UTBMS Patent Billing Code Set Drafted

Please feel free to contact me, Bill Heinze, for a copy of the rough, first draft of a proposed Patent Code Set for the I/P WorkGroup of the UTBMS Update Initiative.

The Patent Code Set is currently under review by the members of the Patent Committee while the Trademark Committee is working on a corresponding Trademark Code Set. As noted in the original UTBMS Code Set work, "the intention of these Code Sets is to minimize multiple interpretation and options for coding time. It is recognized that not all litigation work will fit neatly in a particular category. Work can overlap tasks, categories may be imprecise, or time may be expended on the truly unusual. Users should categorize the work to its primary purpose. Definitions are provided for guidance. Where uncertainty envelops substantial or repeating work, it is best for client and counsel to agree in advance on the category to be used."

"Phase" headings are the highest level category in the UTBMS coding hierarchy. Phases represent collections of tasks that occur largely in a sequence during the course of a case or matter. For this first draft of a Patent Code Set proposal, the nine phase headings include

M100 - Assessment, Development, and Administration
M200 - Patent Searching and Results Analysis
M300 - U.S. Patent Preparation
M400 - U.S. Pre-Issuance Prosecution
M500 - U.S. Post-Issuance Prosecution
M600 - Non-U.S. Patent Preparation
M700 - Non-U.S. Pre-Issuance and Pre-Opposition Prosecution
M800 - Non-U.S. Post-Issuance and Post-Publication for Opposition
M900 - Non-Prosecution

The "P" prefix was already taken by the original UTBMS "Project" Code Set. So, for now, the proposed Patent Code Set uses "M." We are also investigating whether we can use more than one letter followed by three numerals for the task codes.

The first phase heading generally corresponds to the first portion of the existing UTBMS Schedule and is intended for general work that does not fall within one of the typical patent phases. Each of the other phases consists of a number of general tasks, by chronological order in a typical patent prosecution project.

All work associated with a task would be included in that category. For example, "M440 - Office Action on the Merits" includes receipt and docketing of an Office action including claim rejections, forwarding the action to the client with any analysis and request for instructions, reviewing the clients instructions, preparing and filing a response, forwarding a copy of the filed response, and preparing any interim bill for those tasks. Each phase of task codes also includes a "99" task code for tasks that are otherwise not specified in that phase.

Out-of pocket expenses, such as translations and file histories are treated under Expenses. General expenses from the original UTBMS Code Sets are designated by the "E" prefix, while patent-specific expenses are designated by the "EM" prefix. For government fees, the first draft uses "EMXX" prefix where "XX" stands for the WIPO two-letter country code, and then uses the numeral designations from the corresponding patent offices where possible. We plan to add the other government fees for the US, EPO, and possibly JPO in the next draft. This scheme should be fairly easy to extend to trademarks. It should also be fairly easy for the software companies to quickly modify the expense codes when a patent office changes its rules. Nonetheless, as with the task codes, each group of government expense codes with have "government fees not otherwise specified" entry.

For each billing period, the expenses and time charges by attorney or other professional are recorded by task with a description of the activity. (Activity codes may be further utilized in order to standardize task descriptions, but they are not addressed here.) It is expected that clients will track this information by supplier so that they will be able to internally distinguish between non-U.S. prosecution billed (M600+) directly by foreign law firms and indirectly by U.S. firms. A budget can also be prepared for each phase, and within that, each task for the whole case and/or by quarter (or other time period). The monthly bills could then compare that month's bill and the cumulative total with the budget.

Learn more about the UTBMS Update Initiative here.