During examination procedures at the Patent Office and when conducting freedom-to-operate and prior art searches many references are found and returned to the applicant/requestor. Such documents may include patent references as well as non-patent references. In some countries, there is a requirement to disclose such references during the examination procedure and some PTOs require the applicant to submit such references when they become known to the applicant. One widely known example is the Duty to Disclose requirement of the USPTO, under which applicants are required to submit an Information Disclosure Statement (IDS) form with all known references.

The Reference Archive

Ipendo has designed the Reference Archive module to accommodate for the above described needs. The Reference Archive is not only intended to store prior art cited within your technical field, but also other relevant documents that may emerge during monitoring of competitors and the like. The Reference Archive allows storage of Meta data and the actual document. It also makes use of other relations and functionality in the Ipendo Platform™ to categorize and relate the reference to various records. All types of third-party rights can be efficiently stored within the Reference Archive, at the same time as making use of all the regular Ipendo features available in your daily portfolio management.

Monitor ongoing activities in your portfolio and manage your IDS in a solid fashion

In addition to storing references, it is also possible to track which references have been cited in different countries. On the family level in the Ipendo Platform™ all stakeholders having access to at least one case can follow and survey references cited in all other cases within the family. For instance, this gives a US attorney the capability to monitor references cited under other jurisdictions, review them and decide whether they must be submitted, or not, under the US Duty to Disclose requirement.

It is possible to scan through the complete portfolio or only selected parts for references marked as relevant to disclose. You can establish a review process involving qualified parties updating the reference with “To be cited”/“Not to be cited” status based on their opinion on how to proceed. Paralegals can easily identify these references and ensure they are disclosed within the required time limit under different jurisdictions.

Users not working on a daily basis in Ipendo Platform™ can sign up for a subscription service sending out alerts every time a Reference (within a case in a family to which the subscriber has access) is uploaded or updated. Activities within the family, outside your own cases, can be monitored in a reliable and efficient way. This is something on which many companies spend a lot of time and money without achieving a confident process. By creating relationships between records with potentially the same basis of duty of disclosure, for instance sharing a similar inventive concept, you can establish robust monitoring of your IDS management.

In the summer 2011 release of Ipendo Platform™, one additional feature is added to further improve the IDS management solution. The Ipendo Reference Archive now creates standardized USPTO Information Disclosure Statement (IDS) forms directly from the module. All references related to your US patent cases can easily be reported to the USPTO without manually completing IDS forms. Simply select the references in the reference list, both patent and non–patent, to include in the IDS and create the report. All references selected for inclusion in the IDS can be automatically updated to status “Cited.” References included in the IDS form are automatically listed under the appropriate section of the form, i.e. under US patents, US patent application publications, foreign patent documents and non-patent literature documents. It doesn’t get much easier!

Store searches in close relation to your portfolio

The module Data Transfer Center launched in spring 2011 can help you simplify uploading patent and non-patent information in the Ipendo Platform™. If you perform searches in any IP search software and are able to generate a simple report, you can conveniently upload the final result in Ipendo Platform™ as Reference Records. Using an identifier, such as the publication number, lets you avoid storing duplicates; instead existing references will be updated with the latest status. Storing your searches in the Ipendo Platform™ will allow you to stop performing the same searches over and over again.

Simplify evaluation of submitted inventions

Building a history in your reference archive and keeping track of all documents and related Meta data is a major advantage within your organization. You can reuse information and previously conducted analyses, thereby saving time, money and minimizing the risk of omitting relevant information. By saving the results from all searches executed and adding portfolio-related information you can build your own prior art archive inside the Ipendo Platform™—a great starting point when evaluating new invention disclosures. Additionally the Ipendo Platform™ solution offers the ability to tag third-party rights or non-patent documents with the same categorizations as normally used when labeling your own portfolio cases. Can you imagine how easy it would be to identify a first relevant set of prior art when you receive a submitted invention within a certain technology area?