UTBMS Patent Billing Codes

Code Identifier Description

PA100 - Assessment, Development, and Administration
PA110 Fact Investigation and All actions to investigate and understand the facts of a matter that are not included under another
Development patent task code below. Covers interviews of client personnel and potential witnesses, review of
documents to learn the facts of a potential case, work with an investigator, and all related
communications and correspondence.
PA120 Analysis/Strategy The thinking, strategizing, and planning for a case that is not included under other patent task
codes below. Includes discussions, writing, and meetings on case strategy. Also includes initial
legal research for case assessment purposes and legal research for developing a basic case
strategy. Most legal research and/or other activity will be under the primary task for which the
research is conducted, such as research for a response to an office action under PA430.
PA130 Document/File Management A narrowly defined task that includes creating and populating document and other databases or
filing systems, that does not fit under other task codes below. Includes the planning, design, and
overall management of this process. Work of outside vendors in building litigation support
databases should be an expense under E100. Calendaring (or "docketing" in the U.S.) should be
included under the appropriate task codes below for each matter unless, otherwise instructed by
the client.
PA140 Budgeting Covers developing, negotiating, and revising the budget for a matter that does not fit under other
task codes below. Cost estimates which are included as part of other activities, such as reporting
an Official Communication from a patent Office, should be included under the appropriate task
codes below, unless otherwise instructed by the client.
PA199 Other Assessment, Use only for assessment, development, administration and other activities that can not be included
Development, or Administration under a previous code, or as instructed by the client.
PA200 - Patent Investigation and Analysis
PA210 State-of-the-Art Investigation All actions associated with determining the state of the art in a particular area of technology,
including definition of the scope and field of the search, searching, analysis of search results, and
reporting to client. Also known as a "collection" search, a state-of-the- art search is the broadest
and most general type of patent search with a field that may include published patent applications,
expired and unexpired patents, non-patent literature, and/or other sources. State-of-the-art
searches are typically conducted, if at all, during the conceptual design phase when the scope of
the investigation is least defined. State-of-the-art searches may also be used to help identify
technology that is disclosed in expired patents and may therefore be freely copied by anyone. Work
of outside vendors in conducting searches or otherwise assisting investigation should be an
expense under E100.
PA220 Patentability Investigation All actions associated with determining the approximate scope of patent protection that may be
available for a client's invention, including definition of the scope and field of the search, searching,
analysis of search results, and reporting to client. Also known as a "novelty" or "prior art" search,
the field of a patentability search is often similar to that of a state-of-the-art search. However,
patentability searches are typically conducted after any market research or conceptual engineering
has been completed so that the scope of the investigation is described by at least an informal

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structural or functional description of an invention. Often a patentability search will also locate
expired and/or lapsed patents disclosing technology that may be freely copied in order to improve
the invention. Thus, a patentability search may include various aspects of a state-of-the-art search.
Work of outside vendors in conducting searches or otherwise assisting the investigation should be
an expense under E100.
PA230 Clearance Investigation All actions associated with determining whether a proposed product or process might be covered
by the claims of patents and/or published patent applications, including definition of the scope and
field of the search, searching, search field integrity checking, analysis of search results, and
reporting to client. Also known as a "right-to-use" or "non-infringement" search, the field of a
clearance search is often limited to the patent claims in a very narrow technical area. The purpose
of an infringement search is to determine whether there are claims in those patent documents that
might be broadly construed to cover a well-defined, commercial embodiment of a product or
process. Since interpretation of the patent claims may require review of the disclosure, patentability
and clearance investigations are sometimes performed concurrently. Work of outside vendors in
conducting searches or otherwise assisting the investigation should be an expense under E100.
Any formal clearance opinion directed at specific patents should be prepared separately under
PA710.
PA240 Validity Investigation All actions associated with determining whether a patent claim is invalid including definition of the
scope and field of search, searching, analysis of search results, and reporting the search results to
the client. A validity search attempts to locate "prior art" documents and/or other information that
were not considered during the examination of the corresponding patent application but appear to
disclose the features recited in a patent claim. The field of the search can vary widely depending
upon the technology under consideration. Work of outside vendors in conducting searches or
otherwise assisting the investigation should be an expense under E100. Any formal invalidity
opinion should be prepared separately under PA710.
PA250 Publication Watches All actions associated with planning, completing, and reporting the results of periodic searches for
new publications in connection with a specific assignee, area of technology, patent application, or
issued patent. For example, this may include watching the file history of published applications for
new Official Communications, responses, and/or publication for opposition. Work of outside
vendors in conducting searches or otherwise assisting the investigation should be an expense
under E100.
PA260 Infringement Investigation All actions associated with determining which of a client's patent claims may cover a non-client's
products or processes, including collecting patent and/or product information, obtaining any product
samples, comparing the products to the client's patent claims, and reporting the results to the
client. Work of outside vendors, such as private investigators, in assisting the investigation should
be an expense under E100. Any formal infringement opinion should be prepared separately under
PA710, including any formal documentation that is to be used in order to support a complaint for
patent infringement.
PA270 Status Investigation All actions associated with determining the status of a published or unpublished patent application,
or issued patent, including application and/or database review and forwarding report to client.
Includes annuity and/or maintenance fee status investigations. Work of outside vendors in
conducting searches or otherwise assisting the investigation should be an expense under E100.

