Embodiments are generally related to the field of computers and similar technologies and, in particular, to software utilized in this field. Embodiments are additionally related to SaaS (Software as a Service) and computer networks and cloud computing applications. Embodiments are also related to intellectual property docketing methods and systems, including those that are capable of docketing/tracking patent and trademark matters filed with the U.S. Patent & Trademark Office and other intellectual property agencies, such as, for example, the European Patent Office.
Docketing systems have historically included a calendar and a pencil as components. A lawyer or paralegal or secretary, acting as a docketer, identified a docket event in writing, on an appropriate date designation of the calendar. The docketer typically included reminder notes on the calendar in advance of a docket event. Docket events included dates such as a due date or a bar date or a court date.
The calendar and pencil have largely been supplanted or replaced by software that functions as an electronic calendar. The software includes a library of events that are typically the objects of a docket. The library also includes rules associated with the events. To use the software, a docketer identifies a particular matter, selects an event from the library and enters a significant date into the software. The significant date is one that the docketer desires to associate with the date, for the matter. The docketer enters data by using a keyboard and transferring information from a document to the software. The software activates rules associated with the event to generate significant docket dates. Some docketing software products automatically generate reminder dates in conjunction with the significant docket date. Docketers generate reports using the software. The reports provide a summary of docket dates and events associated with the dates for selected matters.
Docketers typically employ the calendar and pencil as a backup docket system, even though the docketers use the software as a primary system. The dual use insures that important docket dates are not lost.
In practicing intellectual property law, practitioners are often confronted, in each case, with meeting a bewildering number of due dates, many of which are critical. These myriad due dates are prescribed by Title 15 of the United States Code (for trademark matters), Title 17 of the United States Code (for copyright matters), and Title 35 of the United States Code (for patent matters). Additional deadlines are imposed by the Code of Federal Regulations (e.g., Title 37 of the Code of Federal Regulations which applies to patent and trademark matters), the Federal Rules of Civil Procedure, and various published Court rules. Yet other deadlines are imposed by clients or by corporate business objectives.
Each patent or trademark application handled by an attorney, for example, requires the docketing and meeting of one or more deadlines. For example, a typical utility patent application may impose a dozen or more time deadlines on a practitioner over the course of its prosecution. While some due dates may merely be reminders to take some action, others are critical deadlines (i.e., prescribed by statute) and failure to timely act prior to these so-called “statutory bar dates” may result in the loss of valuable intellectual property rights or in a legal malpractice claim against the practitioner.
Typical actions, which may be docketed and performed by a practitioner in evaluating an invention for patentability, preparing, filing and prosecuting a utility patent application, or in tracking actions anticipated to be taken by the Patent Office, are as follows: Conduct novelty search on invention Prepare patentability opinion File patent application before one year statutory bar (sale, public use or publication) Receive acknowledgment postcard from USPTO Receive official filing receipt and foreign filing license Send Rule 56 Duty of Disclosure letter to inventor(s) File Information Disclosure Statement Respond to First Office Action Send foreign filing letter to client Foreign file before deadline to receive priority filing date Respond to Second Office Action File Notice of Appeal File Appeal Brief File formal drawings Pay Issue Fee Pay Maintenance Fee(s)
A similar number of actions are tracked and docketed for trademark matters, and a lesser number of actions (i.e., renewals) are tracked for copyrights. Similar actions are also tracked for foreign matters (patent and trademark applications filed in foreign countries), and in inter partes proceedings (e.g., trademark oppositions and cancellation proceedings). It is clear, then, that even a relatively small law firm or company handling a portfolio of just a few hundred cases can easily be confronted with tracking and docketing tens of thousands of due dates for actions to be taken, either by the practitioner or the Patent Office. Large firms or companies may be faced with docketing more than a hundred thousand dues dates and actions.
In earlier times, patent and trademark attorneys relied on manual docketing systems, which involved complicated manual ledger, and/or tickler systems for tracking actions to be taken and deadlines to be met. These systems required constant attention and vigilance, highly trained docketing clerks and administrators, and direct supervision by attorneys. Often, the systems included redundancy to ensure that dates were not missed, which redundancy provided added protection at the expense of efficiency. Obviously, any manual system cannot be operated flawlessly. All humans make mistakes. Moreover, the opportunity for error increases as the number of files being maintained increases. Despite well-documented procedures, cross-checking and vigilance, all manual systems are susceptible to failure. They are especially problematic when employees leave, and new employees are forced to learn the system.
