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Tips from Experts: For Better IDS Management

 

Tips from Experts - For Better IDS Management

Eliminate Unnecessary Cost:

1. Review the materiality to the patentability of existing claims: It is important to review the reference for materiality to the patentability of existing claims by the attorneys/applicant before the submission. Also, perform a good prior-art or pre-filing search to identify all the relevant references and cite them, which can avoid RCE fee at the notice of allowance stage.

2. File the IDS within the first three months: An IDS can be filed at no extra cost within 3 months from the filing date of a national/original application (other than a continued prosecution application) or before the receipt of the first OA. This also helps examiner to review the application in relevance to the IDS filed.

3. Check the publication/priority date of the references against the priority date of the application: In some cases, the applicant/attorneys may fail to check on the publication date of the references against the priority date of the application which leads to unnecessary attorney review time and cost. To avoid such situation, it is advised to check the publication/priority date of the reference against the earliest filing date of the application.

4. Avoid filing foreign counterparts as references: Sometimes, the applicant/attorneys would want to be on a safer side with all the references and file foreign counterparts of the corresponding US as a reference. It is recommended to avoid such practice of filing foreign counterparts as references of the same family as it is an unnecessary cost/effort.

5. Cite references from other jurisdictions: It is recommended to file Prior arts from other jurisdictions within 3 months (after you became aware of it) with USPTO and there is no fee involved if it is filed within three All the more, it is advisable to cite it within a month to avoid any PTA delays.

Avoid Redundant Effort:

6. References for continuity applications: By default, the examiner will consider information which has been considered by the Office in a parent application when examining a,

  • continuation application filed under 37 CFR 1.53
  • divisional application filed under 37 CFR 1.53 or
  • continuation-in-part application filed under 37 CFR 1.53

You may need to cite them again only if you/your attorney need them to be displayed on the face of the patent.

7. Need to check for any new reference on a frequent basis (monthly review) to avoid RCE at the allowance stage: In general, if the IDSes are filed after the issue fee is paid; the examiner will consider it only if RCE is filed. This not only implicates extra fee, but also procrastinates the prosecution.

Keep it Clean and Relevant:

8. It is important to check and remove cumulative publications: It is advisable to remove cumulative (corresponding publication in a different jurisdiction) publications of already cited art especially while reviewing the case during allowance (Issue Fee Review – Checklist which shall be explained in the next post). This process of checking and removing cumulative references may result in clean IDS and can avoid RCE at the NOA stage.

9. The significance of preparing a matrix of references cited/submitted in related/co-pending applications: The duty of disclosure relates to submitting to the PTO all information known to the applicant, that an examiner would consider important while examining the given application. Especially the references cited in all related (genealogical and/or subject matter) applications. Also, preparing a reference matrix for a family of applications (even in Excel) could help in not missing any reference.

Accelerate the Examination:

10. The Quick Path Information Disclosure Statement (QPIDS) pilot program: It is a part of the USPTO’s on-going efforts towards compact prosecution and pendency reduction. The advantage of the USPTO’s QPIDS pilot program is to file IDS without an RCE post making the issue fee payment. This expedites the examination process and also the RCE fee gets refunded if the examiner notices that the references are not convincing enough for reopening prosecution.

MaxVal offers Max-IDS, a stand-alone software product, an easy to use, integrated, and customizable environment for legal operations to collaboratively manage patent references and generate IDS with a few clicks. Clients can also avail MaxVal’s migration and data upkeep services.

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Deploy Patent Prosecution Analytics to Accelerate the Product Development Cycle: A Comparative Case Study

Patent prosecution analytics can provide valuable insight into the performance of an organization’s IP operations just as other forms of analytics help in reducing cost, in making better decisions and in creating new products and services. Technology companies who are actively filing patents can achieve cost savings and faster times to grant through prosecution analytics. I will illustrate what I mean by looking at two leading technology companies with different prosecution performance – Cisco and Juniper Network.

The patent prosecution analytics can illustrate areas for improvement, how a company compares with direct and indirect competitors, patent prosecution trends, and areas the company is performing well.

There are multiple ways to measure how well an organization’s patent prosecution processes perform. MaxVal and its clients have had good success with these methods:

  • Prosecution Success Score – The number of issued cases divided by the number of abandoned cases in a given year.
  • Application Abandonment before an Office Action
  • Rate of Issued Cases with 2 or more RCEs
  • Average Pendency

To illustrate these methods and the insight they can provide, MaxVal took a look at Cisco Systems and Juniper Networks, two competitors within the Computer Communications Equipment Industry. MaxVal used publicly available data for its analysis.

Patent Prosecution Score

A Prosecution Success Score is simply the number of issued cases divided by the number of abandoned cases in a given year. The higher the score, the better it is for the company. Higher prosecution success scores can be attributed to more efficient prosecution methods, a better invention disclosure screening process, and possibly fighting harder to get patent issuance.

Prosecution Success Score
Year Cisco Juniper
2013 12.3 15.6
2014 5.9 16.1
2015 5.9 47.8

While we see Cisco and Juniper had comparable Success Scores in 2013, Juniper has continued to improve their Success Score while Cisco’s Success Score has dramatically declined. Cisco is still getting patents issued at a high rate but many more applications are being abandoned. It would be useful for Cisco to further investigate and see what the reasons for these patent application abandonment are.

