WO2002080039A1 - Internet-based patent and trademark application management system - Google Patents
Internet-based patent and trademark application management system Download PDFInfo
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- WO2002080039A1 WO2002080039A1 PCT/US2002/009750 US0209750W WO02080039A1 WO 2002080039 A1 WO2002080039 A1 WO 2002080039A1 US 0209750 W US0209750 W US 0209750W WO 02080039 A1 WO02080039 A1 WO 02080039A1
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- WIPO (PCT)
- Prior art keywords
- tasks
- matters
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- Prior art date
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- 230000008520 organization Effects 0.000 claims description 13
- 238000013523 data management Methods 0.000 claims description 6
- 230000000694 effects Effects 0.000 description 13
- 238000007726 management method Methods 0.000 description 13
- 230000009471 action Effects 0.000 description 9
- 238000000034 method Methods 0.000 description 6
- 230000004044 response Effects 0.000 description 6
- 230000008569 process Effects 0.000 description 5
- 238000004891 communication Methods 0.000 description 2
- 230000004048 modification Effects 0.000 description 2
- 238000012986 modification Methods 0.000 description 2
- 230000006978 adaptation Effects 0.000 description 1
- 230000003466 anti-cipated effect Effects 0.000 description 1
- 238000004364 calculation method Methods 0.000 description 1
- 230000008859 change Effects 0.000 description 1
- 238000012423 maintenance Methods 0.000 description 1
- 230000001105 regulatory effect Effects 0.000 description 1
- 238000013519 translation Methods 0.000 description 1
Classifications
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- G—PHYSICS
- G06—COMPUTING; CALCULATING OR COUNTING
- G06Q—INFORMATION AND COMMUNICATION TECHNOLOGY [ICT] SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES, NOT OTHERWISE PROVIDED FOR
- G06Q50/00—Information and communication technology [ICT] specially adapted for implementation of business processes of specific business sectors, e.g. utilities or tourism
- G06Q50/10—Services
- G06Q50/18—Legal services
- G06Q50/184—Intellectual property management
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- G—PHYSICS
- G06—COMPUTING; CALCULATING OR COUNTING
- G06F—ELECTRIC DIGITAL DATA PROCESSING
- G06F16/00—Information retrieval; Database structures therefor; File system structures therefor
- G06F16/90—Details of database functions independent of the retrieved data types
- G06F16/93—Document management systems
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- G—PHYSICS
- G06—COMPUTING; CALCULATING OR COUNTING
- G06Q—INFORMATION AND COMMUNICATION TECHNOLOGY [ICT] SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES, NOT OTHERWISE PROVIDED FOR
- G06Q10/00—Administration; Management
- G06Q10/10—Office automation; Time management
Definitions
- the invention relates generally to managing patent and trademark applications, and more specifically to an internet-based system for management of patent and trademark applications.
- Patent agents and attorneys that specialize in patent prosecution typically draft dozens of patent applications per year, and are engaged in prosecution of many more. Each of these must be carefully tracked by the patent attorney or legal assistant, so that important status information such as potential bar dates, deadlines for response to office action amendments and responses, and other data are not overlooked. Management of this data has historically been managed by inclusion of each item on a docket that is tracked on paper docketing calendars, or more recently using commercially available electronic docketing software that serves the same purpose as a calendar.
- a system for managing patent application data via the Internet comprising matter, task, and security modules.
- the matter module is operable to manage data such as docketing data relating to patent matters
- the tasks module is operable to manage tasks related to each matter managed by the matter module
- the security module is operable to restrict access to task and matter data management to selected system users.
- the system is implemented in some embodiments as a World Wide Web site on the Internet, which in further embodiments comprises various components such as an application server, a Java server, and a database.
- Figure 1 shows a web page from an Internet-based patent and trademark management system, consistent with an embodiment of the present invention.
- Figure 2 shows a messages web page, consistent with an embodiment of the present invention.
- Figure 3 shows a new tasks web page, consistent with an embodiment of the present invention.
- Figure 4 shows a new matters web page, consistent with an embodiment of the present invention.
