rale information is not to be saved as a new rale version, the existing version of the rale is overwritten with the modified information (step 1316). [138] DS 105 uses the modified information to automatically update all docketing messages that may have been previously generated using the rale (step 1318). According to an embodiment of the present invention, if a new version of the rule is added, then only those docketing messages for cases that are filed after the end date of the old version of the rule are updated. In this manner the integrity of the docketing system is maintained.

[139] Fig. 14 is a simplified high-level flowchart 1400 showing a method of deleting a previously configured rale according to an embodiment of the present invention. Flowchart 1400 depicted in Fig. 14 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[140] The method is initiated when DS 105 receives a request to delete a particular pre-configured rule (step 1402). DS 105 then determines if the user from whom the request is received is permitted to delete the particular rale (step 1404). If the user is not permitted to delete the particular rale, an error message is communicated to the user and the rule deletion process is terminated (step 1406). If the user is permitted to delete the rule, DS 105 then determines if the rale to be deleted is associated with any triggering event (step 1408). If the rule is associated with any triggering event, an error message is communicated to the user and the rule deletion is not permitted (step 1406). In this manner, the integrity of the docketing system is maintained. If the rale to be deleted is not associated with any triggering event, then information related to the rale is deleted (step 1410). All actions and other information related to the rule are also deleted as part of step 1410. [141] Fig. 15 is a simplified high-level flowchart 1500 depicting a method of modifying a previously configured triggering event according to an embodiment of the present invention. The triggering event may be modified to add or remove rales associated with the triggering event. Flowchart 1500 depicted in Fig. 15 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[142] According to an embodiment of the present invention, the method is initiated when DS 105 receives a request to modify a particular pre-configured triggering event (step 1502). DS 105 then determines if the user from whom the request is received is permitted to modify the particular triggering event (step 1504). If the user is not permitted to modify the particular triggering event, an enor message is communicated to the user and the triggering event modification process is terminated (step 1506). If the user is allowed to modify the triggering event, then the modified triggering event information is saved to a memory location accessible to DS 105 (step 1508). DS 105 then determines if the triggering event that is modified is associated with any case (step 1510). If the triggering event is not associated with any case processing continues with step 1514. If DS 105 determines in step 1510 that the triggering event is associated with a case, then all docketing messages associated with the affected case and previously generated in response to the triggering event are automatically regenerated based upon the modified information (step 1512). According to an embodiment of the present invention, a message may be communicated to users and customers of DS 105 indicating that the triggering event has been modified (step 1514).

[143] Fig. 16 is a simplified high-level flowchart 1600 showing a method of deleting a previously configured triggering event according to an embodiment of the present invention. Flowchart 1600 depicted in Fig. 16 is merely illustrative of an embodiment incorporating the present invention and does not limit the scope of the invention as recited in the claims. One of ordinary skill in the art would recognize other variations, modifications, and alternatives.

[144] According to an embodiment of the present invention, the method is initiated when DS 105 receives a request to delete a particular triggering event (step 1602). DS 105 then detemiines if the user from whom the request is received is permitted to delete the particular triggering event (step 1604). If the user is not permitted to delete the particular triggering event, an error message is communicated to the user and the user is not permitted to delete the triggering event (step 1606). If the user is permitted to delete the rule, DS 105 then detemiines if one or more rales are associated with the triggering event to be deleted (step 1608). If one or more rules are associated with the triggering event, an error condition is indicated and deletion of the triggering event is not permitted (step 1606). If no rules are associated with the triggering event, then information related to the triggering event is deleted (step 1610).

H451 EMBODIMENT OF THE PRESENT INVENTION PROVIDING TECHNIQUES FOR PAYING INTELLECTUAL PROPERTY ANNUITIES AND MAINTENANCE FEES [146] As described above, IP data processing system 100 provides a system to track all correspondence, communications, relevant dates and relevant events for every patent application owned by a given technology developer 110(i) or for every patent application for which a given patent law firm 120(f) is responsible for. Of course system 100 can also be used to track correspondence, communications, relevant dates and relevant events for a subset of such patent applications. For example, for all applications related to a particular technology, owned by a particular company group, owned by a particular law firm client, or filed after a particular date.

[147] In tracking such information, system 100 tracks information that is useful when making decisions on whether or not to pay certain annuity or maintenance fees. As described in more detail below, system 100 provides an annuity and maintenance fee payment service that allows one or more decision makers to access this information in a quick and efficient manner. In various embodiments, The information that is accessible includes one or more of the originally filed application as well as the currently pending or allowed patent claims, the patent abstract or summary, a complete copy of the originally filed patent application including the detailed description and figures, previous decisions regarding payment of annuity and maintenance fees for the application as well as related applications and foreign counterpart applications among other data. In some embodiments, system 100 also enables comments to be entered by one or more users having appropriate access rights related to patent strategy, scope and other issues. Such comments may be used, for example, to indicate products the patent is intended to cover, advice or instractions on paying fees associated with the application including annuity or maintenance fees, advice or instractions on filing divisional applications or future claims, etc.

