Editor’s note: This is the first 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 explains why the PTO recently celebrated milestones for implementing programs called IFW and Public PAIR. This second part 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 United States Patent and Trademark Office (“PTO”) completed the phased transition to electronic (paperless) processing of patent applications.

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. This is the first of a two-part article describing the new public electronic access to the details of the negotiations that lead to the PTO issuing or denying a patent.

On August 23, the homepage for the US Patent and Trademark Office (www.uspto.gov) featured a story showing the new head of the PTO, Jon Dudas, proudly presenting details of the Image File Wrapper (IFW) and the Patent Application Information Retrieval (PAIR) systems. IFW is the paperless system for handling the various papers associated with the application process for a patent; the collection of papers is referred to as the “file wrapper.” Public PAIR is a system for viewing the status and history of a US patent application or issued patent over the Internet.

The paperless system, IFW, has been implemented in stages, with each stage adding new groups of patent examiners. As of early August, the PTO estimated it would take a stack of paper 27 miles high to equal what was already in the IFW system. Thus it was a major milestone when the last group of the patent examiners was moved onto the paperless system and the process was completed and made fully available to the public.

The milestone for Public PAIR is a new and much improved release of a computer application available for use by those outside the PTO. A version of PAIR has been available for a few years, but it was limited to allowing patent attorneys to check, via an encrypted link, on the status of pending applications identified as linked to a “customer number” associated with that patent attorney. The new version allows anyone to view the materials in the IFW after the patent application has been published (which is normally well before the patent is granted).

How does this change the ability to find patents and pending applications?

Because patent rights are like laws, it has been always been possible to find all issued patents through various hard-copy and electronic search methods, just as any other public record. The PTO has maintained public databases facilitating searches for US Patents, but the databases did not include the important file wrapper material. Until relatively recently, there really was no way to search for or learn about pending applications. After a patent was issued, anyone interested could order the contents of the file wrapper (also called the “prosecution history”), and after paying several hundred dollars and waiting a week or two, a copy of its contents of the file wrapper on the issued patent would be provided. Before issuance, however, patent applications were hidden from all but the inventor, his attorney and the patent examiner.

A recent change to the patent laws calls for most patent applications to be published approximately eighteen months after entering into the process. This is useful as most applications take more than three years to get through the process–and unfortunately, many patent applications take substantially longer than three years. This publication rule is a major improvement to reduce the number of patent applications that are hidden in the patent application pipeline. Without the implementation of Public PAIR, however, this process would take on far less significance. Now there is no waiting period and no cost to be able to see details on most pending applications (there are some patent applications that are not published, but this is a small percentage).

The new big picture is that patent attorneys and anyone who cares to look can easily and at no cost look at pending patent applications well before the application is either issued as a patent or abandoned. Added to search capabilities for issued patents, the interested public now has a set of very powerful tools available to it.

How does this change the patent landscape?

While not everyone is going to want to learn how to access the information in Public PAIR, many people other than the patent applicant and its attorney have a legitimate interest in knowing what is happening within the patent process on various patents.

Many businesses routinely check the PTO databases to see if new invention on which they are working are truly different from the patent applications already on file at the PTO. The result of being able to obtain detailed information about potentially important patent applications owned by competitors, allows uncertainly to be removed for certain business decisions and can sometime provide early indications of the competitor’s future product offerings.

Further, the patent application process, as it can now be viewed, allows a preview of the process that shapes the scope of the claims. Access to the information in the IFW even before the patent issues allows careful analysis and a prediction as to what may or may not be permitted in competition if the patent does issue. While judges deciding infringement issues have access to this information after the fact, the early release of and easy access to the information allows analysis of the claims at the time they are being evaluated and shaped by the patent examiner. It is a step forward to make it easier for companies to see the shape of legal prohibitions in time for the company to reshape its product plans.

The second part of this article, to be published tomorrow, provides additional details on the new public electronic access to patent prosecution documents, how the various pieces fit together and other reasons businesses will find this electronic access useful.

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