What to Look for When Using US Public PAIR and Other Lessons from Blogging

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PAIR (Patent Application Information Retrieval) is the US Patent and Trademark Office's Registry system for sharing information on the prosecution of patent applications. The information contained in the system can be used to research patent documents to determine their value. In this presentation a tab by tab walk-through of the site will be provided. Specific sections and pieces of data provided on the site will be highlighted and their role in determining the potential value of a patent document will be explained. In addition a means for collecting, organizing and presenting a summary of Public PAIR data, provided by Google, will be discussed.

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What to Look for When Using US Public PAIR and Other Lessons from Blogging

  1. 1. © All rights reserved. Not for reproduction, distribution or sale. What to Look for When Using US Public PAIR and Other Lessons from Blogging Anthony Trippe, Managing Director 2013 PIUG Annual Conference
  2. 2. © All rights reserved. Not for reproduction, distribution or sale. The Most Popular Posts on the Site Have Been the Infographics • High resolution images available on the site • First one covers Public PAIR • Second one covers Key Court Cases
  3. 3. © All rights reserved. Not for reproduction, distribution or sale. Public PAIR Infographic Designed to Let People Evaluate Patents Themselves • Uninformed people complain all the time about patents that are quite limited in scope and have significant limitations imposed upon them in order to put them in condition for allowance • A quick look at a few items in the file wrapper can offer some idea of how broad and potentially valuable a patent is • Any conclusions, especially business critical ones, should be confirmed by a patent attorney • This review can assist with that conversation
  4. 4. © All rights reserved. Not for reproduction, distribution or sale. What is US Public PAIR and How can I Access the Information? • PAIR (Patent Application Information Retrieval) is the USPTO Registry system for information on the prosecution of patent applications • Once the application publishes or the patent grants this information is made available to the public • Most cases available with electronic Image File Wrapper since 2002 • http://portal.uspto.gov/external/portal/pair
  5. 5. © All rights reserved. Not for reproduction, distribution or sale. Once past the reCAPTCHA you Enter the Patent or Application Number • No kind or country codes necessary • Application number should include / after series number but no comma in serial number • Publication Number is for pre-grant apps
  6. 6. © All rights reserved. Not for reproduction, distribution or sale. PAIR is Organized Using a Tabbed Interface - Application Data Tab • When was the application filed? • What is the status - is it still in-force? • Does the location say Electronic or File Repository? • Is there a pre- grant app?
  7. 7. © All rights reserved. Not for reproduction, distribution or sale. Continuity Data Tab • Is there a PCT filing? • Is the family still open for prosecution? • Are there additional US family members?
  8. 8. © All rights reserved. Not for reproduction, distribution or sale. Patent Term Extension History Tab • Previously called Patent Term Adjustment (PTA) • In this case the patent was not extended • Displays delays by applicant and by the Patent Office
  9. 9. © All rights reserved. Not for reproduction, distribution or sale. Display References Tab • How much prior art did the applicant make available to the examiner? • Are there any 892 or examiner citations associated with case? • Are there NPLs?
  10. 10. © All rights reserved. Not for reproduction, distribution or sale. Image File Wrapper Tab • Are there Terminal Disclaimers? • How many Office Actions until an allowance? • Are there any abandonments in the file? • Did the claims change?
  11. 11. © All rights reserved. Not for reproduction, distribution or sale. Notice of Allowance Provides Reasons for Granting the Patent Document• First 15 claims canceled - presumably double patenting • Claim 16 has many steps including - “selectively dispense encodable credit” • Pretty specific claim overall
  12. 12. © All rights reserved. Not for reproduction, distribution or sale. Conclusions from Analysis • The original patent is still in-force with a 1998 priority date • At least 15 US granted patents in the family • Open for continued prosecution • At least 10 applications still pending • PCT filing suggests possibility of international filings • Significant number of patent and non-patent literature references considered during examination • Likely a valuable portfolio
  13. 13. © All rights reserved. Not for reproduction, distribution or sale. Also Provide a Method for Downloading PAIR Data for Google Patent
  14. 14. © All rights reserved. Not for reproduction, distribution or sale. The “Friday Fun” Posts on Litigation Developed Differently than Expected • Originally, just for fun but provided an opportunity to share interesting examples • Designed to use litigation and off-beat topics to provide lessons on business aspects of patents • Panties post became very popular
  15. 15. © All rights reserved. Not for reproduction, distribution or sale. And Then There was That Series of Posts on Patent Citations• Discovered initial issue Summer of 2012 when noticed that some granted US patents didn‟t have any citation but their corresponding applications did • Ended up asking two questions: • Do pre-grant applications contribute significantly to the citation counts for a granted patent? • Are citation patterns different between countries? • A third question was asked by others • Do sources of patent citations agree with one another?
  16. 16. © All rights reserved. Not for reproduction, distribution or sale. It All Started with the Following Question • So which answer represents the number of forward citations for US8341981? • a. 22 • b. 0 • c. 7 • d. All of the above
  17. 17. © All rights reserved. Not for reproduction, distribution or sale. It All Started with the Following Question • So which answer represents the number of forward citations for US8341981? • a. 22 - Represents citations to INPADOC Patent Family • b. 0 - Citations to Discrete „981 Patent Document • c. 7 - Citations to „981 and Corresponding Pre-Grant App • d. All of the above
  18. 18. © All rights reserved. Not for reproduction, distribution or sale. When Looking at Citation Patterns in the US I Found the Following • 83% of the cases where a granted patent from the study has a forward citation and a corresponding pre-grant application there are forward citations associated with both documents • Individually, both pre-grant applications and granted patents from the study had ~75% chance of having at least one forward citation - much higher than expected • For the granted patents that did not have any forward citations associated with them, 60% of the corresponding pre-grant applications still had at least one
  19. 19. © All rights reserved. Not for reproduction, distribution or sale. The Situation in Europe However is Very Different - But Still Surprising• It is critical to consider pre-grant applications in Europe when talking about forward citations with patent equivalents - Less than 10% of grants have forward citations • In Europe the likelihood of finding forward citations associated with pre-grant applications is four-times higher than finding them with the granted patent - between 35-45% chance of finding forward citations on pre-grant applications • Europe only has examiner citations but more applications than expected still have forward citations
  20. 20. © All rights reserved. Not for reproduction, distribution or sale. Surprisingly, the Discussion Launched a Separate Question on the PIUG Wiki

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