Embodiments relate generally to intellectual asset docketing and management. More particularly, some example embodiments relate to related art citation management.
A docketing system is utilized to schedule legal matters and manage aspects of intellectual property (IP) assets, where IP assets include, for example: patents, trade secrets, publications, trademarks, domain names, and copyrights. A patent management system, which may be part of an overall intellectual asset management (IAM) solution, may support docketing and potentially other related activities in the full lifecycle of patent assets, such as invention disclosure submission, multi-party collaboration, document and e-mail management, configurable business workflow rules, and business intelligence tools, among other features. A patent management system provides visibility and access to internal and external participants in the patent asset management process—for example, attorneys, agents and paralegals, researchers and engineers, portfolio managers, marketing, licensing professionals and other business managers.
challenge facing users of patent docketing and management systems is properly disclosing to a patent office any prior art or background information that may be relevant to the patentability of an invention in a patent application. Patent applicants and their corresponding patent practitioners often find it difficult to keep track of what related art has been cited for other patent applications within the same patent family, either by the applicant, the practitioner, or the patent office. Many countries, including the United States, require disclosure of potentially relevant art. For example, according to United States Code Title 35 and related sections of 37 CFR and the Manual of Patent Examining Procedure (MPEP), there is a duty on all patent applicants, their practitioners, and legal staff to disclose prior art or background information that may be relevant to patentability. An information disclosure statement (IDS) is a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by a patent applicant during the patent prosecution process. If a patent applicant is found to have knowingly or intentionally withheld prior art from the USPTO, then any patent that later issues from the patent application may be declared unenforceable. Because patent family members in other jurisdictions are often managed by different patent practitioners, central coordination and cross-referencing can be a time-consuming and error-prone process.
The subject matter claimed herein is not limited to embodiments that solve any disadvantages or that operate only in environments such as those described above. Rather, this background is only provided to illustrate one exemplary technology area where some embodiments described herein may be practiced.
Embodiments relate generally to intellectual asset docketing and management. More particularly, some example embodiments relate to related art citation management.
In one example embodiment, a method of automating related art citation generation is provided, wherein the method comprises reading a citation status of a related art reference for a patent document; generating a related art reference list document; and in response to the citation status of the related art reference having a first citation status value, inserting into the related art reference list document a related art citation, the related art citation comprising metadata for the related art reference. Additionally, the method may further comprise modifying the citation status to have a second citation status value after inserting the related art citation into the related art reference list document. The first citation status value denotes a need to cite the related art reference, and the second citation status value denotes citation of the related art reference. The method may further comprise detecting a user input, the user input triggering generation of the related art reference list document. Prior to generating the related art reference list document, a preview of the related art reference list document may be generated, wherein generating the preview preserves the first citation status value of the citation status.
In another example embodiment, a method of maintaining a citation status of a related art reference for a first patent document in a patent family is provided, the method comprising adding the related art reference to a first record in a patent docketing system; and setting the citation status to a first citation status value in response to adding the related art reference to the first record, wherein the first record pertains to one of the first patent document and a second patent document in the patent family. The method may further comprise determining a source of the related art reference and setting the citation status based upon, among other attributes, the source of the related art reference.
In an example embodiment, a docketing server comprising at least one memory device for storing one or more intellectual asset records and a controller operatively connected to the at least one memory device is provided. The docketing server controller presents a citation matrix for a first patent document in a patent family, wherein the citation matrix is presented as a table, the table comprising at least one row and at least one column. The controller further populates the table with at least one patent document identifier and at least one related art reference identifier, wherein at least one patent document identifier comprises an identifier of the first patent document; and the docketing server controller also displays a citation status for each combination of a patent document identifier of the at least one patent document identifier and a related art reference identifier of the at least one related art reference identifier, wherein the combination is denoted as an intersection of a row of the at least one row and a column of the at least one column. In another embodiment the at least one patent document identifier further comprises an identifier of a second patent document, wherein the second patent document is also a member of the patent family. The docketing server controller may also provide to a user of the docketing server an ability to input the citation status, with possible citation status values comprising one of “not yet considered”, “to be cited”, “cited”, “do not cite”, and “undecided” according to the user input.
