UTBMS codes / Patent
UTBMS Patent Task Codes
50 codes, PA1xx-PA9xx. Published by the LEDES Oversight Committee (LOC) in 2007.
Patent task codes covering investigation, domestic and international preparation and prosecution, opinions, and portfolio work.
When to use it: Patent matters other than litigation. Patent litigation uses the litigation set.
The full list: 50 codes
| Code | Name | Definition |
|---|---|---|
| PA100 | Assessment, Development, and Administration | |
| PA110 | Fact Investigation and Development | All actions to investigate and understand the facts of a matter that are not included under another patent task code below. Covers interviews of client personnel and potential witnesses, review of documents to learn the facts of a potential case, work with an investigator, and all related communications and correspondence. |
| PA120 | Analysis/Strategy | The thinking, strategizing, and planning for a case that is not included under other patent task codes below. Includes discussions, writing, and meetings on case strategy. Also includes initial legal research for case assessment purposes and legal research for developing a basic case strategy. Most legal research and/or other activity will be under the primary task for which the research is conducted, such as research for a response to an office action under PA430. |
| PA130 | Document/File Management | A narrowly defined task that includes creating and populating document and other databases or filing systems, that does not fit under other task codes below. Includes the planning, design, and overall management of this process. Work of outside vendors in building litigation support databases should be an expense under E100. Calendaring (or "docketing" in the U.S.) should be included under the appropriate task codes below for each matter unless, otherwise instructed by the client. |
| PA140 | Budgeting | Covers developing, negotiating, and revising the budget for a matter that does not fit under other task codes below. Cost estimates which are included as part of other activities, such as reporting an Official Communication from a patent Office, should be included under the appropriate task codes below, unless otherwise instructed by the client. |
| PA199 | Other Assessment, Development, or Administration | Use only for assessment, development, administration and other activities that can not be included under a previous code, or as instructed by the client. |
| PA200 | Patent Investigation and Analysis | |
| PA210 | State-of-the-Art Investigation | All actions associated with determining the state of the art in a particular area of technology, including definition of the scope and field of the search, searching, analysis of search results, and reporting to client. Also known as a "collection" search, a state-of-the-art search is the broadest and most general type of patent search with a field that may include published patent applications, expired and unexpired patents, non-patent literature, and/or other sources. State-of-the-art searches are typically conducted, if at all, during the conceptual design phase when the scope of the investigation is least defined. State-of-the-art searches may also be used to help identify technology that is disclosed in expired patents and may therefore be freely copied by anyone. Work of outside vendors in conducting searches or otherwise assisting investigation should be an expense under E100. |
| PA220 | Patentability Investigation | All actions associated with determining the approximate scope of patent protection that may be available for a client's invention, including definition of the scope and field of the search, searching, analysis of search results, and reporting to client. Also known as a "novelty" or "prior art" search, the field of a patentability search is often similar to that of a state-of-the-art search. However, patentability searches are typically conducted after any market research or conceptual engineering has been completed so that the scope of the investigation is described by at least an informal structural or functional description of an invention. Often a patentability search will also locate expired and/or lapsed patents disclosing technology that may be freely copied in order to improve the invention. Thus, a patentability search may include various aspects of a state-of-the-art search. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. |
| PA230 | Clearance Investigation | All actions associated with determining whether a proposed product or process might be covered by the claims of patents and/or published patent applications, including definition of the scope and field of the search, searching, search field integrity checking, analysis of search results, and reporting to client. Also known as a "right-to-use" or "non-infringement" search, the field of a clearance search is often limited to the patent claims in a very narrow technical area. The purpose of an infringement search is to determine whether there are claims in those patent documents that might be broadly construed to cover a well-defined, commercial embodiment of a product or process. Since interpretation of the patent claims may require review of the disclosure, patentability and clearance investigations are sometimes performed concurrently. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. Any formal clearance opinion directed at specific patents should be prepared separately under PA710. |
| PA240 | Validity Investigation | All actions associated with determining whether a patent claim is invalid including definition of the scope and field of search, searching, analysis of search results, and reporting the search results to the client. A validity search attempts to locate "prior art" documents and/or other information that were not considered during the examination of the corresponding patent application but appear to disclose the features recited in a patent claim. The field of the search can vary widely depending upon the technology under consideration. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. Any formal invalidity opinion should be prepared separately under PA710. |
| PA250 | Publication Watches | All actions associated with planning, completing, and reporting the results of periodic searches for new publications in connection with a specific assignee, area of technology, patent application, or issued patent. For example, this may include watching the file history of published applications for new Official Communications, responses, and/or publication for opposition. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. |
