Accessibility Tools
LEDES Oversight Committee ratified the IP Patent Prosecution UTBMS Codes last year in April and we are happy to report that there is traction on their usage. We are thrilled that the ebilling vendor systems and Law Departments are moving ahead with the new schema.
Look for a new IP UTBMS subcommittee effort to form in the next couple of months to continue this novel approach in other areas of Intellectual Property.
We are pleased to announce that Portuguese translations supporting usage of the UTBMS codes in the Brazilian legal system have been added to UTBMS.com.
We are grateful to the team at Barreto Viega Avogados (BV/A) in Sao Paulo Brazil and Miami, Florida for assisting with these translations. Our main contact at the firm for this project was Lucas Abiz Luna, who enlisted the help of several at the firm to complete the translations. His team included Felipe Barreto Veiga and Gustavo Fiuza Quedevez for project coordination, Litigation team members Luiz Gustavo Silva and Leonardo Carvalho, as well as IP team members Isabela Esher Castro Barbosa, Carolina Costa Simoni Côrrea and Danniel Rodrigues.
The LEDES Board is please to announce the ratification of new UTBMS codes specific to Patent Prosecution. The new code set is the result of a Subcommittee formed in 2022, tasked with investigating the existing model for initiating, tracking, and invoicing IP matters and to recommend potential improvements in data definition and communication that would increase the business value of legal matter billing information by enabling more valid and useful opportunities for sophisticated analysis of IP billing data.
The new Patent Prosecution codes, hereafter known as the “110” Patent Prosecution Codes, were ratified in April 2023. They are a hierarchy of phase and deliverable categories that are significantly more relevant to the actual workstreams in a patent application matter than are previous IP codes set forth by an LOC working group in 2009. A mapping of USPTO PAIR codes to each of these phases is provided to illustrate how this data can be leveraged to better track and monitor the status of a patent application filing, for example to validate invoice activity.
It is the intention of the Subcommittee to continue working with this framework to include new hierarchies for IP General Advice, Portfolio Assessment and Trademark/Copyright in the next few years. Please watch for updates on this project on www.LEDES.org and www.UTBMS.com.
This code set introduces a different numbering pattern than has been used in the past, one that does not begin with alpha characters, but utilizes a similar numbering hierarchy that is supported in all of the LEDES ebilling file specification documents.
The new codes are available here.
The LEDES Oversight Committee IP Subcommittee has proposed new UTBMS codes for Patent Prosecution matters, which have been posted for public comment. The public comment period will close on July 25, 2022.
Discussion
Flaws in the existing set of codes–that this set intends to correct—include:
While there are already UTBMS codes for various types of IP (e.g., Patents and Trademarks) and non-IP work (e.g., Litigation, etc.), the Subcommittee reviewed the UTBMS codes for Patent Prosecution work only. As a result, IP activities such as General Advice and Portfolio Assessment will be handled in future code set proposals.
In the proposed code set, the phases of Patent Prosecution are identified as:
The new code set is based on the phases of Patent Prosecution and not the attributes of a patent application. Therefore, the following attributes of a patent application should be captured separately from timecards and timekeeper narratives:
One of the benefits of the new code set is the potential to validate each code by looking at document activity at the Patent and Trademark Offices. The following section provides an example of how the validation can work.
One of the main purposes of our code changes is to align them more closely with the USPTO’s PAIR activity descriptors. This will help vendors provide services that were not possible with previous LEDES code sets. For applicants, the vendors can provide a service that flags invoice line items that were invoiced but do not appear to have been performed. For law firms, vendors can provide a service that identifies activity that either was or should have been performed but was not invoiced.
For example, if an invoice contains a line item for preparation and filing a PCT application, the vendor can check PAIR to ensure that an RO/101 was filed and flag the line item if not. Similarly, if a response to an office action was due in a given month, but the response does not appear in the invoice for that month, the vendor can flag the item for the law firm to determine why it was not invoiced.
