How to Identify the Novel Elements of a Patent Claim in Absence of a File Wrapper

Patent prosecution records are an invaluable source of information for companies as they not only provide historical records of patents, but also specify the scope of inventions and the rights of patent owners. Patent offices such as the US Patent and Trademark Office (USPTO) save the patent prosecution records in file wrappers. Any company that seeks the prosecution record of a specific patent can request the patent office for a copy of its file wrapper and can subsequently use the information for various purposes including identification of the novel elements of a patent claim. But what happens if a patent’s file wrapper is unavailable? Read on to know how you can identify the novel elements of a patent claim in absence of a file wrapper.

What is a File Wrapper?

A file wrapper is a comprehensive repository containing all the documents related to a specific patent application. It includes:

• Office actions (OAs)
• Oath or declaration
• Applicant arguments
• Records of interviews by the patent examiner
• Notice of allowance

This complete set of documents provides critical insight into how and why the patent office approved the invention, with particular emphasis on the elements that form the patent claim.

Importance of File Wrappers

File wrappers are much more than administrative records. They illuminate the entire patent prosecution process and offer a window into the examiner’s thought process. Key reasons why file wrappers are vital include:

• Understanding the Rationale Behind Approval: They detail why certain elements of a patent claim were accepted or rejected.
• Insight into Novelty: Examiner margin notes and correspondence can reveal the unique aspects that distinguish a patent claim from prior art.
• Legal and Strategic Value: Detailed file wrappers can be critical during patent litigation or when planning further research and development.

What are Image File Wrappers (IFWs)?

In 2003, the USPTO transitioned from paper file wrappers to digital Image File Wrappers (IFWs). The IFW system involves:

• Scanning Paper Documents: Converting physical documents into electronic image files.
• Digital Record Keeping: Including the oath or declaration, specification, information disclosure statements, drawings, amendments, OAs and other key components.
• Official Record: Once created, the IFW becomes the official record for the patent application.

While IFWs for applications filed after 2003 are readily available, individuals or companies must pay a fee to obtain IFWs for applications filed before 2003.

How to Access Image File Wrappers Using Public PAIR

The USPTO allows access to any prepared IFW file for a patent application, published application, or an application claiming domestic priority to a patented or published application through public PAIR. It has scanned and recorded applications filed after 30th June 2003 into the IFW system. Once patented or published, these applications are available in public PAIR. For pending applications filed before 30th June 2003, the office scans them as incoming papers upon receipt.

Sagacious IP’s Innovative Approach for Determining Patent Claim Novelty Without a File Wrapper

A key limitation of the IFW system is the lack of electronic records for patents filed or granted before 2003, making it difficult to access their file history. To address this, Sagacious IP has developed a unique approach to identify novel elements in a patent claim without a file wrapper.

Our process begins with analyzing the subject patent to identify the problem statement from its background (Step 1). Next, we examine independent claims to determine key elements of the invention (Step 2). We then extract citations using patent databases like Derwent Innovation, Questel Orbit, and Google Patents (Step 3).

Once citations are obtained, we review the patent and non-patent references cited by the examiner (marked with an asterisk*) and compare them with the claimed features (Step 4). We further analyze remaining cited references to identify features not covered in prior art (Step 5). Finally, only the features not described in any cited references are considered novel, forming the basis for the patent grant (Step 6).

*References cited by the examiner are marked with an asterisk in google patents.

** If the number of cited references is high, we do not perform this analysis.

Conclusion

A patent file wrapper is extremely important as it sheds light on the prosecution history of a patent. By analyzing the prosecution history, one can easily identify the novel elements of the patent claim. While the USPTO stores image file wrappers for most patents, the records of some patents are unavailable. In such cases, one can ascertain the novel elements of the patent claim by extracting its citations using various patent databases.

Need expert assistance to analyze patent claims without a file wrapper? Our experts at Sagacious IP can help you uncover critical insights. Contact us today!

• Mohit Sharma (ICT Searching) and the Editorial Team

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