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PA299 Other Patent Investigation and Use only for patent investigation and analysis activities that can not be included under a previous
Analysis code, under PA710 (Opinion Preparation), or as instructed by the client.
PA300 - Domestic Patent Preparation
PA310 Provisional Application All actions associated with completing a provisional patent application that is to be filed in the
Preparation - Domestic ("domestic") home country or region of the applicant, including review of invention disclosure
materials and prior art, interviews with the inventors, drafting and revision of application,
preparation and execution of formal documentation (such as assignments, transmittals, and
biological deposits), filing of application, and reporting to the client. Note that government fees and
external expenses (or "disbursements" in the U.S.) are included under E100.
PA320 Non-Provisional Application All actions associated with completing a non-provisional utility or utility model (but not design or
Preparation - Domestic provisional) patent application that are to be filed in the ("domestic") home country or region of the
applicant, including review of invention disclosure materials and prior art, interviews with the
inventors, drafting and revision of application, preparation and execution of formal documents
(such as assignments, declarations, information disclosure statements, transmittals, and biological
deposits) filing of application, and reporting to the client. Includes preparation of PCT, European
and other regional applications when filed in the home country of the applicant. Note that
government fees and external drafting expenses (or "disbursements" in the U.S.) are included
under E100.
PA330 Design Application Preparation All actions associated with completing a design patent (but not utility or utility model) application or
- Domestic design registration application that are to be filed in the ("domestic") home country or region of the
applicant, including review of invention disclosure materials and prior art, interviews with the
inventors, drafting and revision of application, preparation and execution of formal documents
(such as assignments, declarations, information disclosure statements, and transmittals) filing of
application, and reporting to the client. Note that government fees and external drafting expenses
(or "disbursements" in the U.S.) are included under E100.
PA340 Plant Patent Preparation - All actions associated with completing plant patent applications that are to be filed in the
Domestic ("domestic") home country or region of the applicant, including review of invention disclosure
materials and prior art, interviews with the inventors, drafting and revision of application,
preparation and execution of formal documents (such as assignments, declarations, information
disclosure statements and transmittals, and biological deposits) filing of application, and reporting
to the client. Note that government fees and external imaging expenses (or "disbursements" in the
U.S.) are included under E100.
PA350 Continuing Application All actions associated with completing a continuing patent application (claiming priority to an
Preparation - Domestic earlier-filed, parent application in the same country, without adding any new disclosure) that are to
be filed in the ("domestic") home country or region of the applicant, including review of parent
application, drafting and execution of any formal documents (such as transmittals and information
disclosure statements), filing of application, and reporting to the client. Includes Divisional and
Reissue Applications, and Reexamination Requests. Also includes PCT National Phase entry
where the parent PCT International Application was previously filed in the same country. For PCT
National Phase entry in other (non-domestic or "international") countries, use PA500. Note that (so-
called "continuation-in-part") patent applications extending the scope of the disclosure (or adding
"new matter" in the U.S.) in an earlier-filed application are included under PA310- 340. Also note