Rate of Abandonment Prior to an Office Action

Another telling metric would be the rate of abandoned cases prior to receiving an Office Action. If a case is abandoned prior to receiving even a single Office Action, then it is likely that the case should not have been filed in the first place or the company did not fight hard enough for the case. An option to reduce the number of abandonment prior to an OA would be to invest in pre-filing searches to become aware of the prior art.

Rate of Abandonment Prior to an Office Action
Year Cisco Juniper
2013 1.6% 9.1%
2014 4.2% 50%
2015 5.8% 40%

Cisco seems to have a very low rate of abandonment prior to an OA while Juniper’s rate in 2014 and 2015 seems rather high. However, Juniper only abandoned 14 and 5 cases, respectively, in 2014 and 2015 so the sample size is too small to make a proper assessment of their rate.

Rate of Issuance with 2+ RCEs

The next metric to look at is the number of issued cases prior to filing a Request for Continued Examination (RCE). A high rate in this metric is a strong indicator of inefficient prosecution methods (broader claims among other things). Since the application was ultimately issued, it can be inferred that it was inefficient prosecution by the practitioner that led to a number of RCEs prior to issuance.

Rate of Issuance with 2+ RCEs
Year Cisco Juniper
2013 3.3% 12.2%
2014 6.0% 6.6%
2015 4.0% 5.4%

Both Cisco and Juniper seem to have pretty good rates in this metric suggesting that their patent practitioners use efficient prosecution methods. While Juniper’s rate in 2013 was on the higher end of the spectrum, there has been a noticeable decrease in their rate.

The final metric to look at today is the average pendency between a first OA and issuance. While looking at the pendency from filing to issuance is a normal metric to look at, it doesn’t give the best insight to prosecution methods. Much of the time from filing to first OA is a result of the patent office delays in working on the application. So, a better indicator of an applicant’s prosecution methods is to look at the time from the first OA to issuance. A higher pendency can be attributed to receiving more OAs, taking longer to respond to OAs, and filing RCEs.

Average Pendency from OA to Issuance

Average Pendency from OA to Issuance
Cisco Juniper
Overall 13 months 18 months

As evidenced by the table above, Cisco seems to be getting their applications issued, on average, 5 months quicker than Juniper. Juniper should look closer at factors that can be attributed to this increase in pendency.

Overall Cisco and Juniper seem to employ reasonably efficient patent prosecution practitioners and methods. They both have high issuance rates and low abandonment rates. Cisco’s low abandonment prior to OA rate indicates a good invention disclosure screening process. And the low rate of issuance with 2+ RCEs indicates efficient patent prosecution methods.

These metrics, and others, illuminate a company’s patent prosecution process strengths and weaknesses. It allows companies to see how their competition is faring and what areas they need to improve.

By Bharath Venkat, MaxVal


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MaxVal’s Max-IDS: New Features Make It Easier Than Ever For Your Team To Manage Information Disclosures

Max-IDS is MaxVal’s cloud-based, hosted, Information Disclosure/Reference Management solution.  Max-IDS is much more than a form generator.  Max-IDS stores your references in a centralized database together with information about the cases citing each reference. This promotes consistency, reduces confusion and makes ad-hoc solutions (such as individual spreadsheets) unnecessary.

MaxVal is constantly looking for ways to improve Max-IDS.  Based on user feedback, we have recently added the following enhancements to Max-IDS:

  • Reference source comments
  • Reference comparison chart enhancement
  • Case and Group functionality

Reference Source Comments

Max-IDS helps you keep your references organized.  Reference “Source Comments” are tags users can assign to their references. For example, relevant tags may include “search result”, “PTO” or “Inventor”.   Source Comments make references easier to find and sort, and communicate the source of the references.  MaxVal has just added the following new source related functionality:

  • “Additional Source Comments” – Your Max-IDS administrator can now define tags specifically for your organization, and add new tags at any time.
  • “Copy Source Comments from One Case to Another” – Users can compare cases, copy and append source comments from one case to another.

We have also added a handy “Reference Extractor”.  Users can import references directly from the Max-IDS PDF viewer. This eliminates the time consuming and error-prone process of OCR-ing documents to extract references. The Reference Extractor complements the existing Max-IDS bulk import tools.

Max-IDS Reference Extractor

 

Reference Chart Enhancements

Reference Charts are one of Max-IDS’ most powerful features.  Reference Charts show all references shared between a set of documents, and show which documents cite the reference.  This makes inconsistencies immediately visible.  This is extremely valuable when working with foreign filings and patent families.

The Status of each application is now visible in the Comparison Chart.   For example “Abandon”, “Filed Pending”, “Pending Published”, “Allowed” or “Issued”.

