How to Identify the Novel Elements of a Patent’s 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’s claims. 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’s claims in absence of a file wrapper.

What is a File Wrapper?

A file wrapper is a folder wherein the patent office saves as well as maintains all the documents related to a specific patent application. It encloses the entire record of the patent office’s proceedings, starting from the filing of a patent application to its issuance. In simpler terms, a file wrapper for a patent includes the office actions (OAs), oath or declaration, applicant arguments, records of interviews by the patent examiner wherever applicable, and notice of allowance.

Importance of File Wrappers

A patent’s file wrapper is crucially important since it throws light on the patent’s prosecution history. In certain cases, it also includes a patent examiner’s margin notes that help in understanding his/her mindset while reviewing the patent or request for consideration. But most importantly, a file wrapper helps indetermining why the claims of a patent were granted, i.e., it helps in identifying the novel elements of a patent’s claims.

What are Image File Wrappers?

The USPTO implemented the Image File Wrapper (IFW) system in 2003 and substituted the previously used paper file wrappers. In this system, an IFW file is created by scanning the paper documents and preparing electronic image files of an application’s paper components, such as the oath or declaration, the specification, information disclosure statements, drawings, amendments, and OAs. Once the IFW file is created, the USPTO considers it as the official record of the patent application. While IFWs for applications filed after 2003 are readily available, individuals or companies need to pay some fees to the patent office for obtaining IFWs for applications filed before 2003.

How to Access Image File Wrappers Using public PAIR

Any IFW file that has been prepared for a patent application, published application, or even an application to which a patented or published application claims domestic priority, can be accessed through public PAIR. Patent applications that were filed after 30th June 2003, have been scanned and recorded into the IFW system. Once these applications are patented or published, they are available in public PAIR. While pending applications that were filed before 30th June 2003, are scanned as incoming papers received by the office.

Sagacious IP’s Unconventional Approach for Determining Patent Novelty in Absence of File Wrappers

A major drawback of the IFW system is that there is no electronic record of the patents filed or granted before 2003. The unavailability of the file history of such patents makes it difficult to search for or refer to the information contained in them. Considering this unmet need, Sagacious IP has devised a unique approach to identify the novel elements within a patent’s claims in absence of a file wrapper.

In this approach, our team first analyzes the subject patent and identifies the problem statement based on its background section (step 1 in Fig. 1). Thereafter, we get an idea of the invention by analyzing the patent’s independent claims and identifying the key claim elements related to the solution (step 2). After understanding the invention, we analyze the patents or the non-patent citations of the subject patent. In case the file wrapper of the subject patent is unavailable, we can easily extract its citation using patent databases such as Derwent Innovation, Questel Orbit, Google Patents interface (step 3).

Once we have extracted the citations, we analyze the patent and non-patent references cited by the patent examiner (marked with an asterisk*) and compare the features claimed in the subject patent with the references cited by the examiner to identify the features that have not been covered in the cited references, either alone or in combination (step 4). Furthermore, we analyze the remaining cited references and compare the features described in them with the subject patent (step 5). Only the features which are not described in the cited references could be considered as the novel features based on which the patent was eventually granted/allowed (step 6).

File Wrapper
Fig.1: Steps in Sagacious IP’s Approach for Determining Patent Novelty in Absence of File Wrappers

*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’s claims. 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’s claims by extracting its citations using various patent databases.

  • Mohit Sharma (ICT Searching) and the Editorial Team

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