This Summary is provided to introduce a selection of concepts in a simplified form that are further described below in the Detailed Description. This Summary is not intended to identify key features or essential characteristics of the claimed subject matter, nor is it intended to be used as an aid in determining the scope of the claimed subject matter.
Additional features and advantages of the invention will be set forth in the description, which follows, and in part will be obvious from the description, or may be learned by the practice of the invention. The features and advantages of the invention may be realized and obtained by means of the instruments and combinations particularly pointed out in the appended claims. These and other features of the present invention will become more fully apparent from the following description and appended claims, or may be learned by the practice of the invention as set forth hereinafter.
To further clarify the above and other advantages and features of the present invention, a more particular description of the invention will be rendered by reference to specific embodiments thereof which are illustrated in the appended drawings. It is appreciated that these drawings depict only embodiments of the invention and are therefore not to be considered limiting of its scope. The invention will be described and explained with additional specificity and detail through the use of the accompanying drawings in which:
Embodiments relate generally to intellectual asset docketing and management. More particularly, some example embodiments relate to related art citation management.
The docketing service may generally schedule legal matters and manage aspects of those legal matters. For example, an intellectual property docking service may support scheduling a disclosure submission and manage the related filing dates such as provisional application filing, non-provisional conversion dates, maintenance fees, and the like. The management and scheduling of these legal matters may be managed by a docketing server application (described below) which may include a set of templates, data, instructions, applications, computer programs, or some combination thereof. Alternatively or additionally, the docketing system 100 may provide a visible, accessible, user-interface to internal and/or external entities through which the legal matters are manually managed. Specifically, as described herein, the docketing service may include various docketing server applications that include one or more user interface objects, for instance, to enable the docketing user to manage related art citation.
The user device 110 in
Additionally, the user device 110 communicates with the docketing server 130 via the computer network 120. The computer network 120 relates to a collection of devices interconnected by communication channels that allows sharing of information among the interconnected devices. In this example embodiment, the computer network 120 may be or include any wired or wireless network technology such as optical fiber, electrical cables, Ethernet, radio waves, microwaves, an infrared transmission, wireless internet, communication satellites, cellular telephone signals, or an equivalent-networking signal that interfaces with devices to create a network. Specifically, in one embodiment, the user device 110 communicates with the docketing server 130 via the internet. In other embodiments, the user device 110 may be directly coupled with the docketing server 130 and/or may be integrated directly with, and be a part of, the docketing server 130.
In
In the embodiment illustrated in
As depicted in
The docketing server 130 can include a communication interface 136. The communication interface 136 enables the docketing server 130 to communicate with a user device via a computer network. For example, with combined reference to
Referring back to
Turning next to
In alternative embodiments, the files 205 and the IA records 200 may be stored separately. For example, the files 205 may be stored on a first memory device and the IA records 200 may be stored on a second memory device. In this and other example embodiments, the first memory device may be located in a docketing server such as the docking server 130 of
With respect to the embodiment illustrated in
Examples of the document 260 may include, but is not limited to, an archive, a record, a report, a paper, an article, a reference, a response, an action, a correspondence, a memorandum, an audio recording, a video recording, a photo, or a drawing. The document 260 is associated with the IA record 200 by being linked to the IA record 200. The link between the IA record 200 and the document 260 can be implemented through various techniques, which may include, storing in the IA record 200 a file path to the document 260, storing in the IA record 200 a database reference to the document 260, or the like. Additionally, the document 260 may be stored within the IA record 200 as illustrated in
The embodiment depicted in
Generally, the task 270 denotes an action for a specified docketing user to complete by a specified time. Some examples of the task 270 may include but are not limited to instructing outside counsel, attending meetings, etc. Like the document 260, the task 270 may be a plurality of tasks 270. That is, multiple tasks 270 may be, and commonly are, associated with the IA record 200.
The related art reference 290 provides metadata for a patent, a patent application, or non-patent literature that may be considered material to patentability. The metadata for the related art reference 290 may include a date, an author, a publication reference number, a country, a title, or some combination thereof. A plurality of related art references 290 may be associated with the IA record 200. Once a related art reference 290 is associated with the IA record 200, the related art reference 290 may be a document 260.
