US20130086080A1

US20130086080A1 - System and method for information disclosure statement management and prior art cross-citation control

Info

Publication number: US20130086080A1
Application number: US13/253,931
Authority: US
Inventors: Steven W. Lundberg
Original assignee: Individual
Current assignee: Black Hills IP Holdings LLC
Priority date: 2011-10-03
Filing date: 2011-10-05
Publication date: 2013-04-04
Also published as: US20150066842A1; US8892547B2; US20150169777A1; US20130086042A1; US20170075929A1; US20250335515A1; US10860657B2; US20140379388A1; US20130086044A1; US20160154863A1; US20130086050A1; US9201966B2; US12380171B2; US9652546B2; US20150347604A1; US20130086070A1; US20150149368A1; US8972385B2; US10671574B2; US20130086045A1

Abstract

The present inventive subject matter relates to document management, more particularly to a system and method for information disclosure statement management and prior art cross-citation control. Various embodiments of the present inventive subject matter include systems and methods for controlling the cross-citation and propagation of prior art reference documents from one patent case to another. Some embodiments may include propagation control user interfaces which display to a user sets of patent cases as potential source documents of prior art. In some embodiments, characteristics of the prior art may be identified and used as the basis for selecting and controlling the cross-citation of prior art.

Description

RELATED APPLICATIONS

This application claims the benefit under 35 U.S.C. 119(e) of U.S. Provisional Patent Application Ser. No. 61/542,515 filed Oct. 3, 2011, which is incorporated herein by reference in its entirety and made a part hereof.

FIELD OF THE INVENTIVE SUBJECT MATTER

The present inventive subject matter relates to document management, more particularly to a system and method for information disclosure statement management and prior art cross-citation control.

BACKGROUND

Under the laws and regulations of various patenting authorities, patent applicants are required to disclose various documents known to the applicant to be relevant to the patentability of the patent application. These documents come to the attention of applicants in many ways such as from a foreign patenting authority. In such cases, the applicant may be required to disclose such a document to another patenting authority where the same application is pending or in all cases where related applications are pending. Under such scenarios, determining which authorities and for which applications the document must be disclosed is generally a very time consuming process. Further, determining which patenting authorities the document must be disclosed to can be also be a difficult, time-consuming process due not only to a relevancy determination, but also to varying standards for required disclosures under the laws and regulations of the various patenting authorities. Workloads and prosecution wait times at some patenting authorities have increased dramatically and unregulated and confusing cross-citation of prior art between related cases does not help this situation.

BRIEF DESCRIPTION OF THE DRAWINGS

FIG. 1 shows a system according to one embodiment of the present inventive subject matter.

FIG. 2 shows a system according to one embodiment of the present inventive subject matter.

FIG. 3 shows a method according to one embodiment of the present inventive subject matter.

FIG. 4 shows a method according to one embodiment of the present inventive subject matter.

FIG. 5 shows a user interface according to one embodiment of the present inventive subject matter.