- Figure 5 shows an organization view web page, consistent with an embodiment of the present invention.
- Figure 6 shows a templates web page, consistent with an embodiment of the present invention.
- Figure 7 shows an activities web page, consistent with an embodiment of the present invention.
- Figure 8 shows a user management web page, consistent with an embodiment of the present invention.
- Figure 9 shows a message list web page, consistent with an embodiment of the present invention.
- Figure 10 shows an activities web page, consistent with an embodiment of the present invention.
- Figure 11 shows an entities view web page for a selected matter, consistent with an embodiment of the present invention.
- Figure 12 shows an associated parties web page for a selected matter, consistent with an embodiment of the present invention.
- Figure 13 shows an IDS documents web page of data associated with a selected matter, consistent with an embodiment of the present invention.
- the present invention provides a system for managing a docket of patent or trademark-related applications, and for coordinating and communicating such information among multiple parties involved in the patent or trademark application process.
- the invention comprises in one embodiment a system for managing patent application data via the Internet, and comprises matter, task, and security modules.
- the matter module is operable to manage data such as docketing data relating to patent matters
- the tasks module is operable to manage tasks related to each matter managed by the matter module
- the security module is operable to restrict access to task and matter data management to selected system users.
- the system is implemented in some embodiments as a World Wide Web site on the Internet, which in further embodiments comprises various components such as an application server, a Java server, and a database.
- FIG. 1 illustrates one embodiment of a front World Wide Web (WWW) web page of a system consistent with the present invention.
- a user will log in to the example system shown here by entering a user name at 101, and a password at 102. If a prospective user does not have an account but wishes to create one, the user may do so by selecting to register at 103.
- WWW World Wide Web
- a home screen presenting the user with various options. For example, the user may be presented with or may select to view his new messages, as is shown generally in Figure 2.
- Each message as shown in Figure 2 includes a message type represented by an icon at
- an indication of the number of attachments to the message at 202 may select a matter title indicating a matter related to the message at 203, an indication of who the message is from at 204, a message title at 205, and the time and date the message was received at 206.
- the user may select a message to view the message, may select a user to send a reply message to the user, may select the message title to display the message, may select the number of attachments indicator to view the attachments, or may take other actions in response to the mew messages screen shown in Figure 2.
- the user may also be presented with or select to view a new tasks screen as shown in Figure 3, which illustrates new tasks associated with the particular logged in user.
- Each task has associated data that is displayed in the new tasks view, including the task name at 301, the type of task at 302, the title of the matter the task is related to at 303, the status of the task at 304, and a date associated with the task if appropriate at 305.
- Tasks may be flagged as shown at 306, so that a user may elect to view only flagged tasks or only new and flagged tasks, thereby viewing a subset of tasks that are of higher importance to the user.
- the user will be able to generate similar task lists, where the lists are limited to or sorted by client, by date due, by date completed, by status, by type, or by other similar criteria.
- Users may also elect from the home page of the example embodiment of the invention described here to view new matters, as shown in Figure 4.
- the title of each new matter is shown at 401, and the type of matter is shown at 402.
- the matter status is shown at 403, and additional matter material may be shown in further embodiments of the invention.
- users may also view in further embodiments of the invention other matter summary views similar to the one shown in Figure 4, such as a view of all matters relating to a particular client, all matters with tasks due during a certain time period, all matters with a certain matter status, or any other such customized matter view.
- Matters and users maybe associated in some embodiments of the invention with organizations, such as with particular client companies or particular law firms. These organizations are managed by the example embodiment of the system discussed here as is shown in Figure 5. Each organization is identified by name as shown at 501, and has a type associated with it to identify the nature and role of the organization. The contact or agent for each organization is shown at 503, along with a contact phone number 504 and e-mail address 505 for each contact.
- Organization data may in some embodiments of the invention be edited or added only by system administrators, and in further embodiments select members who are part of an organization will be given authority to edit existing organization data.
- Tasks may be created for matters by manually entering tasks, or in some embodiments of the invention may further be created automatically via templates or other predefined task generation utilities.
