IP Support Best Practices: When Utility Patent is Granted, Part I.

Intellectual Property Letters PatentGreat news!  You just got your client’s original Letters Patent, now what? Before you report the original copy to your client, your paralegal should perform a detailed cross-check reference against the front page of the patent and the prosecution history.

Cross-check each INID codes (the number shown in parentheses preceding the bibliographic data) against your prosecution files to ensure accuracy.  INID = Internationally agreed Numbers for the Identification of Data.” Using a sample patent front page from  US8949619B2, here are a few examples of the parts to specifically pay close attention to the accuracy of the bibliographic data:

  • (72) All of the inventors should be listed on the patent with their residential city and state (and citizenship for applications filed pre-AIA).
  • (73) Name of Assignee.  Match the assignee name listed in the PartB coversheet when the issue was paid, if listed.  Note that assignments which are recorded after the patent issues are never printed on the patent.
  • (*) Term extension notice will display the number of days if the term of the patent is extended or adjusted under U.S.C. 145(b).  This is a complicated calculation by the USPTO and will need collaboration with the supervising attorney.

Related U.S. Application Data.  Related applications and patents that are listed.

  • (60) Reference to other legally related domestic document(s). Check the accuracy of the provisional application number and filing date
  • (56) References Cited contains the list of prior art cited by Examiner or from IDS filed by the applicant.  Theparalegal should flag the references listed and bring to a patent attorney’s attention if the prior art listed should be cross-referenced to other related pending patent applications.
  • Number of claims and drawing sheets.  Double check the count in the number of claims and the number of drawings shown on the front page of the patent with the prosecution record.

Screen Shot 2015-08-12 at 7.55.05 AMBest practices for the paralegal is to double or triple check the bibliography details. In addition, depending on the attorney’s IP practice, he or she may instruct the paralegal to audit other parts of the specification.  Whenever a mistake of a clerical or typographical nature, or of minor character is found, the paralegal should report to the supervising attorney for further instructions as filing a certificate of correction may be necessary.  

As with productivity, quality issue is a large phenomenon in the IP industry. Developing quality standards in your practice shows accountability to your clients.  IntelligentClicks have developed a solidified patent review process, contact us to learn more about the full audit process.