DETAILED DESCRIPTION

In the following detailed description, reference is made to the accompanying drawings that form a part hereof, and in which are shown by way of illustration specific embodiments in which the inventive subject matter can be practiced. It is understood that other embodiments may be utilized and structural changes may be made without departing from the scope of the present invention.
The leading digit(s) of reference numbers appearing in the Figures generally corresponds to the Figure number in which that component is first introduced, such that the same reference number is used throughout to refer to an identical component which appears in multiple Figures. Signals and connections may be referred to by the same reference number or label, and the actual meaning will be clear from its use in the context of the description.
System Embodiments. FIG. 1 shows a system 100 according one embodiment of the present inventive subject matter. This embodiment includes a processor 102, a memory 104, software 106, and a database 108 in the memory 104.
In some embodiments, the system 100 is a personal computer. In other embodiments, the system is a server accessible over a network but client computers. In yet further embodiments, the system 100 is a cluster of servers and other computing and storage devices in a datacenter providing computing, storage, and other resources over a network.
In some embodiments, the processor of 102 of the system 100 represents a central processing unit of any type of architecture, such as a CISC (Complex Instruction Set Computing), RISC (Reduced Instruction Set Computing), VLIW (Very Long Instruction Word), or hybrid architecture, although any appropriate processor may be used. The processor 102 executes instructions. The processor 102 also includes a control unit that organizes data and program storage in memory 104 and transfers data and other information in and out of the system 100 and to and from other resources such as a network and other networked devices.
The memory 104 represents one or more mechanisms for storing data. For example, in some embodiments, the memory 104 includes read only memory (ROM), random access memory (RAM), magnetic disk storage media, optical storage media, flash memory devices, and/or other machine-readable media. In other embodiments, any appropriate type of storage device may be used. Although only one memory 104 is shown, multiple memories and storage devices and multiple types of storage devices may be present. In various embodiments, some or all of the software 108, or other items shown as stored within the memory 104 may be stored on the same or on different memory or storage devices. Furthermore, although the system 100 is shown to contain the memory 104, it may be distributed across other computing devices, such as other computing devices attached a network.
In some embodiments, the software 108 is operable on the processor 102 to maintain a patent application case database in the memory 104.
In some such embodiments, the patent application database includes data about each case. In various embodiments, for each patent application, or patent issued therefrom, the data includes some or all of an application number, a patent number, a priority date, inventory name(s), inventor address(es), assignee name(s), an indicator for associated applications, reference documents, text of a pending or issued claim set, and various other types of data pertinent to a pending patent application or issued patent.
In some embodiments, the electronic representations of the reference documents are included in the database. The prior art reference documents are typically sourced through search and examination of a pending patent application at a patenting authority. The reference documents may also be sourced through private novelty searches or through knowledge of the inventor or assignee, or in any other way. In one such embodiment, the reference documents are stored as Portable Document Format (PDF) files. Such PDF files can be created using Adobe Acrobat which is available from Adobe System Incorporated of San Jose, Calif.
In various embodiments, associated applications include continuing applications, divisional applications, and applications of closely related or otherwise associated subject matter.
In some embodiments, the system 100 includes a user interface 110 which allows a user of the system 100 to regulate and control the cross-citation of reference documents between a first case and set of related cases based on selected cross-citation characteristics of the reference documents. The user interface 110 is described in more detail below with reference to FIG. 5.
In some further embodiments, the software 108 is further operable to receive a reference document into the database and associate the document with a first case. The software is further operable to identify a set of patent cases related to the first case as potential propagation target cases for cross-citation of the reference document and display to a user the identity of the set of target patent cases. The software is further operable to receive user input identifying and selecting one or more cross-citation characteristics of the reference document and associate the reference document with one or more of the potential target cases based on the selection of the one or more cross-citation characteristics.
In some embodiments, a user interface 110 is provided in which the set of target cases may be displayed. The user interface may, in example embodiments, be provided with one or more propagation selection options which may be selected by a user to regulate the manner in which a reference document is propagated to be cross-cited in another case or set of patent cases. In further example embodiments, at least one propagation selection option is provided for each of the target patent cases in the set and, in other example embodiments, for each of the reference documents identified for propagation to other patent cases. The propagation options may be related to the cross-citation characteristics of the reference documents. The cross-citation characteristics may be selected from a group including: comparison of a priority date of the reference document and a priority date of a target case; the score from a keyword analysis on the reference document based on occurrences of the keywords in the reference document to derive a score; the reference document source; the ground of rejection on which the reference document was cited by a patenting authority; the degree of relation between the first case and set of target cases; any instances of prior cross-citation of the reference document to other patent cases or sets of patent cases; and a priority date in relation to an electronic representation of a statutory or regulatory rule. It may occur that a given reference document is propagated downstream to be cross-cited in first, second and even third sets of target cases. This downstream propagation from a source to a target case may be assessed in terms of the number of “hops” or “levels” taken by a reference document to flow from a source to a target and this assessment of the number of hops may form the basis of a cross-citation characteristic, more particularly the characteristic mentioned just above relating to prior instances of cross-citation. In an example embodiment, the user interface may display the citation pathway for each reference document i.e. where it started and what cases it flowed through to be cross-cited against one or more target cases.