- Figure 6 illustrates a view of templates available for application to matters in one embodiment of the invention.
- the template name is shown at 601
- the organization associated with the template is shown at 602.
- the last modification of the template is reflected at 603 and 604, where the modifying user's identity and the date and time of the last modification are shown.
- the user has the option to delete existing templates as shown at 606, to create new templates, or to edit existing templates as shown at 605.
- Templates include such items as creating checklists to ensure proper drafting criteria are met, creating tasks with associated dates such as deadlines for responses, and other similar tasks that are common to many applications and have predictable elements.
- a client may request that a certain checklist of drafting criteria be completed before each filing, and the checklist may be implemented as a task associated with each of the client's matters via use of a template.
- creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules.
- Figure 7 illustrates the activities that are associated with an amendment and response to a typical United States Patent and Trademark Office issued Office Action.
- the typical shortened statutory three-month date for response is shown as an activity item at 701, and is followed by subsequent deadlines for taking each allowable extension of time past that date. These items will then automatically be added to the task list of each matter to which the template is applied, creating appropriate task entries for that matter.
- Figure 8 illustrates a user management view of all users that have registered with the embodiment of the present invention described here.
- the user name or alias is shown at 801
- the entity type is shown at 802
- the full name of the entity is shown at 803, and contact information including phone and e- mail are shown at 804 and 805.
- the user management screen shown here allows a system administrator to delete users at 806, and indicates the source of the user at 807.
- FIG. 9 An example message list is shown in Figure 9, which illustrates a variety of messages for a particular user.
- the subject or name of the message is shown at 901, and the title of the matter to which the message pertains is shown at 902.
- the sender of the message is shown at 903, and the date the message was received is shown at 904.
- the user is shown a Delete object that may be selected to delete the associated message.
- the type of message is indicated at 906, and the number of attachments to the message are shown at 907. Note that in this example, several automatically generated messages such as reports of actions completed or docket dates are shown in the message box.
- Figure 10 shows a view of tasks or activities associated with a particular matter.
- the activity is shown at 1001, and is selectable by the user. Selecting the activity by name will open the detail list for that particular activity. Any restrictions on access to the activity are shown at 1002, and the status of the activity is shown at 1003. Relevant dates for the activity, which may vary in type depending on the activity status, are shown at 1004. At 1005, the user may edit or delete listed activities. Because the matter shown here is an issued patent, the patent number, issue date, and other information are known and are displayed at 1006 in a matter page header.
- Figure 11 shows an entities view of a particular selected matter. The parties in interest in this example comprise Intel Corp., as shown at 1101. The law firm associated with the matter is shown at 1102.
- the embodiment of the invention shown here also shows additional associated parties, such as corporate counsel responsible for overseeing the matter, the attorney and paralegals involved with the case, and other users or entities involved with the matter.
- additional associated parties such as corporate counsel responsible for overseeing the matter, the attorney and paralegals involved with the case, and other users or entities involved with the matter.
- This is shown in Figure 12, where the associated users are listed at 1201.
- the role each user has in the matter is shown at 1202, and the status of the user is shown at 1203.
- a user may be invited to join a matter, but is not listed as active in this embodiment of the invention until the user takes affirmative steps to join in a matter.
- Figure 13 is an IDS documents view of data associated with a matter, and shows documents that must be disclosed in an Information Disclosure Statement or IDS to the USPTO. Because no documents have been associated with this example matter, none are illustrated here.
- the patent number, issue date, country of issue, name, and translation are shown at 1301.
- the author's name, document title, citation, referred pages, and publication date are recorded and are shown at 1302.
- the use case system will be used in a decentralized way as a web-based application where multiple law-firms and corporations, as well independent lawyers and consultants, can all come together to collaborate on patents in which they are involved.
- the service provider will deal with various law-firms and corporations to create a community where patents filing process can be vastly streamlined. All such law firms and corporations (referred to as 'Business entities') will be dealing directly with the service provider (sending all the materials to be scanned, etc. to them). There will be an administrator at the service provider, who will be to verify business entities details and assign them a account number (provided by our system).