| PA260 | Infringement Investigation | All actions associated with determining which of a client's patent claims may cover a non-client's products or processes, including collecting patent and/or product information, obtaining any product samples, comparing the products to the client's patent claims, and reporting the results to the client. Work of outside vendors, such as private investigators, in assisting the investigation should be an expense under E100. Any formal infringement opinion should be prepared separately under PA710, including any formal documentation that is to be used in order to support a complaint for patent infringement. |
| PA270 | Status Investigation | All actions associated with determining the status of a published or unpublished patent application, or issued patent, including application and/or database review and forwarding report to client. Includes annuity and/or maintenance fee status investigations. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. |
| PA299 | Other Patent Investigation and Analysis | Use only for patent investigation and analysis activities that can not be included under a previous code, under PA710 (Opinion Preparation), or as instructed by the client. |
| PA300 | Domestic Patent Preparation | |
| PA310 | Provisional Application Preparation - Domestic | All actions associated with completing a provisional patent application that is to be filed in the ("domestic") home country or region of the applicant, including review of invention disclosure materials and prior art, interviews with the inventors, drafting and revision of application, preparation and execution of formal documentation (such as assignments, transmittals, and biological deposits), filing of application, and reporting to the client. Note that government fees and external expenses (or "disbursements" in the U.S.) are included under E100. |
| PA320 | Non-Provisional Application Preparation - Domestic | All actions associated with completing a non-provisional utility or utility model (but not design or provisional) patent application that are to be filed in the ("domestic") home country or region of the applicant, including review of invention disclosure materials and prior art, interviews with the inventors, drafting and revision of application, preparation and execution of formal documents (such as assignments, declarations, information disclosure statements, transmittals, and biological deposits) filing of application, and reporting to the client. Includes preparation of PCT, European and other regional applications when filed in the home country of the applicant. Note that government fees and external drafting expenses (or "disbursements" in the U.S.) are included under E100. |
| PA330 | Design Application Preparation - Domestic | All actions associated with completing a design patent (but not utility or utility model) application or design registration application that are to be filed in the ("domestic") home country or region of the applicant, including review of invention disclosure materials and prior art, interviews with the inventors, drafting and revision of application, preparation and execution of formal documents (such as assignments, declarations, information disclosure statements, and transmittals) filing of application, and reporting to the client. Note that government fees and external drafting expenses (or "disbursements" in the U.S.) are included under E100. |
| PA340 | Plant Patent Preparation - Domestic | All actions associated with completing plant patent applications that are to be filed in the ("domestic") home country or region of the applicant, including review of invention disclosure materials and prior art, interviews with the inventors, drafting and revision of application, preparation and execution of formal documents (such as assignments, declarations, information disclosure statements and transmittals, and biological deposits) filing of application, and reporting to the client. Note that government fees and external imaging expenses (or "disbursements" in the U.S.) are included under E100. |
| PA350 | Continuing Application Preparation - Domestic | All actions associated with completing a continuing patent application (claiming priority to an earlier-filed, parent application in the same country, without adding any new disclosure) that are to be filed in the ("domestic") home country or region of the applicant, including review of parent application, drafting and execution of any formal documents (such as transmittals and information disclosure statements), filing of application, and reporting to the client. Includes Divisional and Reissue Applications, and Reexamination Requests. Also includes PCT National Phase entry where the parent PCT International Application was previously filed in the same country. For PCT National Phase entry in other (non-domestic or "international") countries, use PA500. Note that (so-called "continuation-in-part") patent applications extending the scope of the disclosure (or adding "new matter" in the U.S.) in an earlier-filed application are included under PA310- 340. Also note that government fees (and other "disbursements" in the U.S.) and external imaging expenses are included under E100. |
| PA360 | Validation Patent Application Preparation - Domestic | All actions associated with the preparation and filing of applications for validation of an issued regional patent in the ('domestic') home country of the applicant. Note that PCT National Phase Entry is a continuing application process included under PA350 or PA550. |
| PA399 | Other Patent Application Preparation - Domestic | Use only for patent application preparation activities for applications that are to be filed in the ("domestic") home country or region of the applicant, and that can not be included under a previous code, or as instructed by the client. |
| PA400 | Domestic Patent Prosecution | |
| PA410 | Information Disclosure Statement - Domestic | All action associated with bringing prior art, or other information, to the attention of an Examiner in the home country of the applicant in connection with an application that was previously filed under PA300. Note that Information Disclosure Statements that are filed with the application are included under PA300. |
