In this tutorial, we’ll show step-by-step instructions for quickly generating populated Information Disclosure Statements (either SB08a or 1449) with ClaimMaster. The software can retrieve bibliographic data for the prior art from the USPTO and EPO, populate the Non-Patent Literature (NPL) section from an existing list or download it from Patent Center, and also fill application data in the header of the Information Disclosure Statement form.
Below is a step-by-step guide for for generating an IDS form in ClaimMaster:
- Open the IDS tool from the ClaimMaster menu
It is under ClaimMaster->USPTO Office Action, Shells, and Forms->Generate IDS Forms.
- Specify or import a list of prior art from other files or Patent Center
In the text window below, you can specify a list of patents and publications. You have one section for publications and one for NPLs. You can type or cut & paste the entries directly into these sections. Note that each new NPL entry should start on a new line. In addition, you can import this list from the currently open Word document or from another Word file, text file, a PDF file (e.g., another SB08a form), or an XML/ZIP file (i.e., downloaded from Patent Center).
You can also pull the list of prior art references listed in the filed IDS forms directly from Patent Center by specifying the desired application # and then clicking on the Import button (only for IDS forms are hosted by Patent Center in XML format). Notably, when importing from Patent Center, you’ll also be able to pull a list of NPLs in addition to patent publications. However, the direct XML import from Patent Center only works for the applicant-cited IDS/SB08a forms, since the Patent Center doesn’t host PTO-892 forms in text format yet.
- Download bibliographic data
Click on the Download IDS Data button. This will start the download process for the listed patent/publication numbers. The software will retrieve biblio data for the US references from the USPTO, except for the pre-1972 patents published only in the image format. For these older patents and foreign patents, ClaimMaster will attempt to pull the data from the EPO’s databases (patent numbers should be in the format accepted by the espacenet.com).
As ClaimMaster fetches the data, you will notice the progress being reported in the Download Log section of the IDS tool.
Once the process completes, you can review the front pages of the specified references and also their associated bibliographic information.
- Fill-out the IDS header section (Optional)
If you’d like, you can also use ClaimMaster to fill-out the header section of the IDS form with the bibliographic data for your application. Once you specify a patent application number, ClaimMaster can pull the header information either from Private or Public PAIR. If you need to submit the same IDS for multiple applications in the family, you can specify multiple application numbers and ClaimMaster will generate multiple IDS forms, each filled with the same prior art information but having different headers.
- Generate the IDS form
Next, you are ready to the generate the IDS form (either SB08a or 1449) by clicking on the “Generate …” button. If you are generating a single form, by default ClaimMaster will open it for you, but you can specify the Save Location where the forms will be stored (Note: if you are generating multiple forms, either for different applications or because you have more than 300 references or more than 50 NPLs listed, you’ll be required to specify a valid IDS Save Location).
In case you are experiencing problems with Adobe automatically populating the form (e.g., due to permissions), you may want to first export the SB08 form data to XDP format (see checkbox above) and then import the XDP data into the form directly in the open Adobe Acrobat or Reader.
- Review the generated IDS form
At this point, the IDS form will come up (or if you are saving one ore more forms to the specific location, the fill-out forms will be placed there). Note that when the SB08 form comes up in the Adobe, you may need to click on the “Trust this document…” option in the yellow security bar at the top of the document to allow Adobe to fill the form with the data.
This is it for basic IDS generation. That said, we have a number of additional features available in the tool for further IDS customization, caching, connectivity testing, and identifying related patents in the family for IDS submissions. For more in information on this tool, please see our online manual.