- the business entities will assign an account administrator who will be responsible for managing who participates on behalf of the entity in the patent process.
- the business entity does this by sending an invitation to a prospective participant with an access code that allows him to access information relating to the business entity.
- the administrator may also authorize such participant to charge matter and other related costs to specified account number.
- Membership in groups is regulated such that anyone can create a user account and associated login. This person can then create a new matter to be managed via the service provider's web site, and can specify other participants for that matter.
- the service provider then sends e-mail to these invited participants with an invitation to join and a password or secure link. An invitee can then log in, and select to access the matter from his matters list, and supply a password received in the e-mail to associate the new matter with his particular user account and matters list.
- One example involves an attorney who logs on, opens a new matter, then sends invitations to inventor, paralegals, etc. For each one of these, he provides an email address to which an invitation is sent, and a password with which the invited users can access the matter. Inventor gets email with a site URL, matter number and password. When he clicks it, he is required to sign in. When he gets to my matters, he presses 'Access New Matter' button, which asks him for matter number and password. He fills in this information from what he received by email. This matter is now made available on his matter list.
- Thomas Edison signs up with the service, and creates a new matter. He fills in notes regarding the invention and other information, and finally decides on an attorney or law firm to work with. He sends invitations to selected attorneys there. The attorney accepts the invitation, and then sends out additional invitations to paralegals and other associated users.
- Idle Joe signs up, and goes to 'My matters'. He sees nothing there. He cannot access any existing matters to which he has not been invited. He opens a new matter, and plays around with the functions provided by the website. He realizes there's nothing at the service provider for him, then logs off and goes on to cause trouble elsewhere. New users who do not have any associated matters and are not members of any group will periodically have their accounts deactivated to ensure smooth operation of the service provider system.
- This use case example further provides billing functionality.
- the service provider provides the option of billing for each open matter, and allows creating billing entries for services associated with a matter, such as docketing, prior art searches, drafting, drawing preparation, or other related services or products.
- the service provider's system is configured such that the entities that interact with the system are categorized into individuals, businesses, clients, law firms, the USPTO, and the service provider, as explained in greater detail below.
- Individuals includes ordinary individual users who could be attorneys working for a law-firm, independent attorneys, employees of corporations, independent consultants, paralegals, etc. In short, it includes any person who is involved or expected to be involved in the managing of a matter through to completion.
- Business entities allows several individuals to participate in the process under the same umbrella. Two types of Businesses are recognized: Client, and Law Firm businesses. A Client participates as a requester of patent services and law firm acts as provider of such services.
- Clients are the entities that are seeking patent services.
- the client can be a corporation, university, or other entity, and essentially defines a grouping of individuals who can share information that is common to them by virtue of their association with the client entity.
- a corporation will have a preferred set of law firms, a preferred set of foreign associates, and other preferences and relationships.
- An account administrator for the corporation can assign privileges to different people for different pieces of information associated with the Corporation.
- a law firm is a grouping of individuals, including lawyers, paralegals, and other individuals who can share information common to them by virtue of their association with a legal services provider. For example, lists of client companies and information about individuals within them is information may be accessible to various degrees throughout a law firm.
- a law firm administrator can invite people to be members of the law firm group and give privileges to them for access to various information.
- Still other entities may be created and invited to participate in a matter to facilitate patent legal services.
- the United States Patent and Trademark Office and select examiners may be given certain access to relevant matters, outside service providers such as scanning service providers may be given access to certain data, and the service provider operating the website may have varying degrees of access to data.
- the service provider will desirably manage the various accounts and grouping of entities, and provide customer support for the various services and functions of the website.
- the service provider will not only have access to certain data, but will be able to determine billing for services provided via the website, account information of the member entities, and will have account management capability.
- the various matters managed via the service provider include a client name, a client contact name, a law firm or service provider name, a law firm matter number, a client reference number, a unique reference number provided by the service provider, a foreign associate for various corresponding foreign filings, and identification of the various law firm members assigned to the matter.