In some embodiments, selection of a propagation option, alone or in combination with others, may specify whether the reference document is to be cited to a patenting authority in the first case. In other example embodiments, selection of a propagation option, alone or in combination with others, may specify whether the reference document is to be associated with any related patent cases in the first set. In other example embodiments, the software may be operable to effect this association automatically.
Some embodiments may include marking the specified reference document for inclusion in a disclosure statement to a patenting authority based on its association with a related patent case.
The identification of a set of patent cases related to the first case may be made on any basis, and this identification may be performed manually or automatically. In some example embodiments, the identification of a set of patent cases related to the first case is based on the identification of a common priority claim present in the first case and the set. In other example embodiments, the identification of a set of patent cases related to the first case is based on common subject matter present in the first case and the set. In yet other example embodiments, the identification of a set of patent cases related to the first case may be based on common inventor or assignee present in the first case and the set.
The description above relates to example embodiments in which a target set of patent cases is identified and displayed to a user. The following description relates to embodiments in which source set of patent cases is identified and displayed to a user.
In some example embodiments, the software 108 may be operable to maintain a patent case database, wherein the database includes data about each case. The software may be further operable to receive reference documents into the database and identify a first case in the database as a target case for potential propagation and cross-citation to it of at least one reference document. The software may be further operable to identify a first set of patent cases related to the first case as potential source cases of the at least one reference document and display to a user the identity of the potential source cases and the at least one reference document. The software may be further operable to receive user input identifying and selecting one or more cross-citation characteristics of the at least one reference document and associate the at least one reference document with the first case based on the selection by the user of the one or more cross-citation characteristics. In an example embodiment, the user interface may display the citation pathway for each reference document i.e. where it started and what cases it flowed through to be cross-cited against the target case.
In other example embodiments, the software may be operable to display to a user a second set of related cases as target cases for potential further cross-citation of the at least one reference document sourced from the first set. The software may be further operable to provide in a user interface 110 a display of both the first source set and the second target set of patent cases in the interface.
In further embodiments the software may be operable to conduct any one or more of the method steps described in FIGS. 3 and 4 below.
In yet further embodiments, the software is further operable on the processor to derive keywords from a pending claim set for the first case, and perform a keyword analysis on the reference document based on occurrences of the keywords in the reference document to derive a score. In yet further embodiments, the software 108 is operable on the processor 102 to associate the reference document with application related to the first application based on the score and mark the reference document for inclusion in a disclosure statement to a patenting authority based on the score, such as a Form 1449 for submission with an Information Disclosure Statement (IDS) to the United States Patent and Trademark Office.
In some embodiments, the keyword analysis includes extracting keywords from a pending claim set located in the database for a pending application. In some such embodiments, the keywords in the pending claim set are automatically extracted from the claim set. One such embodiment operates by removing commonly used words, such as “A”, “the”, “of”, etc., or word types such as prepositions, verbs, nouns, etc., and performing the keyword search on a reference document using the remaining words. Other embodiments use the entire claim set. Yet further embodiments extract certain word types, such as gerund or verb, for use in the keyword search.
A keyword search is then performed by the software 108 to derive a score for the reference document in comparison to the patent application. This score, in some embodiments, is based on the occurrence(s) of the keywords from the pending claim set in the reference document. The higher the score, the more relevant the reference document is to the patent application. Or a reverse model can be used where points are subtracted based on the non-occurrence of keywords. These are mere exemplary models for keyword scoring. Other models will be readily apparent to one implementing such a system 100. The score is then used to determine if the reference document should be provided in a disclosure statement to a patenting authority. If the score meets a certain criteria, the document is marked in the database for disclosure.
Some further embodiments take into account further reference document data such as a priority date of the document, the author of the reference document, and/or the entity owning the subject matter of the reference document. Further information, in various embodiments, includes number of patent applications the reference document was cited against, a number of times the reference document has been cited in other patent applications, reference document source. Such information is useful for many purposes.
