The Problem

The Corporation’s IP department was having challenges managing their IDS’ (Information Disclosure Statements). This included incurring avoidable RCE and $240 filing fee costs that were impacting their budget, as well as accumulating a backlog of IDS’ that needed to be urgently filed.

The Challenges Faced

Their IDS work was being managed by in-house paralegals that was taking up a lot of their time, causing them to be overworked and the IP department understaffed.

No visibility to which IDS’ were more urgent than others based on the prosecution history.

Leakages in PTO fees- $1300 / $1900 RCE and $240 IDS filing fees

A backlog of IDS’ accumulated over time that needed to be filed

No consistent organization wide processes and procedures for managing their IDS’

Cost pressures due to a shrinking IP budget

Recommended Solutions

The Corporation implemented BlackBox IP’s fully managed IDS service. Utilizing a combination of the BlackBox IDS technology tool and BlackBox paralegal staff, all IDS’ are prepared and uploaded to EFS Web for the Corporation to perform a final review and hit the “submit” button.

BlackBox IP analyzed historical RCE filings and identified the root cause was inconsistent / incomplete review of invention disclosures. At the time of the notice of allowance, such errors were discovered leading to RCE’s. BlackBox IP conducted invention disclosure reviews of all US pending and published matters and filed IDS’ immediately to avoid any future RCE’s.

Further, as part of the BlackBox IDS standard business take-on, a historical audit was performed to identify any missing references for pending / published US matters. This helped inform the Corporation that they had a large backlog of matters with uncited references.Using BlackBox IDS, our paralegal staff was able to easily identify urgent IDS’ and prioritize their filing without paying any avoidable official fees.

BlackBox IDS has a unique feature of capturing early notifications from Private PAIR alerting that a Notice of Allowance will be mailed within the next 10 days. BlackBox IP’s paralegal staff relies on these notifications to eliminate any RCE’s due to missing references. Lastly, by implementing a consistent IDS process throughout the organization, the Corporation was able to achieve efficiency gains, cost savings and overall risk reduction.

What We Achieved as Final Outcome

1,480 IDS filed in the last 15 months

$370K hard cost savings based on eliminating fees associated with RCE’s and late IDS filing fees

300% increase in the first IDS filing within 90 days of patent application filing

87% of IDS’ were filed in Q1 2020 with no fee

Implemented company-wide standard IDS workflow processes leading to efficiency gains and an increased attorney

IDS approval turnaround time of 64%

By outsourcing the IDS work to BlackBox IP, the Company’s in-house paralegal staff was able to free up numerus hours per week to work on other important prosecution activities.

Achieved the corporate mandate of leveraging technology tools to make their IP department more efficient.