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.
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.
