DorothyAI’s  CrossCite is a game changer for a leading global law firm

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DorothyAI’s  CrossCite is a game changer for a leading global law firm, simplifying IDS processes, saving time and money, and boosting profits and client satisfaction.

Customer Background

A prestigious global law firm ranked in the top 10 in the world (the “Firm”) came to DorothyAI with a problem many patent law practices face: Current US information disclosure statement (IDS) best practices require patent lawyers to include a huge number of references in IDS filings to avoid inequitable conduct allegations. For active practices: 

●       Managing IDS filings requires the constant attention of several paralegals, despite outsourcing 15-30 IDS filings per week.

●       Exclusive of paralegal time, each of the 15-30 outsourced IDS files cost ~$200, driving up client costs.

●       It’s only a matter of time before allegations of inequitable conduct are brought against patent holders for hiding important references deep in a list of 100’s of references in an IDS filing.

Problem Statement

The primary challenges for IDS processing include (see 37 C.F.R. 1.56):

  1. Identifying any reference that the patent holder should be aware of.
  2. Determining whether the references the patent holder should be aware of are material to patentability.
  3. Reducing the number of cumulative references submitted in the IDS or identifying cumulative references.
  4. Ensuring the Applicant’s duty of candor and good faith.

The Firm’s process for generating IDS filings was focused primarily on the first challenge. Paralegals identified patent filings describing related technology, spending 2-4 hours per filing before forwarding publication numbers of related patent filings to a patent services company. The patent services company scours EPO records for any references cited in the related cases and all international equivalents. These references are all included in an IDS filing that is forwarded to the Firm for review. After review, the Firm returns the IDS to the patent services company for filing. This process typically takes 3 to 14 days and costs ~$200 per IDS. In most cases, the IDS filings generated included 100’s of references.  

Neither the Firm nor the patent services provider spend much time eliminating duplicative references, and cumulative references are wholly ignored.   

This process assumes that the Applicant’s duty of candor and good faith is met by simply citing every reference ever identified in the related cases, which appears to be true today. However, this practice requires the USPTO, more precisely the Examiner, to sift through these references, eliminating duplicative and cumulative references and identifying the most important references as quickly as possible. Excessively large IDS filings reduce time dedicated to critical evaluation of the references and claims for the application at issue, making prosecution less efficient and potentially reducing the quality of issued patents.

The possibility of highly relevant references being overlooked is high under the Examiner’s burden to review excessive IDS filings within the time allotted by the USPTO, opening the door to arguments that the patent holder attempted to “hide the ball” by not calling highly relevant references to the Examiner’s attention. At the same time, not citing a reference introduces the possibility of inequitable conduct allegations for not citing a reference material to patentability that the Applicant should have been aware of.

 Solution

DorothyAI took these issues head-on creating CrossCite. CrossCite uses a portion DorothyAI’s search technology to eliminate duplicative references, identify the most highly relevant references, and reduce the number of cumulative references in IDS filings. IDS filings are generated on USPTO Form 1449 that can be downloaded from CrossCite and directly uploaded on the USPTO’s Patent Center, reducing the time required to produce compliant IDS filings from hours or weeks to minutes.  

  1. Duplicative References: Up to 60% of the references filed in excessively large IDS filings come from duplicative references. These are direct family members, for example, ex-US equivalents, of cited references or the same references being errantly filed on consecutive IDS filings. 

CrossCite eliminates duplicative references by: (i) identifying the family ID for every reference cited identified by the user and ex-US equivalents of the references cited by the user compiled by CrossCite and (ii) identifying the family ID for every backward reference cited in the application for which the IDS filing is being created. This ensures that only one reference in each family is identified in IDS filings throughout prosecution.

CrossCite defaults to US filings, PCT filings, and EP filings, so the disclosure presented to the Examiner is in the original English or is a reviewed English translation.   

  1. Most Relevant References:  Identifying the most relevant references requires comparing the disclosure of the cited references to the claims of the application for which the IDS filing is being created. CrossCite accomplishes this task by extracting the independent claims from the application for which the IDS filing is being created, or a claim inputted by the user, and comparing the disclosure of each cited reference to the claim using a patent BERT generated matrix. This process deploys GPT-3 technology in a more limited and less generative way than, for example, ChatGPT.
  2. Cumulative References: CrossCite uses another AI technology to cluster the non-duplicative references based on their disclosures. In most cases, the disclosures of  IDS references encompass: (i) one or more components of the claimed invention, (ii) references describing uses for the technology described in the claims, and (iii) references describing the state-of-the-art. These classes of references can be distinguished by clustering the references. 

Why two IDS filings? CrossCite generates two IDS filings:

  1. A Primary IDS containing the most relevant references and at least one reference from each cluster; and
  2. A Secondary IDS containing cumulative references that cross references the primary IDS in the right most, “Pages, Columns, Lines where Relevant Passages or Relevant Figures Appear” column of USPTO form 1449. This practice is an extension of 37 CFR 1.98(c). 

Combining relevance scoring and clustering allows CrossCite to identify the most relevant reference in each cluster.  The similarity threshold used by CrossCite allows highly relevant references describing, for example, the components of the claimed invention, to be identified in the primary IDS even if these references are in the same cluster. At the same time, less relevant references describing, for example, the state-of-the-art, are presented in the primary IDS as a single reference with additional cumulative references being identified in the secondary IDS. 

CrossCite produces both primary and secondary IDS, and spreadsheets every step of the way so your records reflect the total references reviewed, the duplicative references eliminated from the IDS and generally, the amount of effort that went into producing the best IDS filing available.       

Key Features of CrossCite:

  1. Effortless Data Entry: CrossCite simplifies the process by taking a publication number or application claims, along with basic header information, and any specific publications you wish to cross-reference.
  2. Comprehensive Search: Our platform goes above and beyond, scouring information disclosure, international search reports, and prosecution documents globally. This ensures that you have access to all related applications, source references, and cross-referenced publications.
  3. Intelligent Filtering: Say goodbye to duplicative references! CrossCite automatically identifies and removes redundancies based on patent family and application type.
  4. Relevancy Scoring: Leveraging DorothyAI’s powerful search technology, CrossCite scores citations for relevancy, ensuring that you focus on the most pertinent publications for your clients.
  5. Streamlined Compliance: CrossCite creates a primary IDS containing the most relevant publications and a supplemental IDS that incorporates cumulative references. This meticulous approach aligns seamlessly with 37 CFR 1.98(c) compliance, providing you with confidence and eliminating the risk of oversights.

Results

The implementation of CrossCite yielded remarkable results for the law firm:

  1. Time Savings: The law firm experienced a 75% reduction in time spent on IDS inquiries, transforming a 3 to 4 hour process into a matter of minutes.
  2. Boost in Profits: By saving so much time, the firm was able to make more money. This let them use their resources better and focus on important legal tasks.
  3. Enhanced Compliance: CrossCite’s real-time compliance checks provided the firm with confidence in the accuracy and completeness of their IDS filings.
  4. Client Satisfaction: The streamlined process and faster response times positively impacted client outcomes, fostering greater client satisfaction and trust.

Here’s the thing: when this global law firm got on board with CrossCite, they didn’t just fix their IDS issues. They also boosted how well they worked, increased their profits, and made clients happier. This case study shows how cool tech stuff like CrossCite lets legal pros focus more on their main gig, making sure they’re nailing accuracy and following the rules, all while keeping clients happy.