Commercially available IP docketing software products enable users to keep track of actions and due dates associated therewith. Some automatically calculate certain due dates for actions to be taken or annuities, maintenance fees, taxes, or other fees to be paid. Some also are preprogrammed with the laws and rules of multiple countries. All commercially available products provide “docket reports” detailing (usually in chronological order) actions required to be taken by a responsible attorney. Often, these reports are compiled and printed on a periodic basis (e.g., weekly) and distributed to responsible attorneys. In a well-designed system, a docket administrator or managing attorney will also receive a “master” docket report, to monitor all critical due dates.
A number of software products for docketing matters are known. For, example, U.S. Pat. No. 7,369,701, which is incorporated herein by reference and entitled “Automated Docketing System” describes a method for docketing an action or event, such as an action or event defined in a form received from the United States Patent and Trademark Office. The method includes scanning the form having written information thereon, the written information comprising a date and indicia defining a docket event, to obtain a scanned image. The indicia on the form defining a docketing event includes a title such as, “Office Action,” “Notice of Allowance,” “Notice of Missing Parts” and so forth. The date on the form includes, in many embodiments, “Date Mailed.” The method also includes processing the scanned image with character recognition logic and identifying the indicia defining the docket event or action and the date on the image. One of the problems with the approach disclosed in U.S. Pat. No. 7,369, 701 is a lack of easy accessibility and user-friendly features, particularly to small law firms and solo-practitioners.
Another docketing system is disclosed in U.S. Pat. No. 6,549,894, entitled “Computer Docketing System for Intellectual Property Law With Automatic Due Date Alert” and which is incorporated herein by reference. The approach described in U.S. Pat. No. 6,549,894 generally includes a computerized docketing system for legal matters, comprising a database operatively arranged to store information related to the legal matters, including actions to be taken with respect to the legal matters, and due dates associated with the actions to be taken, an arithmetic logic unit operatively arranged to scan the database, compare each of the due dates with a reference date, and classify the due dates according to proximity of each of the due dates to the reference date, and, means for displaying different classifications of the due dates in different colors for the purpose of alerting a user of the system of matters requiring attention. Such a system, while offering certain advantages as a standalone package, cannot be easily adapted to a cloud-based computing system and must be operated internally from an organization server rather than being capable of offering via a cloud-based Internet and/or (SaaS) application.
The following summary is provided to facilitate an understanding of some of the innovative features unique to the present invention and is not intended to be a full description. A full appreciation of the various aspects of the embodiments disclosed herein can be gained by taking the entire specification, claims, drawings, and abstract as a whole.
It is, therefore, one aspect of the disclosed embodiments to provide for an improved legal and intellectual property docketing and management method and system.
It is another aspect of the disclosed embodiments to provide for an improved intellectual property docketing and management method and system accessible via a computer network such as the Internet.
It is a further aspect of the disclosed embodiments to provide for a “cloud based” computing intellectual property docketing and management method and system having family tree generation features and capabilities thereof.
It is another aspect of the disclosed embodiments to provide for a SaaS (Software as a Service) intellectual property docketing and management method and system.
The aforementioned aspects and other objectives and advantages can now be achieved as described herein. A docketing and management method and system is disclosed, which generally includes a network server associated with a docketing module and a database for storing docket matters. The network server can be accessed over a data network via at least one remote client to enter, update and review via the docketing module, the status of docket matters sorted and stored in the database by the docketing module by at least a client name, a client docket number, an activity and a target date for completion of the activity. Additionally, a client matter status can be automatically delivered at predetermined intervals via network automated and electronic delivery from the network server to one or more remote clients via the docketing module.
The docketing module is preferably offered as a SaaS (Software as a Service), component, which is a model of software deployment whereby a provider licenses an application to customers for use as a service on demand. SaaS software vendors may host the application on their own web servers or upload the application to the consumer device, disabling it after use or after the on-demand contract expires. The on-demand function may be handled internally to share licenses within a firm or by a third-party application service provider (ASP) sharing licenses between firms.