Also provided via the patent related art user interface object 300 is a set of existing related art reference associated metadata 334A and 334B (collectively, 334) for a patent asset (e.g. a patent or a patent application) denoted by an IA record 200. That is, for each related art reference 290 (
Additional user interface controls are provided in the patent related art user interface object 300. For example, the additional user interface controls may include a citation matrix button 320, a preview IDS button 330, and a generate IDS button 332.
The docketing user may select the citation matrix button 320 to open a citation matrix user interface object for viewing and maintaining the citation status 314 of each of the related art references 290 for each member of a patent family. Some additional details of the citation matrix user interface object are discussed with reference to
The docketing user may also select the preview IDS button 330 to prompt a docketing server 130 (
Additionally, the patent related art user interface object 300 may include a set of user interface controls 350 as illustrated in
Alternatively, the docketing user may select a browse button 358a to choose the identifier of the second IA record from a list of records in the patent docketing system 100. The docketing user may also add the related art reference 290 to the IA record 200 in the patent docketing system 100 by copying the related art reference 290 from a third IA record, the third IA record being one of a patent record and an invention record, in the patent docketing system 100 by entering an ID of the third IA record in a record ID text field 354b and selecting a copy button 360. Alternatively, the docketing user may select a browse button 358b to choose the ID of the third IA record from a list of records in the patent docketing system 100. The copy functionality may alternatively be provided in the reverse—that is, one or more related art references 290 of the IA record 200 may instead be copied to the third IA record.
While reference has been made to patent related art in
Referring now to
Not all citation status values 314A-314E are required, however, in some embodiments the citation status values “to be cited” and “cited” are utilized, as will be described in more detail with reference to
The citation status 314 may be represented in various forms, such as textually, graphically, numerically, etc. In
As in the patent related art user interface object 300, the citation matrix user interface object 500 presents related art reference metadata, including, for example, the related art reference identifier 306 and the related art reference source 312. The related art reference identifier 306 may include a country identifier and a patent document number, such as an issued patent number or a patent application publication number.
For example, in
The patent family may include for example, the first patent document, other patent documents filed in other jurisdictions than is the first patent document, and other patent documents originating from a same invention and/or an original priority patent document. For example, a first non-provisional US patent application, a US continuation patent application claiming priority to the first non-provisional US patent application, a Patent Cooperation Treaty (PCT) application claiming priority to the first non-provisional US patent application, and all national phase patent applications originating from the PCT application are all members of the same patent family. Each of the patent family members is identified in the citation matrix user interface object 500 by the patent document identifier 507. By providing the citation matrix 314 for all patent family members, multiple docketing users, each of whom may be managing a different one of the patent family members, can better manage related art citation management by having complete visibility into citation across the family. In this and other embodiments, each of the patent document identifier 507 is provided in a column in the citation matrix 502, and each of the related art reference identifier 306 is provided in a row in the citation matrix 502, though the row/column arrangement may be reversed and still provide the citation status 314 for each combination thereof. The patent document identifier 507 may include any type of appropriate identifier, including, but not limited to, the record identifier 210, an issued patent identifier, a patent application publication identifier, a patent application serial number, or an internal patent reference identifier. In the example provided in
The citation matrix user interface object 500 may also include a related art filter button 510 and a patent filter button 512. The docketing user may select the related art filter button 510 to have the docketing server 130 present a list of related art reference filtration options, each of which includes a checkbox, for which types of related art references to include or not include in the citation matrix 502. For example, the list of related art reference filtration type options may include US patents, US patent applications, non-US patent documents, non-patent literature documents, etc. Therefore, for example, selection of the US patent option may cause inclusion in the citation matrix 502 of related art references 290 that are US patents. De-selection of the non-patent literature documents option may hide within the citation matrix 502 any related art reference 290 that is non-patent literature. Selection of the patent filter button 512 causes the docketing server 132 present a list of patent record filtration options, each of which includes a checkbox, for which members of the patent family to include or not include in the citation matrix 502. For example, the list of patent record filtration options may comprise a list of all patent family members, and may additionally comprise US patent documents or other national patent documents. So, selection of only the patent document identifier 507 value of 81024887 in the example provided in
The docketing user may modify the citation status 314 by first selecting a citation status value from a citation status value selection area 508 and then selecting the intersection of the related art reference identifier 306 and the patent document identifier 507. Any modifications made by the docketing user can then be saved in the IA record 200 by the docketing server 130 when the docketing user selects a save button 514.