[148] Prior to using system 100 to pay annuity and/or maintenance fees, a company or law firm typically performs a customer set-up or initiation routine that defines how instructions for fee payment should be routed, i.e., who is responsible for making the payment decisions or at least providing input on the decisions. For example, one customer may route all annuity/maintenance fee payment requests to an in-house patent attorney for initial consideration. These requests may appear on the client system for the in-house patent attorney as a docket alert entitled "Annuity payment due" or "Maintenance Fee payment due." The timing of the request (e.g., how many weeks before the payment is due) as well as the frequency of such requests (the number of reminders) can also be determined during the customer set-up process.

[149] Figs. 17A-17C are exemplary Web pages that can be used to define within routing rules within system 100 for requesting payment instractions for annuity and/or maintenance fee payments. Fig. 17A shows a Web page 1700 that allows a customer, e.g., a corporation, to instruct system 100 as to a specific individual (fields 1702) that will be responsible for decisions regarding annuity/maintenance fee payments as well as a specific individual who will oversee the annuity/maintenance fee payment process (fields 1704). Page 1700 also allows the corporation to select a third party annuity/maintenance fee payment service (field 1706), such as SGA2, Inc. to make payments as instructed by the individuals identified in fields 1702 and 1704. Further details of how such a third party service provider receives payment instractions and communicates confirmation of the payments is discussed in more detail below. [150] Fig. 17B shows a Web page 1710 that allows a customer to define multiple groups (field 1712) with the possibility of each group having different individuals, entered through fields 1714 and 1716, in charge of annuity/maintenance fee for that group. It is also possible for the different groups to select different third party annuity/maintenance fee payment services (field 1718). Fig. 17C shows a Web page 1720 that allows a customer to define payment decision making responsibility for a specific patent application through fields 1722, 1724 and 1726. In one embodiment, a customer typically enters appropriate data through a form such as Web page 1700 to set default values for all annuity/maintenance fee payment instractions. Forms such as pages 1710 and 1720 can then be completed by the customer to override the default values for specific groups or divisions or specific cases. [151] As previously mentioned, system 100 tracks all sorts of information related to patent applications for an individual company or law firm. The tracked information includes application filing dates and annuity and maintenance fee due dates. In one embodiment, annuity and maintenance fee due dates are calculated by rules specific to each country an application is filed in. Such calculations can be performed any time after the filing of the application in the particular country. In one embodiment the filing of an application is a triggering event that results in a docketing program associated with server system 100 calculating due dates for annuity payments when dictated by appropriate rales and the granting of a patent application is a triggering event that results in the docketing program calculating appropriate due dates for maintenance fee payments. The calculated due dates are then stored in database 100 and used to generate future reminder notices for annuity and maintenance fee payments. One example of how a docket system can be used to generate annuity and maintenance fee reminder and due dates is described above.

[152] Once docketed, requests for annuity and maintenance fee payment instructions are routed according to the routing rales set up during the customer set up process. These routing rales dictate the frequency of the requests as well as which client systems the requests are sent to. A variety of different formats can be used to present the requests for payment instractions to an appropriate client system. Fig. 18 is an exemplary Web page 1830 that is used in one embodiment of the invention to present such instruction requests. Web page 1830 presents to the client system a list of all annuity and maintenance fee payments that are due within a certain period (e.g., one month) as defined during user setup. This page view is useful if a particular customer has many patent files and prefers to make annuities payment decisions in a sort of batch process, for example, once a month. An individual client system can view Fig. 18 by selecting a menu selection (e.g., as a selection under "monitors" button 1832), by selecting an alert message that shows up in the client systems alert monitor. In another embodiment, annuity and maintenance fee instructions can be requested and received when a client system is reviewing data or status information associated with a particular case.

[153] As shown in Fig. 18, two different annuity payment instractions 1834 and 1836 are presented to a client system via Web page 1830 in this example. Instruction

1834 is for payment of the sixth annuity fee in Taiwan for a case entitled "Variable Latency" while instruction 1836 is for payment of the fourth annuity fee in Australia for a case entitled "A New Family of Penam Antibiotics." For each instruction the client system can select via fields 1838 to pay the fee, not pay the fee or put the decision on hold until a later date. Although not shown, an additional "Pay All" button can be selected to expedite the process for customers that regularly pay all such fees.