| PA420 | Preliminary Amendment - Domestic | All action associated with revising an application prior to the examination of the application on its merits in the home country of the applicant for an application filed under PA300, including preparation of amendments and revised drawings that do not affect the scope of the disclosure. Note that Preliminary Amendments that are filed with a continuing application without affecting the scope of the disclosure are included under PA350. Also note that preliminary amendments extending the scope of the disclosure ("new matter" in the U.S.) in an earlier-filed application and requiring the issuance of a new application number ("continuation-in-part" or "CIP" applications in the U.S.) are included under PA310-340. |
| PA430 | Official Communication - Domestic | All action associated with processing an Official Communication from a Patent Office (known as an "Office Action" in the U.S. when directed toward the merits of the application) in the home country of an application for an application filed under PA300, including initial review and any calendaring ("docketing" in the U.S.) of any response deadline, report to client with any proposed response, review of applicant's instructions and inventor's comments, preparation of amendments and/or responsive arguments, examiner interviews, and report of actions to the client. Includes activities associated with Official Communications not affecting the merits of the application, such as filing receipts, restriction/election requirements, and annuity/maintenance fee payments. Also includes "Petitions" and other requests for supervisory action that are not decided by a quasi-judicial appellate tribunal within the Patent Office, such as petitions to reinstate an abandoned application in the U.S. Appeals, Oppositions, Interferences, and other quasi-judicial proceedings. |
| PA440 | Quasi-Judicial Administrative Proceedings - Domestic | All action associated with completing a quasi-judicial proceeding before an administrative tribunal associated with the Patent Office of the home country of the applicant in connection with an application filed under PA300, including Appeals, Oppositions, Interferences, and other ex-parte and inter-partes proceedings. Includes collecting evidence, preparing and filing motions, briefs, responses, replies, surreplies, and other documents, attending conferences, depositions, hearings, and other proceedings. Does not include requests for supervisory action ("Petitions" in the U.S.) under PA430. Note that external expenses (or "disbursements" in the U.S.) are included under E100. |
| PA450 | Post-Issuance Remedial Action - Domestic | All actions associated with completing activities in connection with any necessary remedial action, after issuance of a patent in the ('domestic') home country of the applicant, such as the filing of a Certificate of Correction, and correcting patent term in view of patent term adjustment (mis)calculation in the U.S.. Note that government fees and external expenses are included under E100. |
| PA499 | Other Patent Prosecution - Domestic | Use only for patent prosecution activities for applications that are to be initially filed in the ("domestic") home country or region of the applicant, and that can not be included under a previous code, or as instructed by the client. |
| PA500 | International Patent Preparation | |
| PA510 | Provisional Application Preparation - International | All actions associated with completing a provisional patent application that is to be filed outside the ('domestic') home country or region of the applicant, including translations, review of invention disclosure materials and prior art, interviews with the inventors, drafting and revision of application, preparation and execution of formal documentation (such as assignments, transmittals, and biological deposits), filing of application, and reporting to the client. Note that government fees and other external expenses are included under E100. |
| PA520 | Non-Provisional Application Preparation - International | All actions associated with completing a non-provisional, utility or utility model (but not design or provisional) patent application that is to be filed outside the ('domestic') home country or region of the applicant, including translations, review of any invention disclosure materials or parent applications, drafting of application including pre-filing revision of a parent applications, preparation and execution of formal documents (such as assignments, declarations, information disclosure statements, transmittals, and biological deposits) filing of application, and reporting to the client. Includes PCT International Applications when filed outside the home country of the applicant. Note that government fees and other external expenses are included under E100. |
| PA530 | Design Application Preparation - International | All actions associated with completing a design patent (but not utility or utility model) applications or design registration applications that are to be filed outside the ('domestic') home country or region of the applicant, including translations, review of any invention disclosure materials or parent applications, drafting of application including pre-filing revision of parent applications, preparation and execution of formal documents (such as assignments, declarations, information disclosure statements, and transmittals) filing of application, and reporting to the client. Note that government fees and other external drafting expenses are included under E100. |
| PA540 | Plant Patent Preparation - International | All actions associated with completing plant patent applications that are to be filed outside the ('domestic') home country or region of the applicant, including translations, review of any invention disclosure materials or parent applications, drafting of application including pre-filing revision of parent applications, preparation and execution of formal documents (such as assignments, declarations, information disclosure statements, transmittals, and biological deposits) filing of application, and reporting to the client Note that government fees and other external expenses are included under E100. |