Such information for the reference documents, referred to in this specification as cross-citation characteristics, represented electronically, is useful in various embodiments to provide even more relevant scoring for reference documents. For example, if the patent application has a priority date prior to the priority date of the reference document, the document may not need to be disclosed to the patenting authority. Thus, despite the results of a keywords search, the document would not be marked for disclosure. Further, these types of data can be used to improved the efficiency of the system 100 by eliminating unnecessary processing of disclosure documents by looking to the priority dates of the disclosure document prior to doing a keyword analysis. If the document would not be disclosed because the reference document has a subsequent priority date, the keyword analysis processing would be eliminated. Another characteristic can be defined to flag references associated with a patent application that can be sworn behind (i.e., sworn behind using a 37 CFR 1.131 affidavit for submission to the United States Patent and Trademark Office). Further characteristics can be defined in the system 100 for reference documents based on one or more data elements of reference documents in relation to other data in the patent application database.
FIG. 2 shows a system 200 according one embodiment of the present inventive subject matter. In some embodiments, the system 200 includes a server 202 having a processor 204, a memory 206, a network interface 210, and software 208 that is operable on the processor 204. Some embodiments include a database 216 operatively coupled 218 to the network 214. Further, server 202 is operatively coupled 212 to a network 214 and the network 214, in some embodiments, is also operatively coupled 224 to a second network 226.
In some embodiments, the database 216 is a relational database managed by a relational database management system (RDBMS) such as Microsoft SQLServer available from Microsoft Corporation of Redmond, Wash. In other embodiments, the database is one or more flat-files arranged in a manner suitable for holding data relevant to the specific implementation. In some embodiments, the database 216 includes electronic representations of disclosure documents. In other embodiments, the database 216 includes reference to a location on the network 214 where an electronic representation of the reference document is located.
In various embodiments, the network 214 is a local area network (LAN), a wide area network (WAN), a hybrid LAN/WAN network, or other similar type or combination of two or more network types. In some such embodiments the network 214 communication technology includes a wired network, such as a 100 base-T Ethernet network, a wireless network such as an I.E.E.E. standard 802.11 a/b/g network, or other similar type or combination of wired and wireless technologies. In some embodiments, a client 222 is operatively coupled 220 to the network 214. In some such embodiments, the client 222 can access information from the server 202 over the network 214.
In some embodiments, the second network 226 is the Internet. In some embodiments, a client 230 operatively coupled 228 to the second network 226 can access information from the server 202 over the second network 226.
In some embodiments, user interfaces 110 having any one or more of the features described in this specification may be operatively coupled to the server 202, and/or the client 222, and/or the client 230.
Method Embodiments. Some embodiments of the present inventive subject matter include methods for electronic management of reference documents for a universe of patent applications and patents issued therefrom. One such embodiment is illustrated in FIG. 3. In some embodiments, the method 300 includes maintaining a patent case database 302, receiving a reference document into the database 304, and associating the document with a first case 306. Some further embodiments of the method 300 include identifying a set of patent cases related to the first case as potential propagation target cases for cross-citation of the reference document 308. Some further embodiments include displaying to a user the identity of the set of target patent cases 310. Yet further embodiments include receiving user input identifying and selecting one or more cross-citation characteristics of the reference document 312. Further embodiments include associating the reference document with one or more of the potential target cases based on the selection of the one or more cross-citation characteristics 314.
Further method embodiments may comprise providing a user interface and displaying the set of target patent cases in the user interface. The user interface may be provided with at least one propagation selection option for the reference document, the at least one propagation option relating to at least one of the cross-citation characteristics of the reference document. In some further embodiments, the method may further comprise providing at least one propagation option for each of the target patent cases in the set.
In some embodiments, at least one of cross-citation characteristics of the reference document is selected from a group including comparison of a priority date of the reference document and a priority date of a target case; the score from a keyword analysis on the reference document based on occurrences of the keywords in the reference document to derive a score; the reference document source; the ground of rejection on which the reference document was cited by a patenting authority; the degree of relation between the first case and set of target cases; any instances of prior cross-citation of the reference document to other patent cases or sets of patent cases; and a priority date in relation to an electronic representation of a statutory or regulatory rule.
In some further embodiments, selection of the at least one propagation option, alone or in combination, may specify whether the reference document is to be cited to a patenting authority in the first case. In yet further embodiments, selection of the at least one propagation option, alone or in combination, may specify whether the reference document is to be associated with any related patent cases in the first set. Further embodiments may include marking the specified reference document for inclusion in a disclosure statement to a patenting authority based on its association with a related patent case in the first set.
In some further embodiments, the identification of a set of patent cases related to the first case is based on a common priority claim present in the first case and the set. In yet further embodiments, the identification of a set of patent cases related to the first case is based on common subject matter present in the first case and the set. In further embodiments, the identification of a set of patent cases related to the first case is based on common inventor or assignee present in the first case and the set.
In a further embodiment, the method may include displaying in the user interface the citation pathway for each reference document i.e. where it started and what cases it flowed through to be cross-cited against one or more target cases.
