WRAL Tech Wire

US Patent and Trademark Office Celebrates a Pair of Milestones , Part Two

Editors Note -- This is the second of a two-part article describing the new public electronic access to the details of the negotiations that lead to issuing or denying a patent. The first part of the article explained that the PTO recently celebrated milestones in implementing programs called IFW and Public PAIR. This article describes why people outside the PTO have reason to celebrate these milestones. Kevin E. Flynn is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.Recently the Patent and Trademark Office ("PTO") completed the phased transition to electronic (paperless) processing of patent application ("IFW").

The PTO also released a new and more comprehensive set of tools available to enable the public to view the status and history of both pending applications and issued patents ("Public PAIR"). These two pieces augment the existing ability of the public to obtain copies of published patent applications while they were still pending and potentially years before the patent application ultimately issued as a patent.

Improved Public Access to Patent Information...Maybe

The PTO has, for several years, maintained a database that could be searched by different criteria to find issued US patents. That database was recently expanded to include published although not yet issued US utility patent applications. The issued patent or published application can be reviewed as a text document with the ability to search for specific words. Alternatively, the issued patent or published application can be viewed as TIF image files of the actual pages that were published by the Patent and Trademark Office. Viewing the images is important when the patent or patent application has figures that help explain the invention. The PTO web site provides a link to download a free TIF image viewer so that everyone can elect to view the images of the patents or patent applications.

Assuming that the user is able to successfully maneuver through the PTO database and can find a patent number, publication number, or serial number for a particular patent or published application, Public PAIR then allows the user to input this as a search key to obtain additional information. Public PAIR can be reached through http://portal.uspto.gov/external/portal/pair and FAQs on PAIR are addressed at http://www.uspto.gov/ebc/pair/pair_faq.html. After inputting the search key, the following information is presented.

In this particular case, the application corresponding to the published application is still pending and is awaiting an initial substantive response after an examination by a patent examiner.

Clicking on the tab for "Image File Wrapper" presents a list of the various documents associated with this application that have been scanned into the system and are available for anyone to see.

Unfortunately, for a number of years there will be pending applications that predate the conversion over to the IFW system. For such patent applications, Public PAIR provides only the status and notes that various actions have occurred but does not allow electronic access to the actual papers. Those interested in this material will need to tolerate the delay and expense to obtain a paper copy from the PTO.

The net result is that Public PAIR is useful only to the extent people can find patents or published applications in the PTO database, which may not be something easily handled by someone other than a patent attorney or patent agent. Further, when patents or published applications are located in the PTO database, the value of the information in Public PAIR may be limited for applications filed before IFW conversion. Still, over time, the new tools should become increasingly valuable. Instant access to the important prosecution history documents collected through IFW is likely to have a noticeable impact on how patent prosecution and patent strategies are developed in the future.

What sorts of things can be done using Public PAIR?

An inventor curious about the state of a pending application can check the Public PAIR records directly without having to send an email to the patent attorney handling the case.

A company trying to design products that will not infringe patents which may issue in the near future can see whether a potentially problematic application corresponding to a published application is still pending or has been abandoned. If the problematic application has been abandoned, the curious company can check whether the applicant still trying to get claims on the disclosed invention through a new application based on the abandoned application.

The same company can see whether a patent owner is overdue on paying a required maintenance fee for a particular patent, as failure to pay a fee will lead to the abandonment of the patent. Checking on maintenance fee status is useful for determining which patents are still in force and continue to prohibit certain behavior without the permission of the patent owner.

A patent attorney can immediately read through the documents captured by IFW to consider whether the negotiations with the patent examiner have narrowed the scope the patent claims in an issued patent. While reviewing the file history is not a new activity for patent attorneys, for a file captured in the IFW, the process can be started without the expense and delay of ordering a file history based on paper records.

This list of uses of Public PAIR is far from exhaustive, but sufficient to illustrate the utility of immediate access for documents that are critical for understanding the status and strength of pending applications and issued patents. These milestones may be a much bigger event to the PTO and to patent attorneys than to the rest of the public, but they do represent improvements that will benefit a wide range of companies.

Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. Kevin Flynn combines the knowledge and experience that he has obtained as an engineer, lawyer, and patent lawyer to provide guidance to clients on a range of patent and other legal issues. Questions or Comments can be sent to kflynn@d2vlaw.com