[154] If the client system would like further information about the case an annuity or maintenance fee decision is required for, the client system can select the case title. In one embodiment, selecting the title presents a Web page that displays predetermined summary information about the case. The information may include, for example, one or more exemplary claims, an abstract or summary of the invention, a thumbnail exemplary figure, user comments and/or previous payment instruction history. The information displayed may be customized based on the preferences of the customer or an individual user within the customer. Such customization may be performed during the customer set-up process.

[155] In another embodiment, selecting the case title links the client system to the case data unit. In one embodiment the case data unit is presented to the client system through a trifold or similar graphical user interface. An example of such a trifold user interface 1950 for the "Variable Latency" case shown in Fig. 18 (related to annuity payment instruction 1834) is shown in Fig. 19. Interface 1950 (a Web page 1950 in this example) includes four primary display sections including: correspondence section 1952, file history section 1954, document section 1956 and case summary section 1958. Correspondence section 1952 includes multiple folders with each folder including specific types of information, for example, a folder 1960 may include a list of all correspondence between a law firm and in-house attorneys, patent administrators and inventors for the selected patent matter ("Variable Latency Cut Through Bridge" in this particular example). Individual pieces of correspondence, for example email messages, may be contained in folder 1960 and accessible by selecting on an html link that leads to the underlying correspondence document. Thus, to view an individual correspondence in folder 1960, the user of the client system simply expands the folder and selects the link associated with the desired correspondence document. Similarly, each of the documents shown in file history section 1954 and document section 1956 are also html links to underlying documents. Correspondence documents can be email messages, word processing documents, scanned image files as well as other types of documents.

[156] File history section 1954 lists all the official papers that have been sent to and received from the patent office. These documents (referred to as "patent documents" herein) are stored in an image format (e.g., .pdf, .bmp or .tiff file fomiats). The image format preserves the actual look of any paper documents that were either transmitted to a patent office in paper foraiat or received from a patent office in paper format. The image format also prevents the documents from being accidentally modified or edited in most instances. In some embodiments, the patent documents in file history section 1954 are also locked so that they cannot be edited or deleted by most users. As shown in Fig. 19, file history section 1954 includes html links to granted Letters Patent 1960, Issue Notification 1961, Issue Fee 1962, Notice of Allowance 1963, a Response to Final Office Action 1964 and other documents filed in the Patent Office - all stored in an image format and locked from further editing.

[157] Document section 1956 lists files associated with the selected patent application that were created by the applicant, the applicant's attorney or similar party. These patent files include documents such as invention disclosures that are not filed in a patent office as well as patent applications, responses to office actions and other documents that either were filed or are going to be filed in a patent office. Many of the patent files listed in document section 1956 are stored in a format in which they are accessible, and editable if they are not locked, to the application program from which they were created or with which they are associated. Typically these files are stored in a format native to the associated application. For example, an invention disclosure, a patent application and a response to an office action that were all created by MS Word™ 2000 may all be stored in a .doc file. In other embodiments, however, it is possible to store these files in other formats such as text files (.txt) or compressed files (.zip) that are readily convertible to native file fonriats by the application program itself. As with other sections, documents in section 1956 may be organized in file folders. Also, in some embodiments individual documents in the section 1956 may include separate sections that are accessible independent of the other sections. For example, the originally filed patent application may be stored in a filing package 1965. Within filing package 1965 are separate documents such as a patent application, an assignment form, a power or attorney form, and an oath and declaration form (not shown in Fig. 19). The patent application may include separate sections such as abstract, specification, claims, that are accessible independent of each other if desired, for example, if the client system wants to quickly review the claims without looking at the rest of the patent application document. [158] Finally, case summary section 1958 includes summary information about the particular patent application such as one or more of the invention's title, the list of inventors, the application filing date, the application number, list of countries the application was filed in, etc. In the embodiment illustrated in Fig. 19, a small subset of this information is displayed directly in section 1958 (e.g., the title) and more detailed summary information can be accessed by selecting an information icon 1966. Further details on this and other appropriate graphical user interfaces is presented in U.S. Application No. 09/919,764, filed on July 31, 2001 (Attorney Docket No. 020313-001100US), entitled "User Interface for Managing Intellectual Property," listing Jeffry J. Grainger as inventor, which is hereby incorporated by reference in its entirety. [159] Additionally, in some embodiments, if the client system would like to ask for an opinion from another (e.g., an outside attorney) regarding whether or not a specific annuity or maintenance should be paid, the client system can create an Alert that is sent to another appropriate client system (the outside attorney in this example). The Alert can be created by selecting a "Second Opinion" button displayed next to each case (not shown in Fig. 18). The created Alert will then appear in the outside attorney's alert list and the outside attorney will have access to all the same information (abstract, claims, etc.) as did the original client system (annuity decision maker). The outside attorney can then respond to the alert with his or her recommendation as to whether or not to pay the fee and the response will communicated to the annuity decision maker who created the initial alert.