| PA550 | Continuing Application Preparation - International | All actions associated with completing a continuing patent application (claiming priority to an earlier-filed application in the same country, but without adding new disclosure) that are to be filed outside the ('domestic') home country or region of the applicant, including translations, review of any invention disclosure materials or parent applications, drafting of application including pre-filing revision of any parent applications, preparation and execution of formal documents (such as assignments, declarations, information disclosure statements, transmittals, and biological deposits) filing of application, and reporting to the client. Also includes PCT National Phase entry where the parent PCT International Application was previously filed in another country. For PCT National Phase entry in the applicant's home country, use PA300. Note that (so-called "continuation-in-part") patent applications extending the scope of the disclosure (or so-called "new matter" in the U.S.) in an earlier-filed application are included under PA520- PA540. Also that government fees and other external expenses are included under E100. |
| PA560 | Validation Patent Application Preparation - International | All actions associated with the preparation and filing of applications for validation of an issued regional patent outside of the ('domestic') home country of the applicant. Note that PCT National Phase Entry is a continuing application process included under PA350 or PA550. |
| PA599 | Other Patent Application Preparation - International | Use only for preparation activities in connection with patent applications that are to be filed outside the ('domestic') home country or region of the applicant, and that can not be included under a previous code, or as instructed by the client. |
| PA600 | International Patent Prosecution | |
| PA610 | Information Disclosure Statement - International | All action associated with bringing prior art, or other information, to the attention of an Examiner outside the home country of the applicant in connection with an application filed under PA500. Note that Information Disclosure Statements that are filed with the application are included under PA500. |
| PA620 | Preliminary Amendment - International | All action associated with revising an application prior to the examination of the application on its merits outside the home country of the applicant in an application filed under PA500, including preparation of amendments and revised drawings that do not affect the scope of the disclosure. Note that Preliminary Amendments that are filed with a continuing application, but do not affect the scope of the disclosure are included under PA550. Also note that preliminary amendments extending the scope of the disclosure in a parent application, and requiring the issuance of a new application number, are included under PA510-540. |
| PA630 | Official Communication - International | All action associated with processing an Official Communication from a Patent Office outside the home country of the applicant in connection with an application filed under PA500, including initial review and calendaring of any response deadline, report to client with any proposed response, review of applicant's instructions and inventor's comments, preparation of amendments and/or responsive arguments, examiner interviews, and report of actions to the client. Includes activities associated with Official Communications not affecting the merits of the application, such as filing receipts, restriction/election requirements, and annuity/maintenance fee payments. Also includes "Petitions" and other requests for supervisory action that are not decided by a quasi-judicial appellate tribunal within the Patent Office, such as petitions to reinstate an abandoned application in the U.S. Appeals, Oppositions, Interferences, and other such quasi-judicial proceedings before an administrative tribunal associated with the Patent Office are included under PA640. |
| PA640 | Quasi-Judicial Administrative Proceedings - International | All action associated with completing a quasi-judicial proceeding before an administrative tribunal associated with a Patent Office outside of the home country of the applicant in connection with an application filed under PA500, including Appeals, Oppositions, Interferences and other ex-parte and inter-partes proceedings. Includes collecting evidence, preparing and filing motions, briefs, responses, replies, surreplies, and other documents, attending conferences, depositions, hearings, and other proceedings. Does not include requests for supervisory action ("Petitions" in the U.S.) under PA630. Note that external expenses are included under E100. |
| PA650 | Post-Issuance Remedial Action - International | All actions associated with completing a continuing patent application (claiming priority to an earlier-filed, parent application in the same country, without adding any new disclosure) that are to be filed outside of the ("domestic") home country or region of the applicant, including review of parent application, drafting and execution of any formal documents (such as transmittals and information disclosure statements), filing of application, and reporting to the client. Includes Divisional and Reissue Applications, and Reexamination Requests. |
| PA699 | Other Patent Prosecution - International | Use only for patent prosecution activities in connection with applications that are ("International-") filed outside the home country or region of the applicant, and that can not be included under a previous code, or as instructed by the client. |
| PA700 | Other Patent-Related Tasks | |
| PA710 | Opinion Preparation | All action associated with the completing formal legal opinions on the validity, enforceability, infringement, and/or non-infringement of a patent claim. Includes opinions on infringement of a client's patent by a non-client infringer. |
| PA720 | Portfolio Analysis and Management | All action associated with reviewing, analyzing, documenting, and managing a portfolio of patents. Includes patent "due diligence" during transactional analysis. |
| PA730 | Assignments and Security Interests | All actions associated with negotiating and preparing assignment (i.e. previously registered or filed application) or security interest, including review of file history, checking status and meeting with client. Work of outside vendors in conducting searches or otherwise assisting investigation should be an expense under E100. |
| PA740 | Licensing | All actions associated with negotiating and preparing license. |
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