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Best Practices for a Comprehensive Post-Allowance Review

When a Notice of Allowance (NOA) is received by the Applicant, it means that a patent application will no longer be reviewed by the examiner and it is entitled to the patent under the law. In other words, an application is about to be issued after the prosecution phase.

However, the NOA may have errors or data missing, failing to correct them at this critical stage may impact the quality and the enforceability of the patent. Depending on the severity of the issue, an RCE may need to be filed to make necessary corrections or even defer or withdraw patent from being issued by filing a petition. Once the patent is issued the chances of correcting these errors get drastically reduced.

Once the NOA has been issued by the patent office, an applicant will have three months to pay the issue fee during which the application should be reviewed thoroughly to ensure correct.

Collating a series of checkpoints at the NOA stage with reference to various critical fields in the Image File Wrapper (IFW) before paying the issue fee, is very important.

best-practices-for-a-comprehensive-post-allowance-review

Here are a few critical sections that should be examined as a part of a post-allowance review:

  • Inventorship details
  • Cited art review
  • Application review

1. Inventorship details

The accuracy of the following matters should be checked

  • Inventor’s name (Spelling and initials)
  • Title of the patent
  • Filing date
  • Small or large entity status of the applicant

2. Cited art review

Any uncited references should be checked whether they should have been included in the application. A reference check at the post-allowance stage should include:

  • Determine if all family and related cases have been identified and cross-cited
    Identify all the related dockets and verify if all the references is cross-cited among the dockets in the family.
  • Determine if the examiner signed off/reviewed all cited art
    All IDS and 1449 from PAIR is downloaded to check if the examiner has completely reviewed the cited art or if there are any strikethroughs.
  • Determine if any uncited art is required for submission under 37 C.F.R. 1.97(D)
    Determine if the art is from a foreign OA for the corresponding docket and if it is within the purview of 37 C.F.R. 1.97(D).

3. Application review

Statutory restrictions and amendments should be reviewed including

  • Identify discrepancies
    Discrepancies in priority information, ADS, specification, filing receipt, and PAIR should be verified.
  • Determine if there were any restriction requirements
    With the help of IFW the requirement of restriction, response to restriction, detailed action, and restricted claims are checked.
  • Determine if any examiner amendments are included in the NOA
    Examiner amendment to claims should be verified with the latest claim document.
  • Determine if there are any notice to file corrected papers pending
    PAIR data should be reviewed to determine if ‘Notice to File Corrected Application Papers’ was received with or after the NOA.
  • Determine if there are any notices requiring inventor’s oath/declaration pending
    incomplete or missing middle names, transposition of names, spelling mistakes in ADS and Filing Receipt against Oath/Declaration should be verified.

Along with the above mentioned checks, there are also other portions which needs to be examined to to keep the issued patent error-free.

MaxVal provides such services to review the applications that are in allowance and provide a comprehensive report.
Please drop us a line at bd@maxval.com for a post-grant review or for a free template of NOA review checklist.

 

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MaxVal’s Litigation Databank Now Includes PTAB Search and Alerts*

MaxVal’s Litigation Databank contains a comprehensive database of over 71,000 cases from the U.S. District Courts, the Court of Appeals, the Supreme Court and the ITC.  Litigation Databank subscribers can search cases, produce reports on cases and parties, set watches and download case related documents.

Existing and new Litigation Databank subscribers registered before Jan 31, 2016, can access USPTO Patent Trial and Appeal Board (PTAB) cases at no extra cost.

PTAB cases cover AIA post-grant, interference and interpartes reviews. Within Litigation Databank, users can search PTAB court proceedings, see details about the case, see the final decision and purchase case related documents.

Here is a short video demonstration of Litigation Databank


The Litigation Databank is available from MaxVal through a low priced subscription. It is a SaaS application with no software to install. The API connection is through SSL.

The Litigation Databank helps patent attorneys every day as they prepare for litigation and monitor the progress of their cases through the courts.  With the Litigation Databank, you can:

  • Proactively monitor and query whether patents of interest have been litigated.
  • Gain analytical insights on plaintiffs, defendants, filing trends, courts, etc.
  • Stay updated with patent litigation alerts.
  • Query and analyze over 20 litigation fields including patents, products, plaintiff, defendant, court, judge, law firm and case outcome.
  • Minimize PACER expenses.

Litigation API

An API (Application Programming Interface) service is available for the Litigation Databank. The API allows your patent databases/tools to interface with our database and populate litigation data based on your specific requirements.

PTAB Alert

MaxVal also offers a PTAB Alerting Service.  PTAB Alerts are an e-mail notification of changes to cases you are following.  *Please contact us with your custom request for an estimate.

Contact MaxVal today for more information at bd@maxval.com.


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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.