[160] Another feature provided by system 100 that facilitates the decision making process for annuity and maintenance fees is available by selecting "Cost estimator" button 1840. Upon selecting cost estimator button 1840, a Web page is presented that can be used to estimate the cost of all future annuity and/or maintenance fees that are either due or will expected to be due for a particular case. Fig. 20 shows on example of a Web page 2070 that can be used estimate annuity payments due for filing a new patent application in nine different countries. Individual countries can be selected to be included or excluded in the cost estimator through selection fields 2072. In other embodiments, Web page 2070 lists only annuity payments for the particular country in which an annuity payment decision is required.

[161] In some embodiments IP data processing system 100 also provides a feature that, upon selection of an appropriate icon such as a "Family Tree" icon not shown in the figures, will depict graphically the relationship between the current application and other members of its patent family. Fig. 21 is one example of a Web page 2180 that graphically depicts such a family tree. As shown in Fig. 21, Web page 2180 shows the family tree of a Japanese patent application 2182 for which an annuity payment is due. Web page 2180 shows that application 2182 is a national filing from a PCT application 2184, which in turn claims priority from a U.S. filing 2186. All patent numbers, application numbers, filing dates and other data shown in Fig. 21 is fictional. [162] In some embodiments IP data processing system 100 also retains a history of annuity and maintenance fee payment instractions. In some embodiments this history is available for review by a client system by selecting a "payment history" button (not shown on Web page 1830) for the case. In other embodiments, payment history is accessible through the link associated with the case title. In other embodiments, the payment history of annuity and/or maintenance fee payments for related applications including applications filed in other countries is available for review by selecting an appropriate icon displayed on Web page 1830.

[163] When payment of the annuity fee and/or maintenance fees are actually due, some embodiments system 100 can make the payments on behalf of the customer and automatically deduct the payment amounts directly from accounts associated with the client system. Alternatively, the amounts can be billed to the client system. In various embodiments, system 100 can submit an annuity or maintenance fee payment directly to the appropriate Patent Office pursuant along with information identifying the annuity being paid. A confirmation of the annuity payment will then be sent to the client system and a payment receipt will be sent to IP data processing system 100 from the Patent Office. The receipt will become a document within system 100 associated with the appropriate case. These receipts can be viewed by client system with appropriate rights just as other documents associated with the case and the receipts can be compared versus payment instractions as a final accounting measure to ensure payments were properly received. System 100 can even be set up to track such receipts and if they are not received within a time period specified during user set-up, send an alert to the appropriate client system of the technology developer indicating that a problem with the annuity payment may have occurred.

[164] In other embodiments, however, payments are made by a third party amiuity fee payment service 130(i). Fig. 22 is a simplified diagram showing how requests 2200 for annuity/maintenance fee payment instractions are generated by IP data processing system 100, instractions 2205 for such aimuity/maintenance fee payments are generated by a client system at a technology provider 110(i) [or, alternatively, by a patent attorney at a law firm 120(f)], payment instractions 2210 are then communicated from system 100 to an annuity/maintenance fee service provider 130(i) and instractions 2215 confirming such payment are then communicated back to IP data processing system 100. In one embodiment, payment instructions 2210 are communicated from system 100 to service provider 130(i) in real time upon selecting a "Send to Agent" icon 1842 (shown in Fig. 18). In other embodiments, instructions are sent in batch mode at one or more predetermined times and in still other embodiments, agent 130(i) logs onto system 100 to retrieve annuity payment instractions.

[165] As described above, one benefit of the maintenance fee/annuity fee payment feature of the present invention is that if the client system wishes to look at data for the case at hand (e.g., the case Abstract, the current claims, the inventors, the business group, etc.), the client system simply selects the title or reference number associated with the case to get to this and other underlying data. Thus, the client system has direct and immediate access to all the documents that are useful to facilitate a decision for paying the fee. This is true whether the client system tasked with annuity/maintenance fee payment is the inventor, an in- house attorney, a patent administrator or an outside attorney or patent agent. Additionally, in the context of an ASP model, throughout this entire process all participates are looking at and reviewing the same set of data stored in database tables accessible by system 100. This provides a high degree of accuracy in the decision making process as well as a high degree of data integrity. [1 6] Although specific embodiments of the invention have been described, various modifications, alterations, alternative constructions, and equivalents are also encompassed within the scope of the invention. The described invention is not restricted to operation within certain specific data processing environments, but is free to operate within a plurality of data processing environments. Additionally, although the present invention has been described using a particular series of transactions and steps, it should be apparent to those skilled in the art that the scope of the present invention is not limited to the described series of transactions and steps.