Max-IDS Reference Comparison Chart

 

Case and Group Functionality Enhancements

In addition to tracking references, Max-IDS tracks the cases that use the references.  These cases contain the patent applications, granted patents and related foreign family filings.  Cases can be grouped to enable outside counsel can see just their cases.  MaxVal has just released these enhancements to the Case and Group features:

  • “Search within a Case Group” – A new feature is the ability to search for references within a group of cases. This makes it easy for outside counsel to find the references for their cases.
  • “Group List Asset Count Report” – Clicking on the Export option in the List View will now download the group list along with the asset count for each group into an Excel spreadsheet.  Users can also export all the IDS records from a search result in a single instance.

Finally, we have improved security by enhancing the password security policy.

Support and Managed Services

Of course, MaxVal continues to provide Live Support to Max-IDS users and administrators.

Max-IDS is a cloud-based hosted software product.  Users and administrators access Max-IDS through a browser based interface.  MaxVal provides support and training for Max-IDS administrators.  MaxVal also offers Max-IDS as a fully managed service.  We can configure, maintain and administer your Max-IDS server for you.

If you would like more information on these new features, or you would like to see a Max-IDS demonstration, please contact us at bd@maxval.com.

Max-Insight Dashboard


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MaxVal’s Max-Insight: Popular Toolset for Patent Professionals Gets Better

Max-Insight is a suite of tools that is offered by MaxVal for patent professionals.  The tools are designed to help with routine tasks that can consume a lot of a patent professional’s time.

Patent Term Estimator – The Most Popular Tool

This free tool automatically estimates a patent’s expiration date, which is the first step in analyzing a patent. When a highly accurate patent expiration date is required, for example in preparation for litigation or for a licensing negotiation, MaxVal provides a comprehensive Patent Term Calculation report, including a manual review of the source data by a paralegal.  This report is available for a fee.

Max-Insight

Here is a complete list of the tools available through MaxVal’s Max-Insight:

  • PAIR AlertTM
  • Patent Term Estimator
  • Patent Family Tree
  • Claim Chart Generator
  • IDS Generator (for Information Disclosure Statements)
  • USPTO Widget (for patent data lookup by publication or application number)
  • Claims Set Comparison Tool
  • PAIR Uploader (upload EFS ready documents in bulk to PAIR)
  • Litigation Checker (quickly check to see if a patent has been involved in any litigation)
  • Patent Assignment Tracker

An entry level subscription to the Max-Insight suite is available for free at MaxVal.com.  Unlimited access is available with Enterprise paid subscriptions.

MaxVal has recently released a number of enhancements to the tool suite.  This includes,

  • SSL security protection. All transactions are now protected with a Secure Sockets Layer.
  • IDS Generator E-Mail. The IDS Generator now delivers results directly to the user via e-mail.
  • Claim Chart Generator. The Claims Chart Generator can now extract claims from EP and PCT cases, in addition to U.S. cases.
  • Litigation Checker tool. Users can now check the litigation status of Design patents and Re-issued patents, in addition to Utility patents.

Enhancements to MaxVal’s Alert Services

In addition to Max-Insight, IP professionals rely on MaxVal’s Alert Services to keep them up to date on their own or competitors’ applications and cases.

MaxVal has recently released its PTAB Alert Service. You can track the progress of PTAB cases automatically.

MaxVal’s Litigation Databank contains a comprehensive database of U.S. District Court, CAFC, ITC and Supreme Court cases.  You can set “watches” to alert you of changes to the status of cases of interest to you and your clients.

PAIR Alert  – An email-based alert assists patent professionals in tracking PAIR/EPO patent prosecution status and IFW updates for patent applications of interest (your/competitors’).  PAIR Alert is now available as part of Max-Insight.
Coming Soon: Self-service PTA Calculator

MaxVal will soon release an enhanced Patent Term Adjustment calculator.  This new tool supports attorneys and paralegals who wish to do the (PTA) recalculations themselves, but want assistance in gathering the required data.

MaxVal welcomes user feedback and suggestions on the tools.  We are continuing to develop the tools in response to user input.  If you have not tried Max-Insight, we suggest you do.  The basic tools are available at no cost with free registration.  Sign up here.


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Transparency is Critical in a Patent Annuity Payment Service

MaxVal Annuity Payer was launched in 2014 with the goal of providing complete transparency on annuity payment fees, as well as simplified workflow and excellent service.

Pricing transparency is an important issue for customers. Things get complicated when negotiated fees are combined with currency exchange and foreign agent fees. Misunderstandings over fee amounts can easily occur. These misunderstandings can spill over into the courts.

MaxVal Annuity Payer provides comprehensive status updates and pricing transparency on all renewals, using a simple, easy to use web portal.

MaxVal’s simple and transparent flat fee structure (which is highly competitive) aims to take the uncertainty out of budgeting for annuity cost. The flat service fee eliminates the need to keep track of the foreign agent fees, exchange fees, etc., which can substantially add to the total annuity cost.

Proper annuity payment management is critical to any patent operation. Maintaining even a medium sized international patent portfolio can be expensive. MaxVal’s Annuity Payer has helped its customers to simplify their workflow and achieve transparency and cost savings to their annuity management.

Annuity Payer is available as a service administered by MaxVal, or as a SaaS software application and eCommerce style interface that can be used directly by IP Operations staff. Please contact MaxVal more information.