IDS Submission
Paper submission is not only expensive and sensitive to errors, it has a high risk for patent infringement. The E-filling system submission is clear. However, while acknowledgement is immediate, the Information Disclosure Statement (IDS) submission is manual, thus it ties up valuable resources.
According to the submission rules set forth by US patent law, “… [It] requires disclosure of all known prior art references that are material to the patent Examiner in determining patentability.” (37 C.F.R 1.56)
Submissions are either:
- Paper submission based on a USPTO-issued form
- Electronic submissions through the USPTO E-Filing web system
The USPTO paper submission process is done by personnel manually working through the submission process. This is an expensive process in terms of manpower and time. A more costly threat is potentially high human error, and the high risk of patent infringement. Only one case can be worked at any given moment. The time needed for case filing and submission results in low utilization of human resources. Human error is introduces during this. To make life a little more miserable, the submissions, being human dependent, can only be worked during business hours.
App4Reg solves the dilemma with its IIM Suite for electronic filing.
The App4Reg IIM Suite for IDS management addresses problems inherent to both the manual and the current electronic filing systems with three available products. While each product can work in a stand-alone environment, using the IIM suite in its entirety provides complete IP submission automation. Using the IIM Suite, patent applicants can significantly cut the submission time, reduce error, increase productivity, reduce cost, and increase contribution per IDS submission.
In-depth Manual Submission
IDS operation is characterized with a few, repetitive steps and actions:
- Scanning IDS items and insert into the docketing system.
- Generating the IDS (per patent application).
- Submitting the IDS to the USPTO (either paper-based or through the USPTO Electronic Filing System [EFS]).
- Issuing a Debit Note to the client for the IDS submission.
The above steps represent routine paralegal work. Most of the work requires an experienced paralegal that is familiar with the Patent Attorney docketing system, USPTO EFS and Patent Attorney Billing system. In addition, the actual time of submitting an IDS, even through the USPTO EFS, might take up to few hours for large IDSs. It is certainly no less than 15 minutes for a minimal size IDS.
Disadvantages of the manual work:
- Linear case management, working one case at a time
- Long time for case filling and submission
- Low utilization
- Human error sensitive
- Working during office hours only
Disadvantages result in:
- Unacceptably time to market with IDS submission
- Increased operational backlog
- Increased operational cost (human resources, equipment etc.)
- Lower contribution per IDS submission
- Increased risk for patent infringement due to IDS related errors that violates disclosure commitment
IIM Suite Solution
The IIM Suite handles the overall IDS paralegal work – from the actual submission process, through IDS validation between the docketing system and USPTO databases, to the IDS client billing by creating the Debit Note.
While each product can be installed as a stand-alone product, the suite is a Powerhouse.
Automatic USPTO IDS Uploader
The automatic USPTO IDS Uploader eliminates the manual work needed per IDS submission. After creating the template, the Uploader performs the entire workflow within the USPTO website. It finalizes the submission by saving and printing the EFS (receipt received from the USPTO) on the local PC and printer.
Advantages
- Automatic IDS case Uploading
- Full Uploading Solution, from folder analysis to receipt saving
- Automated “User”, no undetected activity within the website, no human error
- Advanced Error Handling
- Minimal installation time
- Minimal knowledge required for product operation
Automatic USPTO IDS Assurance
Vulnerability in the patent application lies in part within an incorrect IDS submission. Automatic USPTO IDS Assurance verifies that all relevant IDS items from your database are actually submitted to the USPTO. All omitted items are shown clearly, divided into categories – U.S Patents, Foreign Patents or Non Patent Literature.
Advantages
Automatic USPTO IDS Billing
USPTO Uploader’s logs are easily transformed into potential Debit Notes. The Automatic IDS Billing reads the output log of the Uploader. It prepares and inserts the relevant Debit Notes into the system. The IDS Billing allows the configuration of multiple groups with different payment terms, discounts and other billing related information.
Advantages
- Automatic Debit Note creation for each IDS submission
- Configurable and adaptable system to client internal billing system
- Scalable and flexible application to support multi-client files, special payment terms, groups configuration and different billing periods per group
- Minimal installation time
Overall Suite Advantages
- Proven operation Cost Reduction
- Minimal (if any) IDS submission errors
- Accurate and prompt client Billing
- In-depth analysis capability prior to fee-based IDS submission
- Accurate and prompt matters-check during patent allowance process
Automatic USPTO IDS Uploader
Using the USPTO electronic system is a much better approach than slow manual submission. Nevertheless, the use of the E-filing system is still cumbersome and requires repetitive work with many details. The manpower used for such operation is quickly exhausted, leaving room for errors and mistakes take place.
The driving force behind the Uploader is the absence of the manual work needed per IDS submission. Once a template is set for the IDS work, the Uploader performs the entire workflow within the USPTO website. It finalizes the submission by saving and printing the EFS (receipt received from the USPTO) on the local PC and printer. The simplicity of the program, as well as its reliability and proven track record, make it one of the most cost effective products in the IP market.
The average Uploader submission time is between 10 to 60 seconds, where as manual submission takes from 15 minutes to several hours work on the USPTO site.
While the USPTO IDS Uploader mainly targets heavy IDS users, even small offices with minimal IDS submissions see high Return On Investment (ROI), saving unnecessary time spent on bureaucratic work.
IDS Uploader Work Flow
Preparation
The IDS Uploader first step determines which of the two files format to use for each IDS submission:
1. Form 1449
2. USPTO Letter
The 1449 form contains the IDS items divided into 3 categories:
1. US Patents
2. Foreign Patents
3. Non-Patent literature
US Patents need no attached files since they are part of the USPTO database.
The actual documents describing Foreign patents and Non-Patent must reside in the input folder in order to be attached to the IDS itself.
The USPTO Letter contains a personal letter indicating if a USPTO fee (180$) needs to be paid. The IDS Uploader (configurable) can read such a document. When the fee is required, it inserts all relevant information (including the Patent Attorney deposit account at the USPTO) for automatic fee-payment process as well.
Submission
Step 1 –Choosing the Correct Folder:
Once both documents are parsed, the actual IDS submission process starts. The folder that contains the 1449 form and USPTO Letter must include all IDS items (scanned in a pdf format, which is readable by the USPTO website).
The IDS Uploader verifies all items in the folder are compatible and starts the submission.
Step 2 – Verifying the Digital Certificate:
The digital certificate (epf file, provided by the USPTO) and password are inserted. Both are part of the IDS Uploader configuration and are performed automatically per IDS submission.
Step 3 – Entering Application Data:
The application data is extracted (usually the data is taken from the folder name, however, this can be tailored according to need).
Step 4 – Uploading IDS Items:
All items (including the 1449 form and the USPTO letter) are uploaded to the USPTO website. Each item is automatically inserted, its category and document description are chosen.