[167] Further, while the present invention has been described using a particular combination of hardware and software, it should be recognized that other combinations of hardware and software are also within the scope of the present invention. The present invention may be implemented only in hardware, or only in software, or using combinations thereof.

[168] The specification and drawings are, accordingly, to be regarded in an illustrative rather than a restrictive sense. It will, however, be evident that additions, subtractions, deletions, and other modifications and changes may be made thereunto without departing from the broader spirit and scope of the invention as set forth in the claims.

Claims

WHAT IS CLAIMED IS:
1. A computer-implemented method of generating a message for a first intellectual property case, the method comprising: storing information related to a plurality of intellectual property cases on a computer-readable medium, the plurality of intellectual property cases including the first intellectual property case; receiving a signal indicating occurrence of an event related to the first intellectual property case; responsive to receiving the signal, identifying one or more rales associated with the event; identifying at least a first rale from the one or more rales based upon filter criteria information associated with the one or more rales and based upon information related to the first intellectual property case stored on the computer-readable medium; generating at least one message using the at least first rale, the message identifying an action to be performed in response to the event and identifying a date associated with the action; and communicating the at least one message to a first designated client system.
2. The method of claim 1 wherein the plurality of intellectual property cases includes patent cases and the first intellectual property case is a patent application case.
3. The method of claim 1 wherein the plurality of intellectual property cases includes trademark cases and copyright cases.
4. The method of claim 1 wherein storing information related to the plurality of intellectual property cases on the computer-readable medium comprises: for each intellectual property case, storing the information related to the intellectual property case in a case data unit, wherein the case data unit stores data related to the intellectual property case and one or more documents related to the intellectual property case.
5. The method of claim 1 wherein the signal indicating occurrence of the event related to the first intellectual property case is generated responsive to a change in the information related to the first intellectual property case.
6. The method of claim 1 wherein identifying the at least first rule from the one or more rales based upon the filter criteria information comprises: determining a set of rales from the one or more rales associated with the event, wherein a rale from the one or more rales is included in the set of rules if the filter criteria associated with the rule is satisfied by the information related to the first intellectual property case, the set of rales including the at least first rale.
7. The method of claim 6 wherein: the plurality of intellectual property cases includes patent cases and the first intellectual property case is a patent application case; and the filter criteria associated with each rule in the one or more rules comprises a criterion related to filing status of a patent case, a criterion related to a type of the patent case, and a criterion related to priority information for a patent case.
8. The method of claim 1 wherein generating the at least one message using the at least first rale comprises: determining an action associated with the at least first rule; determining a date generation formula associated with the action and a base date used by the date generation formula; applying the date generation fonnula to the base date to generate the date associated with the action; and including information indicating the action associated with the at least first rale and the date generated by applying the date generation formula in the at least one message.
9. The method of claim 1 wherein communicating the at least one message to the first designated client system comprises: determining one or more users associated with the first intellectual property case from information related to the first intellectual property case; from the one or more users, determining a first user who is designated to receive the at least one message generated using the first rale; communicating the at least one message to a system used by the first user.
10. The method of claim 9 wherein communicating the at least one message to the system used by the first user comprises: sending an electronic mail message to first user, the electronic mail message including the at least one message.
11. A system for generating a message for a first intellectual property case, the method comprising: a processor; and a memory coupled to the processor, the memory configured to store: information related to a plurality of intellectual property cases, the plurality of intellectual property cases including the first intellectual property case; and a computer program; wherein the processor is operative with the computer program to: receive a signal indicating occurrence of an event related to the first intellectual property case; identify one or more rales associated with the event responsive to receiving the signal; identify at least a first rale from the one or more rales based upon filter criteria information associated with the one or more rales and based upon infonnation related to the first intellectual property case stored in the memory; generate at least one message using the at least first rale, the message identifying an action to be performed in response to the event and identifying a date associated with the action; and communicate the at least one message to a first designated client system.
12. The system of claim 11 wherein: the plurality of intellectual property cases includes patent cases and the first intellectual property case is a patent application case; and for each intellectual property case, the information related to the intellectual property case is stored in a case data unit, wherein the case data unit stores data related to the intellectual property case and one or more documents related to the intellectual property case.
13. The system of claim 11 wherein: the plurality of intellectual property cases includes patent cases and the first intellectual property case is a patent application case; and the processor is operative with the computer program to determine a set of rules from the one or more rales associated with the event, wherein a rale from the one or more rales is included in the set of rales if the filter criteria associated with the rale is satisfied by the information related to the first intellectual property case, the set of rales including the at least first rale.
14. The system of claim 11 wherein the processor is operative with the computer program to: detenrine an action associated with the at least first rale; determine a date generation formula associated with the action and a base date used by the date generation formula; apply the date generation formula to the base date to generate the date associated with the action; and include information indicating the action associated with the at least first rale and the date generated by applying the date generation formula in the at least one message.
15. The system of claim 11 wherein the processor is operative with the computer program to : determine one or more users associated with the first intellectual property case from information related to the first intellectual property case; from the one or more users, determine a first user who is designated to receive the at least one message generated using the first rale; communicating the at least one message to a system used by the first user.