- Law firm roles include billing attorney, working attorney, signature attorney, paralegal, docketing specialist, IDS specialist, and various secretaries that may be associated with the other law firm members.
- Individuals can have one or more roles in a client organization, and may belong to several organizations or groups via a single user name or login ID. It is anticipated that a typical individual will serve various roles in a number of different matters, and will have access via a single login or user ED to information related to each of the various matters with which he is associated.
- Business entities may further have approved lists of law firms, foreign associates, and other approved entities. Individual attorneys may also be approved, and lists of individuals working with the business entity matters within other entities may be used.
- An administrator representing a business or corporate entity desires to use the service provider to manage patent- related legal services.
- the administrator creates a new account within which matters created by its approved members can be created, managed, and billed.
- the business account manager can add new law firms, attorneys, foreign associates, business representatives, inventors, and other members.
- the business account administrator can further deactivate or remove various members from the business account or matters owned by the business account, and can generate reports and retrieve information relating to the various matters and entity involvement in the matters owned by the business account.
- a law firm entity will have the ability to create new client records, including invitation to business entities to join matters or create accounts.
- the law firm will also have the ability to enter billing and fee data, including calculation of fees for particular services or hourly rates, and entry of fee codes and billing descriptions.
- the law firm further can invite new users to be members of the law firm, assign users to roles within specific matters, and manage the role of various users within the law firm and within matters with which the law firm is associated.
- Individuals will be able to join existing business groups , law firms, or other entities with the approval of the entity. Association with an entity may be ad the individual's request, or by invitation from the entity.
- Each individual whether a member of another entity or not, will be able to create matters, invite others to participate in the matters, receive and send e-mail regarding the matters, and view the status of his matters.
- the individual can create or update notes associated with his matters, check outstanding actions or dates for his matters, generate matter reports, print documents, and browse other information relating to his matters.
- This information includes viewing invited and associated entities for each matter, viewing matter task information, viewing billing or invoice information, viewing related case information, and viewing docketing information.
- the individual will also be able to copy, delete, remove, archive, or verify matters, and will be able to search for matter information via law firm docket number, client name, serial number, prior docket number, related case number, inventor name, and other information.
- the matters will have a notes or discussion area for maintaining matter-related notes, and will have data records enabling automated e-mail reminders of actions due and case status.
- Trademarks may be managed as matters, and will have information including the actual trademark sought, action data, country-related data, conflict opposition data, auxiliary files or tables, reports, recurring date menus, utility menus, agent details, and country details.
- Managed patents will similarly have record space configured for storing invention or disclosure data, country application data, actions due or docketing data, auxiliary files and tables, reports, maintenance fee data, utility menus, actions menus, and cost tracking and budgeting data.
- Information disclosure statement (IDS) records are associated with various other matters such as filed or unfiled patent applications, and are managed via functions that include the ability to copy documents to or from other matters to which the user has access, to delete or add documents associated with a particular matter, to combine references cited from various matters, to scan or view images of various references, to view US patent documents by patent number, title, or other identifier, to view foreign patent documents, to view non-patent documents, or to view all associated documents.
- Documents associated with an IDS may be marked as relevant or not relevant, or may be unmarked. The documents associated with an IDS for a particular matter may therefore be viewed, printed, merged, sorted, or otherwise managed based on whether they are marked relevant, marked not relevant, or unmarked.
- Marked documents may be merged into forms such as a standard form 1449 for citing relevant known art to the USPTO. Documents that have been cited are marked separately from those that have been marked but not yet sent, to enable accurate tracking and determination of which documents have been cited and which documents are yet to be cited.
- Each EDS reference document will have associated records that enable accurate identification of the document, such as US patent number, foreign patent number, issue date, priority date, inventor names or author names, publication name or other citation of non-patent publications, and title. It is desired that the records associated with each EDS reference be sufficient to meet the formal reporting requirements in citing the document to the USPTO via a form 1449 or other appropriate method.
- scanning centers may have very limited capabilities relative to a typical member or entity.
- a scanning center may be limited to uploading scanned data to be associated with a particular matter, entering billing or invoice charges and descriptions, and generating reports of uploaded data and billing charges.
