Binning Applications to Manage Duty of Disclosure

Establishing and implementing a global strategy for citing information material to patentability of an application to the U.S. Patent and Trademark Office are germane to procuring enforceable patents.  Ideally, such global strategy can be implemented on a computer system so that citation of information becomes an automated, rather an arduous, process, thereby facilitating compliance with duty of disclosure.  The following is a description of a global strategy for managing citation of information material to patentability in related co-pending applications.

Given a patent portfolio containing pending applications, the pending applications are first sorted into a series of separate bins.  For each application in a given bin, a local citation list is created.  Each local citation list includes information pertaining to documents already made of record in the application.  Each item of the local citation list may have properties such as bibliographic data of a cited document, source of the cited document, date of the source, and explanation of relevance of the cited document to the application.  The local citation lists in each bin are used to generate a master citation list for the bin.  Each time a local citation list is generated or updated within a bin, the master citation list for the bin is also updated with the new information from the new or updated local citation list.  For each bin, each time the master citation list is updated, each local citation list is compared to the master citation list to see if there are any discrepancies in the list of documents cited.  If there are any cited documents which appear on the master citation list but not on a local citation list, an appropriate information disclosure statement is filed in the application assocated with the local citation list.

To keep the master citation list from becoming unwieldy, it is important to select a meaningful strategy for binning the applications so that the applications in each bin are truly related.  There is a myriad of strategies for sorting the pending applications in a patent portfolio into bins.  For example, a set of keywords, which may be based on the claims or the detailed description or business objectives, may be associated with each application in the patent portfolio.  Then, applications in the portfolio can be parsed and organized into application bins based on these keywords.  The set of keywords is ideally based on a well-defined lexicon to allow for repeatable binning of applications.  Alternatively, a class/subclass as defined in the Manual of Classification of Patents may be associated with each application in the patent portfolio.  The applications in the patent portfolio can then be parsed and organized into bins based on class/subclass.  It is also possible to sort the applications into bins using a blind criterion, such as suggested by the Office in approval-pending Rule 78(f)(1)(i)(A)-(C).  In this example, applications naming at least one inventor in common and assigned, or subject to assignment to the same entity, and having the same filing date or filing dates not separated by more than two months may be considered to be related and therefore could be in the same application bin.

The citation strategy described above does not mention sorting patents in a patent portfolio into the bins, although this could also be done for a more comprehensive citation approach.  However, if the bins are grown organically, the citations in applications which mature into patents would already be on the master citation list of the bin and would automatically be cited in the applications within the bin.