16. A docketing system comprising: a storage module, the storage module configured to store information related to a plurality of intellectual property cases on a computer-readable medium, the plurality of intellectual property cases including the first intellectual property case, the information related to each intellectual property case in the plurality of intellectual property cases including data related to the intellectual property case and data related to one or more documents related to the intellectual property case; a processing module, the processing module configured to: receive a signal indicating occurrence of an event related to the first intellectual property case; identify one or more rales associated with the event; identify at least a first rale from the one or more rales based upon filter criteria information associated with the one or more rales and based upon information related to the first intellectual property case stored on the computer-readable medium; and generate at least one message using the at least first rale, the message identifying an action to be performed in response to the event and identifying a date associated with the action; and a communications module configured to communicate the at least one message to a first designated client system.
17. A computer program stored on a computer-readable storage medium for generating a message for a first intellectual property case, the computer program product comprising: code for storing information related to a plurality of intellectual property cases on a computer-readable medium, the plurality of intellectual property cases including the first intellectual property case; code for receiving a signal indicating occurrence of an event related to the first intellectual property case; code for identifying one or more rales associated with the event; code for identifying at least a first rale from the one or more rules based upon filter criteria information associated with the one or more rules and based upon information related to the first intellectual property case stored on the computer-readable medium; code for generating at least one message using the at least first rule, the message identifying an action to be performed in response to the event and identifying a date associated with the action; and code for communicating the at least one message to a first designated client system.
18. The computer program product of claim 17 wherein the code for identifying the at least first rale from the one or more rales based upon the filter criteria information comprises: code for determining a set of rales from the one or more rules associated with the event, wherein a rale from the one or more rules is included in the set of rules if the filter criteria associated with the rale is satisfied by the information related to the first intellectual property case, the set of rales including the at least first rule.
19. The computer program product of claim 17 wherein the code for generating the at least one message using the at least first rale comprises: code for determining an action associated with the at least first rule; code for determimng a date generation formula associated with the action and a base date used by the date generation formula; code for applying the date generation formula to the base date to generate the date associated with the action; and code for including information indicating the action associated with the at least first rule and the date generated by applying the date generation formula in the at least one message.
20. The computer program product of claim 17 wherein the code for communicating the at least one message to the first designated client system comprises: code for determining one or more users associated with the first intellectual property case from information related to the first intellectual property case; code for detemiining a first user from the one or more users who is designated to receive the at least one message generated using the first rule; and code for communicating the at least one message to a system used by the first user.
21. A computer-implemented method of allowing payment of an annuity or maintenance fee associated with an intellectual property document, said method comprising: storing, on a computer-readable medium, a due date for said annuity or maintenance fee payment and information pertaining to a scope of protection provided by said intellectual property document; in response to said due date, communicating an alert to a first designated client system over a first communication network, wherein said alert includes said due date and allows said recipient to view said information and indicate whether said annuity or said maintenance fee should be paid; receiving, over said first communication network, a payment instruction from said first designated client system regarding payment of said annuity or said maintenance fee; storing said instruction in a database; and communicating said instruction to a second designated client system by a second communication network.
22. The method of claim 21 wherein said intellectual property document is a patent document.
23. The method of claim 22 wherein said information comprises one or more of a summary of an invention or a patent claim.
24. The method of claim 22 wherein said first and second communication networks are each one or more of the Internet, a local area network, a wide area network, a wireless network, an intranet or a virtual private network.
25. The method of claim 24 wherein said first and second communication networks are each the Internet.
26. The method of claim 22 wherein said second designated client system is associated with an annuity payment service.
27. The method of claim 26 wherein said payment instruction is communicated to said second designated client system with a plurality of payment instractions in a batch process.
28. A computer-implemented method of allowing payment of an annuity or maintenance fee associated with a patent document, said method comprising: storing, on a computer readable medium accessible to a server system, patent information related to said patent document, said patent information including one or more of a patent claim and a summary of said patent document; generating, from said server system, a notice of a due date for said annuity or said maintenance fee; communicating said notice to a client system via a Web page, wherein said Web page allows said client system to system to view said information and indicate whether said annuity or said maintenance fee should be paid.
29. The method of claim 28 wherein said patent information includes a complete copy of a patent application, a filing date of said application and, if any exist, previous payment instractions for said annuity or said maintenance fee.
30. The method of claim 29 wherein said patent information further includes payment information for annuity or maintenance fees for related patent documents or foreign counterpart patent documents.
31. The method of claim 29 further comprising receiving at said server system an instruction from said client system to initiate payment of said maintenance fee or said annuity payment.
32. The method of claim 31 further comprising generating a confmnation alert confirming payment of said maintenance fee or said annuity payment and communicating said confirmation alert to said client system.
33. The method of claim 31 further comprising communicating a payment instruction to a third party maintenance fee/annuity fee payment service for payment of said annuity of maintenance fee when said client system indicates said fee should be paid.
34. The method of claim 28 wherein said communicating step comprises communicating a plurality of notices associated with a corresponding plurality of patent applications to said client system via said Web page, wherein said Web page allows said client system to system to view said information for each of said plurality of patent applications and indicate whether an annuity or maintenance fee associated with each of said patent applications should be paid.
35. The method of claim 34 wherein said information for a selected patent application is viewable on said Web page by selecting a link associated with said selected patent application.
36. The method of claim 28 wherein said Web page allows said client system to select whether a decision to pay said aimuity or maintenance fee payment: pay, do not pay or decide at a later time.
37. The method of claim 28 wherein said client system can select to receive a cost estimate on payment of said annuity or maintenance fee that includes the cost of paying future annuity or maintenance fees that will come due for said patent application.