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that government fees (and other "disbursements" in the U.S.) and external imaging expenses are
included under E100.
PA360 Validation Patent Application All actions associated with the preparation and filing of applications for validation of an issued
Preparation - Domestic regional patent in the ('domestic') home country of the applicant. Note that PCT National Phase
Entry is a continuing application process included under PA350 or PA550.
PA399 Other Patent Application Use only for patent application preparation activities for applications that are to be filed in the
Preparation - Domestic ("domestic") home country or region of the applicant, and that can not be included under a previous
code, or as instructed by the client.
PA400 - Domestic Patent Prosecution
PA410 Information Disclosure All action associated with bringing prior art, or other information, to the attention of an Examiner in
Statement - Domestic the home country of the applicant in connection with an application that was previously filed under
PA300. Note that Information Disclosure Statements that are filed with the application are included
under PA300.
PA420 Preliminary Amendment - All action associated with revising an application prior to the examination of the application on its
Domestic merits in the home country of the applicant for an application filed under PA300, including
preparation of amendments and revised drawings that do not affect the scope of the disclosure.
Note that Preliminary Amendments that are filed with a continuing application without affecting the
scope of the disclosure are included under PA350. Also note that preliminary amendments
extending the scope of the disclosure ("new matter" in the U.S.) in an earlier-filed application and
requiring the issuance of a new application number ("continuation-in-part" or "CIP" applications in
the U.S.) are included under PA310-340.
PA430 Official Communication - All action associated with processing an Official Communication from a Patent Office (known as an
Domestic "Office Action" in the U.S. when directed toward the merits of the application) in the home country
of an application for an application filed under PA300, including initial review and any calendaring
("docketing" in the U.S.) of any response deadline, report to client with any proposed response,
review of applicant's instructions and inventor's comments, preparation of amendments and/or
responsive arguments, examiner interviews, and report of actions to the client. Includes activities
associated with Official Communications not affecting the merits of the application, such as filing
receipts, restriction/election requirements, and annuity/maintenance fee payments. Also includes
"Petitions" and other requests for supervisory action that are not decided by a quasi-judicial
appellate tribunal within the Patent Office, such as petitions to reinstate an abandoned application
in the U.S. Appeals, Oppositions, Interferences, and other quasi-judicial proceedings.
PA440 Quasi-Judicial Administrative All action associated with completing a quasi-judicial proceeding before an administrative tribunal
Proceedings - Domestic associated with the Patent Office of the home country of the applicant in connection with an
application filed under PA300, including Appeals, Oppositions, Interferences, and other ex-parte
and inter-partes proceedings. Includes collecting evidence, preparing and filing motions, briefs,
responses, replies, surreplies, and other documents, attending conferences, depositions, hearings,
and other proceedings. Does not include requests for supervisory action ("Petitions" in the U.S.)
under PA430. Note that external expenses (or "disbursements" in the U.S.) are included under
E100.