A further method embodiment of the inventive subject matter is illustrated in FIG. 4. In some embodiments, the method 400 includes maintaining a patent case database 402 wherein the database includes data about each case, receiving reference documents into the database 404; identifying a first case in the database as a target case for potential propagation and cross-citation to it of at least one reference document 406. In some embodiments, the method includes identifying a first set of patent cases related to the first case as potential source cases of the at least one reference document 408. In some further embodiments, the method includes displaying to a user the identity of the potential source cases and the at least one reference document 410. In yet further embodiments, the method includes receiving user input identifying and selecting one or more cross-citation characteristics of the at least one reference document 412. In some embodiments, the method includes associating the at least one reference document with the first case based on the selection of the one or more cross-citation characteristics 414.
In some embodiments, the method may further comprise displaying to a user a second set of related cases as target cases for potential further cross-citation of the at least one reference document sourced from the first set. In yet further embodiments, a user interface may be provided for displaying both the first source set and the second target set of patent cases in the interface. In further method embodiments, the user interface may be provided with at least one propagation selection option for the at least one reference document, the at least one propagation option relating to at least one of the cross-citation characteristics of the reference document. In some embodiments, the propagation selection options may be selected from a group including comparison of a priority date of the at least one reference document and a priority date of a target case; the score from a keyword analysis on the at least one reference document based on occurrences of the keywords in the reference document to derive a score; the at least one reference document source; the ground of rejection on which the at least one reference document was cited by a patenting authority; the degree of relation between the first case and a set of cases; any instances of prior cross-citation of the at least one reference document to other patent cases or sets of patent cases; and a priority date in relation to an electronic representation of a statutory or regulatory rule.
Any one or more of the above method embodiments may include displaying in the user interface the citation pathway for each reference document i.e. where it started and what cases it flowed through to be cross-cited against one or more target cases.
User interface. FIG. 5 illustrates an example user interface that may be utilized to facilitate the methods described for electronic management of reference documents for a universe of patent applications and patents issued therefrom, according to an example embodiment. The user interface may be provided in the form of a viewable screen or “control panel” in a computer monitor or portable electronic device, such as a smart phone or PDA.
Displayed in the user interface is the title 502 of a patent portfolio in which a first patent case 504 may be listed. The identity of the first patent case may be displayed in window 504 and may be identified manually by a user, or automatically by software 108/208 operating on the systems 100/200 through application of one or more criteria.
The portfolio 502 or first patent case 504 may be associated with a matter number, such as shown at 506. One or more reference documents associated with the first patent case may be displayed in window 508. In some embodiments, the reference documents are intended to be reviewed by a user (or automatically through software 108/208 operable on the systems 100/200) for potential propagation and cross-citation with target cases displayed in window 510. The target cases in window 510 may be related to the first case displayed in window 504. Typically, the identification of related cases will be on the basis of common priority claim (i.e. part of the same patent family), or common subject matter, or may be common inventor or assignee. In other embodiments, the set of cases may not be related at all and may simply be compiled on any desired basis. They are nevertheless referred to as “related” in this specification.
In other embodiments, a window 512 may be provided either separately or in addition to window 510. Displayed in window 512 may be a further or second set of patent cases which may be source cases of reference documents displayed for example in window 508 for potential propagation to the first case 504. References in this specification to the sets of patent cases displayed in windows 510 and 512 as “first” and “second” are interchangeable. The cases in window 512 may be “first” and vice versa for window 510.
In accordance with example embodiments, regulation and control of the propagation and cross-citation of reference documents may be achieved and rendered transparent by the various windows and, further, by controls provided in the user interface illustrated in FIG. 5. The controls may be provided in the form of one or more propagation selection options shown for example at windows 514. A user may select or click on any one or more of these selection options to regulate the manner in which reference documents are sourced from, for example, the set of cases appearing in window 512 or, in other examples, propagated to the first case appearing in window 504. The selection options 514 may also be used to control how reference documents appearing in window 508 are propagated to and cross-cited in any one or more patent cases in the set displayed in window 510. Many different options may be selected to regulate and control the propagation flow. The otherwise confusing propagation of reference documents that can be brought about by prior automated systems employing blind rules is avoided. The user interface provides transparency to a user of the cross-citation flow, and an opportunity to regulate or change the flow and cross-citation of reference documents in a simple manner.
It is understood that the above description is intended to be illustrative, and not restrictive. Many other embodiments will be apparent to those of skill in the art upon reviewing the above description. The scope of the inventive subject matter should, therefore, be determined with reference to the appended claims, along with the full scope of equivalents to which such claims are entitled.
The Abstract of the Disclosure is provided to comply with 37 C.F.R. §1.72(b), requiring an abstract that will allow the reader to quickly ascertain the nature of the technical disclosure. It is submitted with the understanding that it will not be used to interpret or limit the scope or meaning of the claims. In addition, in the foregoing Detailed Description, it can be seen that various features are grouped together in a single embodiment for the purpose of streamlining the disclosure. This method of disclosure is not to be interpreted as reflecting an intention that the claimed embodiments require more features than are expressly recited in each claim. Rather, as the following claims reflect, inventive subject matter lies in less than all features of a single disclosed embodiment. Thus the following claims are hereby incorporated into the Detailed Description, with each claim standing on its own as a separate embodiment.