38. A computer-implemented method of allowing payment of an annuity or maintenance fee associated with a patent document, said method comprising: storing, on a computer readable medium accessible to a server system, patent information related to said patent document, said patent information including one or more of a patent claim and a summary section; generating, from said server system, a notice of a due date for said annuity or said maintenance fee; communicating said notice to a first designated client system via a Web page, wherein said Web page allows said client system to system to view said information and indicate whether said amiuity or said maintenance fee should be paid; receiving a payment instruction from said client system regarding payment of said annuity or said maintenance fee; storing said payment instruction in a database; and communicating said payment instruction to a second designated client system over a communication network.
39. The method of claim 38 wherein said second designated client system is an annuity payment service.
40. The method of claim 39 wherein said payment instruction is communicated to said annuity payment service over the Internet.
41. The method of claim 40 wherein said payment instruction is communicated with a plurality of payment instructions that designated for delivery to said annuity payment service in a batch process.
42. The method of claim 39 wherein said second designated client system pays said annuity or maintenance fee and thereafter, communicates confirmation of said payment to said server system.
43. A method of allowing payment of an annuity or maintenance fee associated with a patent application, said method comprising: storing, on a computer readable medium accessible to a server system, data and documents associated with a particular patent application, wherein said data and documents are organized in a case data unit; generating, from said server system, a notice of a due date for said annuity or said maintenance fee; communicating said notice to a first designated client system via a Web page, wherein said Web page (i) allows said client system to system to access said case data umt to view said data and documents and (ii) allows said client system to indicate whether said annuity or said maintenance fee should be paid; receiving a payment instruction from said client system regarding payment of said annuity or said maintenance fee; storing said payment instruction in a database; and communicating said payment instruction to a second designated client system over a communication network.
44. The method of claim 43 wherein said case data unit comprises meta- data associated with said patent document, said meta-data comprising one or more of an application number, a filing date, a list of inventors and a file number.
45. The method of claim 44 wherein said documents comprise one or more of an invention disclosure document, attorney notes, inventor notes, an originally filed patent application, a response to an office action, an information disclosure statements, a petition, a granted patent stored in an image file format; an office action stored in an image file format.
46. A method of allowing an employee associated with either a technology developer or a law firm to pay, from a first client system capable of being connected to a public network, an annuity or maintenance fee for a patent document assigned to said technology developer, said method comprising: connecting said client system to a server system through a public network; receiving, at said client system, a notice of a due date for payment of said annuity or said maintenance fee, wherein said notice (i) is part of a Web page that is generated by said server system and viewable on said client system through a browser executing on said client system, (ii) allows said client system to view data and documents associated with said patent document that are stored on a computer-readable memory coupled to said server system and (iii) allows said client system to indicate whether said annuity or said maintenance fee should be paid; generating a payment instruction from said client system regarding payment of said annuity or said maintenance fee; and communicating said payment instruction to said server system over the public network.
47. The method of claim 46 wherein said public network is the Internet.
48. The method of claim 47 wherein said data comprises meta-data associated with said patent document, said meta-data comprising one or more of an application number, a filing date, a list of inventors and a technology developer reference number.
49. The method of claim 48 wherein said documents comprise one or more of an invention disclosure document, attorney notes, inventor notes, an originally filed patent application, a response to an office action, an information disclosure statements, a petition, a granted patent stored in an image file format and an office action stored in an image file format.
50. A method of allowing an employee associated with either a technology developer or a law firm to pay, from a first client system capable of being connected to a public network, an annuity or maintenance fee for a patent document assigned to said technology developer, said method comprising storing, on a computer readable medium accessible to a server system, data and documents associated with a particular patent application, wherein said data and documents are organized in a case data unit; generating, from said server system, a notice of a due date for said annuity or said maintenance fee; communicating said notice to a first designated client system via a Web page over a public network, wherein said Web page (i) allows said client system to system to access said case data unit to view said data and documents and (ii) allows said client system to indicate whether said annuity or said maintenance fee should be paid; receiving a payment instruction from said client system over the public network regarding payment of said annuity or said maintenance fee; and storing said payment instruction in a database coupled to said server system.
51. The method of claim 50 wherein said public network is the Internet.
52. The method of claim 51 wherein said payment instruction is communicated to a second designated client system over the Internet and wherein said annuity or said maintenance fee is paid by said second designated client system.
53. The method of claim 51 wherein said case data unit comprises meta- data associated with said patent document, said meta-data comprising one or more of an application number, a filing date, a list of inventors and a file number.
54. The method of claim 53 wherein said documents comprise one or more of an invention disclosure document, attorney notes, inventor notes, an originally filed patent application, a response to an office action, an information disclosure statements, a petition, a granted patent stored in an image file format and an office action stored in an image file format.
55. A server system that facilitates payment of annuity and/or maintenance fee payments associated with patent documents, said server system comprising: (a) a processor; (b) a database; and (c) a computer-readable memory for storing a computer program; wherein said processor is operative with said computer program to: store, in said database, patent information related to a patent document, said patent information including one or more of a patent claim and a summary section; generate a notice of a due date of a annuity or maintenance fee associated with said patent document; and communicate said notice to a client system via a Web page, wherein said Web page allows said client system to system to view said information and indicate whether said annuity or said maintenance fee should be paid.
56. A networked system comprising: (a) a communication network; (b) a client system coupled to the communication network, said client system comprising a processor and a display; (c) a server system coupled to the communication network, said server system comprising a processor, a database, and a memory for storing a computer program; wherein said processor is operative with said computer program to: store, in said database, patent information related to a patent document, said patent information including one or more of a patent claim and a summary section; generate a notice of a due date of a annuity or maintenance fee associated with said patent application; and communicate said notice to said client system via a Web page, wherein said Web page allows said client system to system to view said information and indicate whether said annuity or said maintenance fee should be paid.
PCT/US2001/044733 2000-11-27 2001-11-27 Intellectual property case docketing and management system WO2002043306A2 (en)

