IDS Assurance – Are we really on the safe side?

The importance if IDS submission throughout the patent registration process, is no longer controversial[1]. Beyond the legal obligation to the USPTO prosecution process, the IDS submission provides the legal cover for potential lawsuits against the patent or certain claims within it. The question is, whether I should rest assure that while submitting all IDS information, I am really protected. The intuition would be that the answer is yes, but when dealing with such a huge and unwieldy system like the USPTO, such question could be in place.

Until a few years ago, the IDS submission process was done manually, i.e. by printing and mailing tons of documents. The chance that some of it got lost is by no means low. The ability of the Patent Attorney to track all IDS items is not simple. Since the prosecution process might take years, we find ourselves in a situation where many IDS could be lost, thus endangering the patent validity. Even nowadays, when online submission is available, complete IDS or a few items within it, might be lost due to human errors, internet connection problems, USPTO website malfunctioning or not-considered items by the examiner.

Fig.1 – Potential errors in USPTO website

From our vast experience in working with Patent Attorney firms, we found that the gap between what patent attorneys believe they submitted to what was actually submitted and received in the USPTO, is beyond any imagination. This gap is huge in regard to the percentage of the files (patent applications) that contain missing items as well as in regard to the number of the missing items within each file. Obviously, only those items that do reside within the USPTO are relevant for any potential lawsuit against the registered patent, and not those items that reside in the Patent Attorney docketing system (whether they were sent to the USPTO but never received, or whether they have not been sent at all).

The only way to avoid such scenario is to perform a comparative check between IDS items within the docketing system and the IDS items reside in USPTO PAIR website, per file. Such a test, for a specific patent application, in any given moment, could verify and assure that all items which the patent attorney planned to submit were actually submitted to the USPTO and received by the patent examiner. In case a gap is found, it can be fixed before any potential damage is done. Such manual test, for an average file, could take a while, depending on the docketing system complexity and the skill of the one who actually performs it:

1.       All 1449 documents in the USPTO (scanned PDFs) need to be extracted from the USPTO PAIR website (these documents represent the summary of the IDS items  in each IDS submission)

2.       All items marked as submitted should be extracted from the docketing system

3.       Each item in the docketing system should be looked for in the 1449 documents so as to verify it actually exist there

Fig. 2 – Simple 1449 document sample (taken from USPTO website)

In case there are only a few items, then such an act could be quick and straightforward. When there are many items and/or we have a lot of files to verify, this is a different story. Such activity could take a lot of time, be very expensive (in man power terms) and most important – vulnerable to human errors. In big Patent Attorney firms, who file many patent applications every year, such testing process is so expensive and complicated that it is nearly impossible, therefore get hardly done.  

Fig.3 –1449 document that is not considered by the examiner (taken from USPTO website)

It seems that there is a need to a system, which would be able to connect to both docketing system and USPTO PAIR website, extract the relevant information per patent application and compare it. Since the USPTO PAIR data is scanned and saved in an Image format, the system should be able to convert it to a readable format (readable PDF, text etc.), prior to performing the comparison. Without such ability, the system would not be able to provide an appropriate comparison between items.

In addition, allowing the user to ‘mark’ problematic items, thus ‘telling’ the docketing system that these items need to be re-submitted, is a requested feature.

Fig.5 –Heavily loaded 1449 document; Page 1 out of 6

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[1] Recent Court Decisions Highlight the Importance of IDSs:

v  McKesson Info. Solutions v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007)

v  Larson Mfg. Co. v. Aluminart Prods. Ltd., 559 F.3d 1317 (Fed. Cir. 2009)

v  Dayco Prods. Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed Cir. 2003) 

v  Therasense, Inc. v. Becton, Dickinson & Co., 2010 WL 1655391 (Fed. Cir. April 26, 2010) (granting petition for rehearing en banc and vacating previous decision)

App4Reg is led by skilled Hi-Tech professionals with over 40 years of accumulated experience at R&D and Project Management. Our past experience lies within Telecom industries and tier-1 operators million dollars project management.

We work together with our clients to seamlessly provide automated solutions for client intellectual property strategies. 

Our strength derives from years of experience in the Patent-Trademark business combined with years of software expertise. We are on the cutting edge of the technology that supports automated patent submission processing. Our experience, the combination of software expertise and patent expertise, positions us to provide software systems that are tailored to our clients needs.

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