In accordance with another embodiment, a secure identification (e.g. password, username, etc) can be established with a family of the docket matters stored in the database; and an authorized party provided with secure and remote access to the family of docket matters based on the secure identification. The secure identification can be entered via the at least one remote client and the remote access is preferably read-only. Additionally, the remote access to the family of the docket matters can include access to scanned images of documents comprising a file wrapper associated with at least one of the docket matters.
In another embodiment, access to one or more active forms associated with a government agency responsible for intellectual property matters can be provided to a user, wherein such form(s) are accessible from the network server via the docketing module.
In still another embodiment access can be provided for a user to one or more active forms associated with a government agency responsible for intellectual property matters. The active form(s) are accessible from the network server via the docketing module. Such active form(s) can be populated with identifying information from a particular docket matter among the docket matters after association of the active form(s) with the particular docket matter.
In yet another embodiment, a family tree can be generated, wherein such a family tree is associated with a family of docket matters. For example, in such a situation, a “family” of docket matters may include a parent patent application followed by several “child” applications such as a first continuation patent application, a second continuation application, a CIP based on the first continuation patent application and so forth. Such a family tree can be generated and then displayed for a user via a display such as display screen of a computer workstation, laptop computer, Smartphone, and so forth. Docket matters can include, for example, patent related docket matters and the aforementioned family tree can be rendered based on docketing matter filing dates and continuation status and other data such as issue dates, titles, filing information, bar dates, due dates, priority dates and so forth.
In some embodiments, the aforementioned authorized party can be a client of a law firm and the remote access to the family of docket matters cab be provided to the client of the law firm via a website associated with the law firm and/or hosted/sponsored by the law firm or an appropriate website hosted by an Internet Service Provider (ISP) on behalf of the law firm.
In another embodiment, the docketing module can receive at least one e-mail message regarding case status from a government agency, identify a docket matter from the at least one e-mail message based on at least one of a serial number or docket number, and automatically update the docket matter with the case status, the docket matter among the docket matters.
In yet another embodiment, the docketing module can automatically retrieve one or more electronic documents from the government agency based on the case status provided by the at least one e-mail message and store the electronic document(s) in a database in association with the docket matter. The docketing module can be configured to identify one or more legal representatives (e.g., patent attorneys, patent agents, paralegals, etc) responsible for the docket matter and automatically e-mail the case status to the legal representative. The docketing module can be configured to identify one or more legal representative responsible for the docket matter and automatically e-mail the case status to the legal representative(s) along with the electronic document(s) retrieved from the government agency. Additionally, the docketing module can be configured to receive e-mail messages regarding case status from a government agency, identify a docket matter from the e-mail message based on a serial number or a docket number, and identify a responsible legal representative to be notified regarding the case status and then automatically update the docket matter with the case status.
In another embodiment, a law firm client can be authorized to upload to the network server via the docketing module, one or more documents associated with one or more docket matters, wherein the docket matter (s) is associated with the law firm client. The preauthorized law firm client can also be provided with secure access an electronic invention disclosure form via the docketing module from the law firm website using a secure identification code. The preauthorized law firm client can be authorized via the docketing module to enter information regarding a new invention into the electronic invention disclosure form. A new docket number can be automatically assigned to the electronic invention disclosure form when the electronic invention disclosure form is saved in the database via the docketing module.
In yet another embodiment, authorized law firm personnel can be permitted, via the docketing module, to upload and save an electronic document to the database, wherein the electronic document is associated with at least one docket matter among the aforementioned docket matters.
In still another embodiment, the docketing module can be configured to track the time of law firm personnel associated with work on a docket matter or a group of docket matters. In yet another embodiment, the docketing module can be configured to generate a total amount of time spent on one or more docket matters at predetermined date(s) and time(s). The docketing module can then designate such time as constituting billable time or non-billable time. An invoice can be then automatically generated and sent to a client of the law firm based on the billable time.
The accompanying figures, in which like reference numerals refer to identical or functionally-similar elements throughout the separate views and which are incorporated in and form a part of the specification, further illustrate the present invention and, together with the detailed description of the invention, serve to explain the principles of the present invention.
The particular values and configurations discussed in these non-limiting examples can be varied and are cited merely to illustrate at least one embodiment and are not intended to limit the scope of such embodiments.
