This article first appeared in the April 17, 2015 edition of IP Law 360
When vetting innovations for patenting, most research, development, and manufacturing organizations mandate that inventors complete a text-based invention disclosure form to an invention assessment committee for review. Unfortunately, having such plain text-based invention disclosure forms with unstructured and unverified data has several unintended consequences. Initially, during the patent application vetting and drafting stage, the invention assessment committee and outside counsel must spend time ensuring all of the required data is submitted and correct. Years later, even though all of the necessary invention data has been provided, there is no automated way to extract trends and status reports from the inputted data.
In 2014, the Legal Electronic Data Exchange Standard (LEDES) Intellectual Property Matter Management (IPMM) subcommittee proposed an extensible markup language (XML) invention disclosure standard . An XML-based invention disclosure standard can fulfill a critical need that conventional invention disclosure forms fail to address, namely validation of invention data and automated data analysis. An invention disclosure that conforms to the IPMM standard will receive initial data quality checks and be readable by any conforming application and structured for further handling and analysis.
Practically speaking, deploying an invention disclosure standard can result in substantial time and cost savings for an in-house patent department, as well as facilitate the transfer of invention data to outside patent counsel. Moreover, as a general principle, standardizing and structuring invention disclosure data can enable an organization to automate the tracking and identification of various metrics, including:
- technology areas that may need further patenting attention;
- fees and costs incurred in patenting a particular technology;
- divisions or individuals that are actively patenting technologies;
- status of an invention submitted by a division or individual; and
- valuation of intellectual property for monetization or mergers and acquisitions.
Despite the attractiveness of standardized XML-based invention disclosure schemas, various organizations have not yet adopted an invention disclosure standard that incorporates XML schema definition (XSD) files to achieve these benefits . Granted, XML invention disclosure standards come with their own unique rules and technical procedures. However, there are persuasive reasons to deploy an XML-based invention disclosure standard within an organization, as outlined below.
Validating Invention Disclosure Data
All invention disclosure forms require inventors to input certain information about the invention. But often the submitted data is incomplete or erroneous. For example, the inventor may omit the applicable division of an organization or transpose numbers in an important date field relating to a statutory bar date. Without validation of the inputted data, in-house attorneys or other intellectual property professionals must spend both time and money to collect and correct the data that has been submitted by the inventor.
Generally speaking, validating invention disclosure data entails verifying the information provided by the inventor to ensure that all the required data has been entered and is correct. In a typical deployment of an XML-based invention disclosure standard, an inventor utilizes an application that generates an XML document based on the inventor’s submission of invention data. The generating or receiving application then validates the generated XML document against an XML schema. Only when the XML document is successfully validated, will the receiving application store the XML document on the back-end system and transmit the XML document to the invention assessment committee for review.
As noted above, checking invention data for correctness typically also encompasses determining whether the data is within acceptable ranges and properly formatted. For example, checking the correctness of an XML element for the date of first public disclosure of an invention would include verifying that the data is in MM/DD/YYYY format as opposed to DD/MM/YYYY format, so that the receiving application can correctly process the inputted data. As another example, inputted inventor names are verified to ensure that full legal names are entered instead of inventor initials.
In the current iteration of the LEDES IPMM invention disclosure standard, all that is required to validate invention data is information about the XML schema that the invention data should be validated against. In particular, an XML namespace, including the name, version, and location (i.e., a URL of a XSD file) is used. The relative ease of validating invention disclosure data should allow organizations to be certain that invention disclosures presented to an invention assessment committee contain correct data and are meaningfully developed in the early stages of the patent application vetting process.
Assessing the Patent Footprint of a Technology and High-Performing Divisions
Corporate intellectual property management is often interested in knowing how much innovation is going into a particular product and which organizational divisions are actively submitting invention disclosures. When inventors provide information in an unstructured format, this data cannot be easily complied. In comparison, tracking this data in predefined fields (i.e., XML elements) and setting up protocols that require a particular range of input values, allows automated reports to be generated in a matter of seconds.
For example, each of the five division names of a company may be specified as valid data input for the corresponding division name XML element, but any other division name would be an invalid input. In this manner, high-performing divisions that are filing a large amount of patent applications and low-performing divisions that are not actively filing applications can easily be identified. The generated XML document for the invention in this case would contain embed¬ded metadata identifying the division name as a type of XML element and the actual division name as substantive data associated with that XML element. Based on this structuring of data, the generated XML document could then be searched to generate reports.
In addition, suppose each of the five divisions are collectively responsible for ten different technologies. Each of these ten technologies can likewise be specified as a valid data input for the associated technology XML element, but any other technology name would be recognized as invalid during the validation stage. By providing such XML elements, cutting-edge technologies with a large amount of patent application filings can be identified. On the other hand, technologies that do not have sufficient patent applications on file to adequately protect a product line from competitors entering the marketplace can be readily identified.
Tracking Legal Fees and Costs of a Patent Application
Intellectual property management personnel can always modify an XML-based invention disclosure standard schema to include additional XML elements to manage other items of interest. In the example above, the organization modified the XML schema to separately track divisions within an organization and particular technologies.
Now suppose an organization wishes to track the legal fees and costs for preparing and filing a patent application, and then separately track the legal fees and costs for prosecuting the patent application. Separate XML elements can be set up to track both of these parameters. Once such a schema is defined, the organization can follow which patent applications are exceeding a particular fees and costs threshold, such that continued pursuit of patent protection is not justified by their overall value to an organization. Moreover, if an organization remains concerned about additional parameters, the XML schema can be extended to track these parameters.
A Better Alternative to Conventional Invention Disclosure Forms
Although deploying an XML-based invention disclosure system takes work, organizations that set up such a system will generally reap the rewards a year or two down the road. Automated and customized reports that are based on reliable invention data can be used to inform the decision-making process of both an in-house legal department and an organization’s technical management.
When considering whether to invest in an XML-based invention disclosure system, in-house intellectual property personnel should keep in mind that standardizing invention data enables checking of the data for completeness and accuracy before in-house counsel review. Such validation will save both time and money that is expended in collecting and correcting invention data for each potential patent application that comes in the door. In addition, the XML-based standard can be used to identify technology areas that may need further patenting attention, divisions or individuals that are actively patenting technologies, and fees and costs incurred in patenting a particular patent application. Although there is no one size fits all solution to an XML-based invention disclosure schema, the flexibility that XML provides can enable an organization to automate the tracking and identification of any metric of interest.
 Both XML and XSD are open standards that are maintained by the World Wide Web Consortium.