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PA450 Post-Issuance Remedial Action All actions associated with completing activities in connection with any necessary remedial action,
- Domestic after issuance of a patent in the ('domestic') home country of the applicant, such as the filing of a
Certificate of Correction, and correcting patent term in view of patent term adjustment
(mis)calculation in the U.S.. Note that government fees and external expenses are included under
E100.
PA499 Other Patent Prosecution - Use only for patent prosecution activities for applications that are to be initially filed in the
Domestic ("domestic") home country or region of the applicant, and that can not be included under a previous
code, or as instructed by the client.
PA500 - International Patent Preparation
PA510 Provisional Application All actions associated with completing a provisional patent application that is to be filed outside the
Preparation - International ('domestic') home country or region of the applicant, including translations, review of invention
disclosure materials and prior art, interviews with the inventors, drafting and revision of application,
preparation and execution of formal documentation (such as assignments, transmittals, and
biological deposits), filing of application, and reporting to the client. Note that government fees and
other external expenses are included under E100.
PA520 Non-Provisional Application All actions associated with completing a non-provisional, utility or utility model (but not design or
Preparation - International provisional) patent application that is to be filed outside the ('domestic') home country or region of
the applicant, including translations, review of any invention disclosure materials or parent
applications, drafting of application including pre-filing revision of a parent applications, preparation
and execution of formal documents (such as assignments, declarations, information disclosure
statements, transmittals, and biological deposits) filing of application, and reporting to the client.
Includes PCT International Applications when filed outside the home country of the applicant. Note
that government fees and other external expenses are included under E100.
PA530 Design Application Preparation All actions associated with completing a design patent (but not utility or utility model) applications or
- International design registration applications that are to be filed outside the ('domestic') home country or region
of the applicant, including translations, review of any invention disclosure materials or parent
applications, drafting of application including pre-filing revision of parent applications, preparation
and execution of formal documents (such as assignments, declarations, information disclosure
statements, and transmittals) filing of application, and reporting to the client. Note that government
fees and other external drafting expenses are included under E100.
PA540 Plant Patent Preparation - All actions associated with completing plant patent applications that are to be filed outside the
International ('domestic') home country or region of the applicant, including translations, review of any invention
disclosure materials or parent applications, drafting of application including pre-filing revision of
parent applications, preparation and execution of formal documents (such as assignments,
declarations, information disclosure statements, transmittals, and biological deposits) filing of
application, and reporting to the client Note that government fees and other external expenses are
included under E100.
PA550 Continuing Application All actions associated with completing a continuing patent application (claiming priority to an
Preparation - International earlier-filed application in the same country, but without adding new disclosure) that are to be filed
outside the ('domestic') home country or region of the applicant, including translations, review of
any invention disclosure materials or parent applications, drafting of application including pre-filing
revision of any parent applications, preparation and execution of formal documents (such as

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assignments, declarations, information disclosure statements, transmittals, and biological deposits)
filing of application, and reporting to the client. Also includes PCT National Phase entry where the
parent PCT International Application was previously filed in another country. For PCT National
Phase entry in the applicant's home country, use PA300. Note that (so-called "continuation-in-part")
patent applications extending the scope of the disclosure (or so-called "new matter" in the U.S.) in
an earlier-filed application are included under PA520- PA540. Also that government fees and other
external expenses are included under E100.
PA560 Validation Patent Application All actions associated with the preparation and filing of applications for validation of an issued
Preparation - International regional patent outside of the ('domestic') home country of the applicant. Note that PCT National
Phase Entry is a continuing application process included under PA350 or PA550.
PA599 Other Patent Application Use only for preparation activities in connection with patent applications that are to be filed outside
Preparation - International the ('domestic') home country or region of the applicant, and that can not be included under a
previous code, or as instructed by the client.
PA600 - International Patent Prosecution
PA610 Information Disclosure All action associated with bringing prior art, or other information, to the attention of an Examiner
Statement - International outside the home country of the applicant in connection with an application filed under PA500. Note
that Information Disclosure Statements that are filed with the application are included under PA500.
PA620 Preliminary Amendment - All action associated with revising an application prior to the examination of the application on its
International merits outside the home country of the applicant in an application filed under PA500, including
preparation of amendments and revised drawings that do not affect the scope of the disclosure.
Note that Preliminary Amendments that are filed with a continuing application, but do not affect the
scope of the disclosure are included under PA550. Also note that preliminary amendments
extending the scope of the disclosure in a parent application, and requiring the issuance of a new
application number, are included under PA510-540.
PA630 Official Communication - All action associated with processing an Official Communication from a Patent Office outside the
International home country of the applicant in connection with an application filed under PA500, including initial
review and calendaring of any response deadline, report to client with any proposed response,
review of applicant's instructions and inventor's comments, preparation of amendments and/or
responsive arguments, examiner interviews, and report of actions to the client. Includes activities
associated with Official Communications not affecting the merits of the application, such as filing
receipts, restriction/election requirements, and annuity/maintenance fee payments. Also includes
"Petitions" and other requests for supervisory action that are not decided by a quasi-judicial
appellate tribunal within the Patent Office, such as petitions to reinstate an abandoned application
in the U.S. Appeals, Oppositions, Interferences, and other such quasi-judicial proceedings before
an administrative tribunal associated with the Patent Office are included under PA640.
PA640 Quasi-Judicial Administrative All action associated with completing a quasi-judicial proceeding before an administrative tribunal
Proceedings - International associated with a Patent Office outside of the home country of the applicant in connection with an
application filed under PA500, including Appeals, Oppositions, Interferences and other ex-parte
and inter-partes proceedings. Includes collecting evidence, preparing and filing motions, briefs,
responses, replies, surreplies, and other documents, attending conferences, depositions, hearings,
and other proceedings. Does not include requests for supervisory action ("Petitions" in the U.S.)