Referring back to
At 708, the controller determines whether the citation status 314 has a value of “to be cited”. If the citation status is “to be cited”, method 700 proceeds to 710. If however, the citation status is not “to be cited”, the method 700 proceeds to 714.
At 710, the controller 132 inserts into the related art reference list document 600 a related art citation 610. The related art citation 610 (
At 712, after inserting the related art citation 610 into the related art reference list document 600, the controller 132 modifies the citation status 314 to have a value of “cited”. In some embodiments, the controller 132 may additionally lock the citation status 314 to maintain the “cited” value, which may disallow further modification.
At 714, the controller 132 determines whether there are more related art references 290. If the controller 132 determines there are additionally related art references 290, the method 700 proceeds to 716. If however, the controller determines there are not any additional related art references 200, the method 700 proceeds to 730.
At 716, the controller selects the next related art reference 290. The method 700 then proceeds to 706 through 712 as described above. That is, as long as there are more related art references 290, the controller 132 selects each—next related art reference 290, proceeds to 716, and performs 706 through 712. By doing so, method 700 addresses the citation status of all related art references 290. Additionally, when the citation status 314 for the selected related art reference 290 does not have a value of “to be cited” at 708, the controller 132 does not perform steps 710 and 712, and proceeds to check for more related art references 290 at 714. When there are no more related art references, the method 700 proceeds to 730. The method 700 ends at 730.
Upon completion of all related art citation insertion, the controller 132 completes generation of the related reference list document 600. Refreshing the citation matrix 502 reflects the citation status 314 value modifications made as a result of generation of the related art reference list document 600.
The preview IDS button 330 from the patent related art user interface object 300 may also be included within the citation matrix user interface object 500, selection of which prompts the docketing server 132 provide a preview of the related art reference list document 600 (
At 804 the controller 132 of the docketing server 130 responds to the docketing user adding the related art reference 290 to a first IA record 200. In some embodiments, the first IA record 200 is either an invention record or a patent record. As described with reference to
Also as described with reference to
When the first IA record 200 is an invention record, the controller 132 defaults the related art reference source 312 to “internal”. If however, the first IA record 200 is a patent record, then if at 806 the controller 132 determines that the related art reference source 312 is “patent office”, then the controller 132 sets citation status 314 to have a value of “cited” at 808. The controller 132 then also sets the citation status 314 for each IA record 200 of patent family members to “to be cited” at 810.
At 812 the controller 132 generates the docket task 270 indicating to a user of the patent docketing system 100 a need to review the related art reference 290 for determining and setting a new status value for the citation status 314. The citation status maintenance process 800 ends at 830.
If at 806 the controller 132 determines that the related art reference source 312 is not “patent office”, then at 814 the controller 132 allows the docketing user to supply a value for the citation status 314, and at 816 the controller 132 also sets the citation status 314 for each IA record 200 of patent family members to “not yet considered” at 816.
At 818 the controller 132 generates the docket task 270 indicating to a user of the patent docketing system 100 a need to review the related art reference 290 for determining and setting a new status value for the citation status 314.
Depending on the desired configuration, processor 1004 may be of any type including but not limited to a microprocessor (μP), a microcontroller (μC), a digital signal processor (DSP), or any combination thereof. Processor 1004 may include one or more levels of caching, such as a level one cache 1010 and a level two cache 1012, a processor core 1014, and registers 1016. An example processor core 1014 may include an arithmetic logic unit (ALU), a floating point unit (FPU), a digital signal processing core (DSP Core), or any combination thereof. An example memory controller 1018 may also be used with processor 1004, or in some implementations, memory controller 1018 may be an internal part of processor 1004.