As depicted in
The interface 153, which is preferably a graphical user interface (GUI), also serves to display results, whereupon the user may supply additional inputs or terminate a given session. In one possible embodiment, operating system 151 and interface 153 can be implemented in the context of a “Windows” system. It can be appreciated, of course, that other types of systems are possible. For example, rather than a traditional “Windows” system, other operation systems such as, for example, Linux may also be employed with respect to operating system 151 and interface 153. Application module 152 can include computer program code comprising instructions executable by a processor (e.g., processor 101 of
In the depicted example, server 304 and server 306 connect to network 302 along with storage unit 308. In addition, clients 310, 312, and 314 connect to network 302. These clients 310, 312, and 314 may be, for example, personal computers or network computers. Data-processing system 100 depicted in
In the depicted example, server 304 provides data such as boot files, operating system images, and applications to clients 310, 312, and 314. Clients 310, 312, and 314 are clients to server 304 in this example. Network data processing system 300 may include additional servers, clients, and other devices not shown. Specifically, clients may connect to any member of a network of servers which provide equivalent content.
In the depicted example, system 300 can be the well-known Internet with network 302 representing a worldwide collection of networks and gateways that use the Transmission Control Protocol/Internet Protocol (TCP/IP) suite of protocols to communicate with one another. At the heart of the Internet, for example, is a backbone of high-speed data communication lines between major nodes or host computers, consisting of thousands of commercial, government, educational, and other computer systems that route data and messages. Of course, system 300 also may be implemented as a number of different types of networks such as, for example, an intranet, a local area network (LAN), a wireless network, a wide area network (WAN), and so forth. Note that
The disclosed description is presented with respect to embodiments of the present invention, which can be embodied in the context of a data-processing system such as data-processing system 100 and computer software system 150 depicted respectively
Server 304 and server 306 and other servers (not shown) can be configured to act as redundant servers. That is, servers 304 and 306 (and other servers) can communicate with one another via the “cloud” or network 302 (e.g., see the Internet cloud 302 shown in
Embodiments herein sometimes refer to the use of or more “modules” in the context of a data-processing system, data network, database and/or remote clients such as those depicted in
Thus, for example, embodiments herein utilize a docketing module. Such a docketing module is a software module can be implemented as computer software for use in scheduling and managing legal matters, and in particular, intellectual property legal matters, such as patent, trademark and copyright matters. The docketing module discussed herein can function as matter management or case management software, although generally the term docketing software refers to intellectual property software applications. The disclosed docketing module can manage aspects of the intellectual property (IP) assets of a business organization, including patents, trademarks, licenses and royalties.
Browser 501 is a software application for retrieving, presenting, and traversing information resources on the World Wide Web. An information resource is identified by a Uniform Resource Identifier (URI) and may be a web page, image, video, or other pieces of content. Hyperlinks present in resources enable users to easily navigate browser 501 to related resources. Although browsers are primarily intended to access the World Wide Web, browser 501 can also be used to access information provided by Web servers in private networks or files in file systems. Browser 501 can also be configured for use to for saving information resources to file systems.
As indicated earlier the “Internet cloud” or network 302 generally communicates with one or more servers, such as, for example, server 304 and 306 illustrated herein with respect to
While the present invention has been particularly shown and described with reference to a preferred embodiment, it will be understood by those skilled in the art that various changes in form and detail may be made therein without departing from the spirit and scope of the invention. Furthermore, as used in the specification and the appended claims, the term “computer” or “system” or “computer system” or “computing device” includes any data processing system including, but not limited to, personal computers, servers, workstations, network computers, main frame computers, routers, switches, Personal Digital Assistants (PDA's), telephones, and any other system capable of processing, transmitting, receiving, capturing and/or storing data.
It will be appreciated that variations of the above-disclosed and other features and functions, or alternatives thereof, may be desirably combined into many other different systems or applications. Also, that various presently unforeseen or unanticipated alternatives, modifications, variations or improvements therein may be subsequently made by those skilled in the art which are also intended to be encompassed by the following claims.
This nonprovisional patent application claims the benefit under 35 U.S.C. § 119(e) of U.S. Provisional Patent Application Ser. No. 61/308,507 filed on Feb. 26, 2010, entitled “Cloud-Based Intellectual Property and Legal Docketing System and Method with Data Management Modules,” which is hereby incorporated by reference in its entirety.
| Number | Date | Country | |
|---|---|---|---|
| 61308507 | Feb 2010 | US |