Patents in the US: Researching the History of Specific Inventions

Researching the Legal History of a Specific Inventions (2003-present)

This tutorial seeks to encourage exploration of the wealth of information archived in the US Government’s Patent Application Information Retrieval system (PAIR), including the legal history of individual patents. PAIR is a digital archive of all patents granted in the US since 2003.

Websites needed for this tutorial: 

• Google: https://patents.google.com/
• PAIR: https://portal.uspto.gov/pair/PublicPair  

The Patent Application Information Retrieval system (PAIR)

With little exception, the process of securing a patent is a process open to view by the public. When an inventor submits a patent application they must engage in various bouts of written argument with the US Patent and Trademark Office (USPTO). All communications are cataloged in a public record system called the Patent Application Information Retrieval System (PAIR).

But, with no index, no table of contents, and no user-friendly search function, the PAIR system is not an ideal public interface. As a result, this archive of man’s creations remains widely under-utilized or even unknown.

With a 7-digit key, this seemingly inaccessible database of patents can be unlocked; providing access to a vast array of public, but formerly proprietary, information.

Finding this 7-digit patent number is simple at GooglePatents.

     It All Starts at GooglePatent

Often, a researcher will not know the patent number for the product being researched; rather they will have only the name of the product, the inventor, or perhaps the owner (Assignee). So, the search begins at GooglePatent. Like all Google search engines, the beauty is in the ability to retrieve information from a natural language search.

For example, if the researcher is searching for the infamous Apple product: the I-Pod + Clickwheel, a query of “Steve Jobs” and “rotational” can be conducted at patents.google.com. With a quick scan of the eye, and a peek at the drawings, researchers will recognize the product as patent number: US7345671B2.

The I-Pod Clickwheel (US7345671B2).

Note* The accompanying 11-character ID (US7345671B2) is in actuality a 7-digit patent number sandwiched between a country code (US) and a designator code (B2).

 Accessing the PAIR Database

Truncating the patent ID to patent digits only (7345671), the number can be entered in the PAIR system at uspto.gov to uncover the background of the invention. The subsequent interface is the virtual file manager containing 11 separate file tabs, with far more information than that available through GooglePatent, Westlaw, or Lexis. 

https://portal.uspto.gov/pair/

Note* In order to view the file tabs for a specific US patent a researcher must select the appropriate toggle button (patent number) and then enter the appropriate Keycode (7345671).

After entering the truncated patent ID and clicking "search", the researcher is granted access to the virtual file folder for the specific patent. Focus should be given to the following 5 tabs for the information and documents they contain:

     TABS WORTHY OF SPECIFIC ATTENTION:

       --Application Data

       --Image File Wrapper

       --Continuity

       --Assignments

       --Display References

           (The content of each is discussed in turn)

Application Data

Once inside the file folder, 10 tabs appear including a default tab labeled: Application Data. The Application Data interface displays valuable bibliographic information such as:

--Application Number: The original application number; a unique identifier assigned to an application and used as a tracking number throughout examination 

--Examiner Name: The identity of the government agent responsible for examination at the USPTO 

--First Named Inventor: The name and citizenship of inventors 

--Status: The status of the case as Pending, Patented, or Adandoned 

--Issue Date of Patent: The date of patent grant 

--Patent Number: The patent number issued to the granted application 

Image File Wrapper

The next tab of importance to a researcher is the 4th tab, Image File Wrapper. Here the researcher can access every document communicated between the examiner and the inventor, including records of telephonic communications. These documents are organized in reverse chronological order. Of primary interest to a patron or researcher are documents labeled:

• Specification, Description, Drawings, and Abstract: These documents represent the foundation of the patent application. At the time of filing for legal protection, an inventor must submit a Specification containing a discussion of the invention, a description of the embodiments of the invention, pertinent drawings, an abstract, and at least 1 claim (discussed below).  
• Claims: The USPTO undergoes a concerted effort to streamline the examination process. Because a patent application can be hundreds of pages long and contain multiple novel innovations, the USPTO requires the inventor to identify the top-20 “Claims” asserted by the application. (Monetary penalties are incurred for exceeding the limit.)
• Rejections and Amendments: Should the examiner determine the claimed invention is not patentable, a detailed rejection will be issued, including citations in support of the conclusion. The inventor is given an opportunity to respond and amend the Claims to overcome the rejection. It is typical for an application to be rejected in the first instance, which often necessitates an amendment of the Claims.
• Notice of Abandonment: This notice indicates the patent process was terminated before a patent was obtained. (For example, if an inventor is unable to overcome the arguments/rejection of the government's examiner).

Note: All documents in the image file wrapper are PDF and can be viewed or downloaded.

Continuity Data

The Continuity Data Tab provides hyperlinks to all members of the patent family.

US Patents, much like people, can produce offspring. In the same way a parent may wish to continue their legacy by welcoming a child to the family, so too can a patent give rise to children, grandchildren, even great-grandchildren.

So, when an inventor is unable to limit the original application to only 20 claims, they will opt to create a child patent application. This child application is formally referred to as a Continuation and contains the same content as the parent application, with a variation in claims. Should this child application result in another child application, and yet another variation in claims, then the patent family expands to a 3rd generation.

Above: Parent application 10/259,159 has 3 separate child patent applications; the status of each child application can be viewed by clicking on their respective application numbers, and viewing their individual Application Data Tabs. In this instance, 2 of the children resulted in a patent. 1 child was abandoned during patent procurement.

In this way, the parent + 2 child patents form a tapestry of interconnected patents. A skillfully designed family of inter-connected patents is an effective tool for excluding competitors from the marketplace.

Assignments

The Assignments Tab is a recording of ownership, including all transfers of property right that occur throughout the life of the patent. Anytime a patent changes hands, a notice of recordation must be submitted to the USPTO.

Left: Inventor names(Assignor), ownership information (Assignee), and correspondence addresses are listed here, also.

Display References

The Display References Tab is arguably the richest of the files because it houses a PDF of every academic article referenced throughout the examination process.  The examiner considers each document when assessing the Claims of the patent application. This trove of literature contains broad explanations of the technology and detailed studies on the subject matter.

I-POD CLICKWHEEL

Above: During examination of the IPod Clickwheel, the government's examiner assessed the patentability of the invention against the backdrop of 100's of existing patents and academic articles. Many of these documents are archived and available for view as a PDF. Each is relevant to the technology being examined.