Since there are over 1,000 PAIR activity descriptors, it was not possible to map our code set directly to the PAIR activity. Instead, we generalized the PAIR activity into categories and created a code for each category. In this document, we list our suggestions of what PAIR activity can be used to validate each invoice line item, however, vendors may choose to add or remove PAIR activity to our suggested list for each category. Because there isn’t a direct mapping between PAIR activity and LEDES codes, it will be impossible to validate line items with complete certainty. However, a vendor can flag certain line items as “suspect” if one of the suggested correlated activities does not appear in PAIR.
To conserve the size of the code set, we rely on the vendors’ ability to identify certain characteristics of each case to generate summary reports. For example, we do not have separate codes for the type of case such as PCT, re-exam, trademark or design application. We rely on the vendors being able to pull that information from the applicant’s IP management system to be able to summarize, for example, all the line items for responses to office actions for design applications, utility applications and re-exams separately.
Recognizing the global nature of legal ebilling, the LEDES Oversight Committee will shortly have available a version of the UTBMS code sets in simplified Chinese. The project includes a natural explanation of the different legal processes included within the code definitions so that they are more easily understood in jurisdictions outside of the United States. As soon as this first set is approved, we will quickly move to obtain translations into traditional Spanish, Arabic, traditional Portuguese, Russian, Japanese, German, French and Italian.
Look for this new information on UTBMS.com in the coming months.
This is the most expensive project undertaken in the organization’s history. Unlike other organizations, the LEDES Oversight Committee does not have vendor or law department sponsors that underwrite our expenses, our revenue is derived solely from annual member dues, ($95 USD/year). To support this project, consider joining the LEDES Oversight Committee.
In 2020 the LEDES Oversight Committee is focusing on usability. In this regard, we are working toward releasing versions of the UTBMS code sets better suited for use in non-US legal proceedings, meaning that we want to create versions containing descriptive language as opposed to using US-oriented legal procedural terms. Once this is complete, we will then translate the UTBMS documents into simplified Chinese, traditional Spanish, Arabic, traditional Portuguese, Russian, Japanese, German, French and Italian.
This project is being led by Director Jim Hannigan and is expected to take a year to complete. One hurdle in this project is that many code sets were ratified by organizations other than the LEDES Oversight Committee, and we need their approval to move ahead with altering their original material.
Our intention is to hire a legal translation company to assist with the translation. A member law firm has already agreed to help approve the Chinese translations, to ensure everything makes sense before it is published. Can you help us? If so, please contact us using this link.
It is our understanding that as the judiciaries of England and Wales move ahead with the electronic form bill of costs, it is no longer required that attorneys use the J-Code task and activity codes when recording their time or in the new model form bill-of-costs itself (the nBOC). HOWEVER attorneys are required to use the hierarchy established in the J-Codes (in other words, use the J-Code task and activity code headings) in the nBOC, or use an alternate time categorization system for litigation in England and Wales in the nBOC that is permissible by the court, in the same way as the J-Codes are and that it is at least as good as the J-Codes. The J-Codes are inherently permissible, being drafted by the judiciaries own Hutton Committee in collaboration with the LOC and authorized by three leading judges.
While firms can establish their own code numbering schema using the J-Code hierarchy, THEY MUST ALSO provide a worksheet in the electronic form bill of costs that translates the codes used into the headings.
The LEDES Oversight Committee recommends that firms simply use the J-Codes as elaborated here, as most firms will be familiar with the phases and tasks and also using UTBMS codes when recording their time.
More on the timescale for mandatory use of the nBOC: Our last information is that the usage of the nBOC was to become mandatory at the beginning of October 2017 and it will need to be used for all work done after that date. However, it is also understood that the Ministry of Justice (MoJ) have advised it to become mandatory beginning 06 April 2018 (to allow for the mandatory use of the nBOC in county courts as well as high court). Given this, we advise firms to check for themselves on the go-live ‘mandatory use of the nBOC’ date.
Irrespective of the actual go-live date of the nBOC, it is going to happen soon. It would be prudent for law firms to consider implementing the J-Codes or an alternative but equal system as soon as possible, so that time is recorded using appropriate task and activity codes, which will in turn enable the easier production of the nBOC at the close of the case when it will be required (assuming of course, the case is won). This will then wield the advantages of the nBOC in terms of time and cost savings in its production.
Law firms are encouraged to find out more about the new model form bill of costs for themselves. Please visit the judiciaries website for official information before making any decisions.