- a business entity or other client can easily change law firms, attorneys, or the role of other members in various matters managed via the service provider with minimal effort or expense.
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Abstract
Description
Claims
Priority Applications (3)
Application Number | Priority Date | Filing Date | Title |
---|---|---|---|
AU2002254440A AU2002254440B2 (en) | 2001-03-29 | 2002-03-28 | Internet-based patent and trademark application management system |
CA002444437A CA2444437A1 (en) | 2001-03-29 | 2002-03-28 | Internet-based patent and trademark application management system |
EP02723671A EP1386262A4 (en) | 2001-03-29 | 2002-03-28 | Internet-based patent and trademark application management system |
Applications Claiming Priority (4)
Application Number | Priority Date | Filing Date | Title |
---|---|---|---|
US28038601P | 2001-03-29 | 2001-03-29 | |
US60/280,386 | 2001-03-29 | ||
US09/872,701 | 2001-06-01 | ||
US09/872,701 US20020184234A1 (en) | 2001-06-01 | 2001-06-01 | Internet-based patent and trademark applicaton management system |
Publications (1)
Publication Number | Publication Date |
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WO2002080039A1 true WO2002080039A1 (en) | 2002-10-10 |
Family
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Family Applications (1)
Application Number | Title | Priority Date | Filing Date |
---|---|---|---|
PCT/US2002/009750 WO2002080039A1 (en) | 2001-03-29 | 2002-03-28 | Internet-based patent and trademark application management system |
Country Status (4)
Country | Link |
---|---|
EP (1) | EP1386262A4 (en) |
AU (1) | AU2002254440B2 (en) |
CA (1) | CA2444437A1 (en) |
WO (1) | WO2002080039A1 (en) |
Cited By (11)
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US6970842B1 (en) * | 2000-03-21 | 2005-11-29 | Halo Management, Llc | Project docket management apparatus and method |
GB2453318A (en) * | 2007-09-03 | 2009-04-08 | Idan Zuta | Method and system for authoring a patent application |
US8600900B2 (en) | 2011-10-03 | 2013-12-03 | Black Hills Ip Holdings, Llc | Patent continuation analysis |
US8892547B2 (en) | 2011-10-03 | 2014-11-18 | Black Hills Ip Holdings, Llc | System and method for prior art analysis |
US9659071B2 (en) | 2005-07-27 | 2017-05-23 | Schwegman Lundberg & Woessner, P.A. | Patent mapping |
US9904726B2 (en) | 2011-05-04 | 2018-02-27 | Black Hills IP Holdings, LLC. | Apparatus and method for automated and assisted patent claim mapping and expense planning |
US10546273B2 (en) | 2008-10-23 | 2020-01-28 | Black Hills Ip Holdings, Llc | Patent mapping |
US10579662B2 (en) | 2013-04-23 | 2020-03-03 | Black Hills Ip Holdings, Llc | Patent claim scope evaluator |
US10810693B2 (en) | 2005-05-27 | 2020-10-20 | Black Hills Ip Holdings, Llc | Method and apparatus for cross-referencing important IP relationships |
US11080807B2 (en) | 2004-08-10 | 2021-08-03 | Lucid Patent Llc | Patent mapping |
US11461862B2 (en) | 2012-08-20 | 2022-10-04 | Black Hills Ip Holdings, Llc | Analytics generation for patent portfolio management |
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2002
- 2002-03-28 EP EP02723671A patent/EP1386262A4/en not_active Ceased
- 2002-03-28 AU AU2002254440A patent/AU2002254440B2/en not_active Expired
- 2002-03-28 WO PCT/US2002/009750 patent/WO2002080039A1/en not_active Application Discontinuation
- 2002-03-28 CA CA002444437A patent/CA2444437A1/en not_active Abandoned
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Also Published As
Publication number | Publication date |
---|---|
EP1386262A1 (en) | 2004-02-04 |
CA2444437A1 (en) | 2002-10-10 |
EP1386262A4 (en) | 2007-12-19 |
AU2002254440B2 (en) | 2008-02-07 |
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