Bulk Prosecution: An Example with Information Disclosure Statements

"Bulk patent prosecution" is the process of realizing efficiencies by performing multiple similar patent prosecution tasks simultaneously. For example, one might want to perform prior art searches and file information disclosure statements (IDS's) for 100 patent applications, perhaps to later improve the weight of the presumption of validity if the applications are granted. This could be important if the applications have clear points of novelty in crowded spaces. To that end, one wouldn't need to draft up 100 IDS documents separately. In fact, doing so would be incredibly inefficient.

There are only a few key pieces of information that would change between the different information disclosure statements, and there are a few key tools that could help any practitioner achieve the goal.

TOOL FOR FINDING A REASON FOR BULK PROSECUTION

How do you know which cases might need more references to cite on the face of the patent? LexisNexis PatentAdvisor can tell you which cases are missing IDS's with its Prosecution Pattern Monitors and Custom Patent Statistics. Other popular prosecution analytic tools include Juristat and TurboPatent.

SEARCH TOOLS

The information being disclosed must come from somewhere. There are many search tools out there, and there are many things to consider when using the tools.

  1. Does the tool have the capability of searching in bulk? So far, I have not seen any tool where you can import search criteria for 100 searches to get 100 result sets. For example, if you were searching semantically on 100 abstracts, 100 claim sets, or 100 full applications, it would be nice to be able to import those abstracts, claim sets, or applications in bulk and export a result set from a tool. An ideal export would include the Top N results that were generated by the tool in response to the search criteria. As a result of the lack of bulk searching tools, as far as I know, this task still needs to be performed manually, one-by-one, within a search tool.
  2. Does the search tool perform well on patent language? Most tools do not, but I have found that the semantic search capabilities of Innography perform very well for this task. Other popular tools in this space include Orbit Intelligence, InnovationQ, Derwent Innovation, LexisNexis TotalPatentAnaqua AcclaimIPAI PatentsGoogle Patents, Publica, PatBase, and PatSeer.
EXCEL AND MAIL MERGE

Once you have the references to cite in a spreadsheet, you just need to set up mail merge in Microsoft Word to create a separate IDS for each of the rows in your spreadsheet. Start with a sample IDS, and replace the variables with fields that correspond to columns in your spreadsheet.

MANUAL SUBMISSION TO THE USPTO

Once the IDS's are generated, you can manually submit the documents the the USPTO. I am not aware of any automated way of uploading and submitting documents to the USPTO.

WORDS OF WISDOM

Before you start a bulk prosecution task, ensure that your task will have a purely positive outcome. For example, you might not be able to submit an IDS in a case if the case is not in a compatible patent prosecution status. The best statuses for submitting bulk IDS's are those compatible with 37 C.F.R. 1.97(b), typically immediately after an application is filed or immediatley after a Request for Continued Examination (RCE) has been filed.

Because patent matters can change statuses very quickly, you might want to check the status for all matters involved immediately before you start a bulk prosecution task, and attempt to finish the entire bulk prosecution task within 1-2 days to minimize the risk. You should also check the status again before any manual submissions to the USPTO, to ensure that the status has not changed.

You might also want to consider narrowing the scope of your search to ensure that (a) you do not find third party patents, if you are worried about any risks associated with them, or (b) you do not find any of your own company's patents or articles, if you are worried about not being able to make a statement under other sections of 37 C.F.R. 1.97. This probably goes without saying, but for an IDS project, you should target your searches for references that have an earlier date than your patent application.

As with all of my posts, I welcome comments, suggestions, and corrections! My goal is for the patent bar to improve together.

Comments

  1. ClaimMaster has a neat IDS generation tool. Since it's Word-based, you could use the mail merge feature you mention to bring in the list of references for each IDS and then generate the IDS from the instant word doc. As far as I can tell, you'd still have to the actual IDS generation feature separately to generate the final IDS, but it fills in the biblio info for each reference automatically. You can also import the bibliographic info for your application from public or private PAIR. However, you have to enter the app number manually there too.

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