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US25336000P true 2000-11-27 2000-11-27
US60/253,360 2000-11-27
US30923701P true 2001-07-31 2001-07-31
US30919901P true 2001-07-31 2001-07-31
US60/309,199 2001-07-31
US60/309,237 2001-07-31

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AU3051902A AU3051902A (en) 2000-11-27 2001-11-20 Docketing system
AU2002230519A AU2002230519A1 (en) 2000-11-27 2001-11-27 Intellectual property case docketing and management system

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US20100223557A1 (en) * 2009-02-28 2010-09-02 Adam Kenney Method and system for workflow integration
US20130117179A1 (en) * 2009-02-28 2013-05-09 Thomson Reuters (Scientific) Inc. Methods and Systems for Ad Hoc Intellectual Property Annuity/Maintenance Payments
US20130262326A1 (en) * 2009-02-28 2013-10-03 Thomson Reuters (Scientific) Inc. Intellectual Property Annuity/Maintenance Payment and Mistaken Abandonment Prevention Systems
US20120284200A1 (en) * 2011-05-06 2012-11-08 Brad Pedersen System for computerized management of patent-related information
US20130085950A1 (en) * 2011-10-03 2013-04-04 Andre L. Marais Purpose oriented patent portfolio management
US8560367B2 (en) 2012-02-09 2013-10-15 Mercury Holdings Llc Computer-implemented cloud-based litigation management system
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AU2002230519A1 (en) 2002-06-03
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