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under PA630. Note that external expenses are included under E100.
PA650 Post-Issuance Remedial Action All actions associated with completing a continuing patent application (claiming priority to an
- International earlier-filed, parent application in the same country, without adding any new disclosure) that are to
be filed outside of the ("domestic") home country or region of the applicant, including review of
parent application, drafting and execution of any formal documents (such as transmittals and
information disclosure statements), filing of application, and reporting to the client. Includes
Divisional and Reissue Applications, and Reexamination Requests.
PA699 Other Patent Prosecution - Use only for patent prosecution activities in connection with applications that are ("International-")
International filed outside the home country or region of the applicant, and that can not be included under a
previous code, or as instructed by the client.
PA700 - Other Patent-Related Tasks
PA710 Opinion Preparation All action associated with the completing formal legal opinions on the validity, enforceability,
infringement, and/or non-infringement of a patent claim. Includes opinions on infringement of a
client's patent by a non-client infringer.
PA720 Portfolio Analysis and All action associated with reviewing, analyzing, documenting, and managing a portfolio of patents.
Management Includes patent "due diligence" during transactional analysis.
PA730 Assignments and Security All actions associated with negotiating and preparing assignment (i.e. previously registered or filed
Interests application) or security interest, including review of file history, checking status and meeting with
client. Work of outside vendors in conducting searches or otherwise assisting investigation should
be an expense under E100.
PA740 Licensing All actions associated with negotiating and preparing license.

E100 - Expense Codes (from UTBMS Schedule)

E101 Copying Copying
E102 Outside Printing Outside Printing
E103 Word Processing Word Processing
E104 Facsimile Facsimile
E105 Telephone Telephone
E106 Online Research Online Research
E107 Delivery Services/messengers Delivery Services/messengers
E108 Postage Postage
E109 Local Travel Local Travel
E110 Out-of-town Travel Out-of-town Travel
E111 Meals Meals
E112 Court Fees Court Fees
E113 Subpoena Fees Subpoena Fees
E114 Witness Fees Witness Fees
E115 Deposition transcripts Deposition transcripts
E116 Trial Transcripts Trial Transcripts

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E117 Trial Exhibits Trial Exhibits
E118 Litigation Support Vendors Litigation Support Vendors
E119 Experts Experts
E120 Private Investigators Private Investigators
E121 Arbitrators/Mediators Arbitrators/Mediators
E122 Local Counsel Local Counsel
E123 Other Professionals Other Professionals
E124 Other Other
E100 - New Intellectual Property Expense Codes
E125 Translation Translation fees including preparation and keyboarding (typing) of documentation
E126 Drawings Drawings prepared by external draftsman
E127 Patent and Trademark Records Including patent copies, priority documents, file histories and other intellectual property records
obtained through third-party vendors
E128 Searching and Monitoring Searching and Monitoring
E129 Official Fees, excluding post- Official fees not otherwise identified above which are paid to governmental and quasi-governmental
issuance patent maintenance, entities in connection with a pending application, including those paid to Patent and Trademark
trademark renewal fees and Offices, the World Intellectual Property, Notaries, consulates, and embassies.
late fees
E130 Post-Issuance Patent Official fees paid to a government agency in order to maintain an issued patent or trademark in
Maintenance and Trademark force
Renewal Fees
E131 Late Fees Official surcharge fees paid to a government agency in order to have a document entered into the
record past an initial deadline, including Petition for Extension of Time and Information Disclosure
Statement fees in the U.S.

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