Claims

I claim:

1. A method comprising:

maintaining a patent case database, wherein the database includes data about each case,

receiving reference documents into the database;

identifying a first case in the database as a target case for potential propagation and cross-citation to it of at least one reference document;

identifying a first set of patent cases related to the first case as potential source cases of the at least one reference document;

displaying to a user the identity of the potential source cases and the at least one reference document;

receiving user input identifying and selecting one or more cross-citation characteristics of the at least one reference document, and

associating the at least one reference document with the first case based on the selection of the one or more cross-citation characteristics.

2. The method of claim 1, further comprising displaying to a user a second set of related cases as target cases for potential further cross-citation of the at least one reference document sourced from the first set.

3. The method of claim 2, further comprising providing a user interface and displaying both the first source set and the second target set of patent cases in the interface.

4. The method of claim 3, further comprising providing the user interface with at least one propagation selection option for the at least one reference document, the at least one propagation option relating to at least one of the cross-citation characteristics of the reference document.

5. The method of claim 4, wherein the at least one propagation option is selected from a group including:

comparison of a priority date of the at least one reference document and a priority date of a target case;

the score from a keyword analysis on the at least one reference document based on occurrences of the keywords in the reference document to derive a score;

the at least one reference document source;

the ground of rejection on which the at least one reference document was cited by a patenting authority;

the degree of relation between the first case and a set of cases;

any instances of prior cross-citation of the at least one reference document to other patent cases or sets of patent cases; and

a priority date in relation to an electronic representation of a statutory or regulatory rule.

6. The method of claim 1, including displaying to the user the historic citation pathway of the at least one reference document prior to potential association with the first case.

7. The method of claim 1, including displaying to the user the citation pathway of the at least one reference document after association with the first case.

8. A system comprising:

a processor;

a memory;

software operable on the processor to:

maintain a patent case database, wherein the database includes data about each case,

receive reference documents into the database;

identify a first case in the database as a target case for potential propagation and cross-citation to it of at least one reference document;

identify a first set of patent cases related to the first case as potential source cases of the at least one reference document;

display to a user the identity of the potential source cases and the at least one reference document;

receive user input identifying and selecting one or more cross-citation characteristics of the at least one reference document, and

associate the at least one reference document with the first case based on the selection of the one or more cross-citation characteristics.