Depending on the desired configuration, system memory 1006 may be of any type including but not limited to volatile memory (such as RAM), non-volatile memory (such as ROM, flash memory, etc.) or any combination thereof. System memory 1006 may include an operating system 1020, one or more applications 1022, and program data 1024. Application 1022 may include a docketing server application 1026 that is arranged to relate patent related art to IA records 200. Program data 1024 may include IA records 1028 or some contents thereof that may be used for association of patent related art to IA records 200 as is described herein. In some embodiments, application 1022 may be arranged to operate with program data 1024 on operating system 1020 such that related art citation generation and or citation status maintenance may be performed on the computing device 1000. This described basic configuration 1002 is illustrated in
Computing device 1000 may have additional features or functionality, and additional interfaces to facilitate communications between basic configuration 1002 and any required devices and interfaces. For example, a bus/interface controller 1030 may be used to facilitate communications between basic configuration 1002 and one or more data storage devices 1032 via a storage interface bus 1034. Data storage devices 1032 may be removable storage devices 1036, non-removable storage devices 1038, or a combination thereof. Examples of removable storage and non-removable storage devices include magnetic disk devices such as flexible disk drives and hard-disk drives (HDD), optical disk drives such as compact disk (CD) drives or digital versatile disk (DVD) drives, solid state drives (SSD), and tape drives to name a few. Example computer storage media may include volatile and nonvolatile, removable and non-removable media implemented in any method or technology for storage of information, such as computer readable instructions, data structures, program modules, or other data.
System memory 1006, removable storage devices 1036, and non-removable storage devices 1038 are examples of computer storage media. Computer storage media includes, but is not limited to, RAM, ROM, EEPROM, flash memory or other memory technology, CD-ROM, digital versatile disks (DVD) or other optical storage, magnetic cassettes, magnetic tape, magnetic disk storage or other magnetic storage devices, or any other medium which may be used to store the desired information and which may be accessed by computing device 1000. Any such computer storage media may be part of computing device 1000.
Computing device 1000 may also include an interface bus 1040 for facilitating communication from various interface devices (e.g., output devices 1042, peripheral interfaces 1044, and communication devices 1046) to basic configuration 1002 via bus/interface controller 1030. Example output devices 1042 include a graphics processing unit 1048 and an audio processing unit 1050, which may be configured to communicate to various external devices such as a display or speakers via one or more A/V ports 1052. Example peripheral interfaces 1044 include a serial interface controller 1054 or a parallel interface controller 1056, which may be configured to communicate with external devices such as input devices (e.g., keyboard, mouse, pen, voice input device, touch input device, etc.) or other peripheral devices (e.g., printer, scanner, etc.) via one or more I/O ports 1058. An example communication device 1046 includes a network controller 1060, which may be arranged to facilitate communications with one or more other computing devices 1062 over a network communication link via one or more communication ports 1064.
The network communication link may be one example of a communication media. Communication media may typically be embodied by computer readable instructions, data structures, program modules, or other data in a modulated data signal, such as a carrier wave or other transport mechanism, and may include any information delivery media. A “modulated data signal” may be a signal that has one or more of its characteristics set or changed in such a manner as to encode information in the signal. By way of example, and not limitation, communication media may include wired media such as a wired network or direct-wired connection, and wireless media such as acoustic, radio frequency (RF), microwave, infrared (IR) and other wireless media. The term computer readable media as used herein may include both storage media and communication media.
Computing device 1000 may be implemented as a portion of a small-form factor portable (or mobile) electronic device such as a cell phone, a personal data assistant (PDA), a personal media player device, a wireless web-watch device, a personal headset device, an application specific device, or a hybrid device that include any of the above functions. Computing device 1000 may also be implemented as a personal computer including both laptop computer and non-laptop computer configurations.
The previously described versions of the present invention have many advantages, including providing a related art citation management solution which can be utilized to track and maintain proper related art reference citations as required with various patent offices through a citation matrix, automated citation status management, central coordination, and related art reference list document generation and preview. The present invention does not require that all the advantageous features and all the advantages need to be incorporated into every embodiment.
The present invention may be carried out in other specific ways than those herein set forth without departing from the scope of the invention. For example, user interface controls are described herein, such as “buttons”, but as will be appreciated by one having skill in the art, the user interface controls are presented as examples only, as such controls as buttons may alternatively be implemented and presented as links or dropdowns. The present embodiments are, therefore, to be considered in all respects as illustrative and not restrictive, and all changes coming within the meaning and equivalency range of the appended claims are intended to be embraced therein.
This application claims the benefit of and priority to U.S. Provisional Application No. 61/476,567, filed on Apr. 18, 2011 and U.S. Provisional Application No. 61/452,382, filed on Mar. 14, 2011 which are incorporated herein by reference.
Number | Date | Country | |
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61476567 | Apr 2011 | US | |
61452382 | Mar 2011 | US |