YOUR NEW HOBBY, IF YOU’RE LIKE SOME FRIENDS OF MINE
I Hope You’re Not a Robot
Have you ever wished you could know exactly what your favorite (or least favorite) patent applicants are claiming in their patent applications that are under examination? Have you ever wondered what they are telling the patent examiner about their invention and why it is new and non-obvious? Have you ever wished you could do an Instagram rant exposing some dishonest argument someone made to get a patent allowed? Or maybe you just like learning more about the way the patenting process works and want to review the entire examination of a patent you’re interested in. Whatever the case, you’re in luck, my friends.
I recently showed a friend how to access an online USPTO resource called Public PAIR. That’s an acronym for Patent Application Information Retrieval. His reaction: “Found my new obsession.” So maybe he’s not typical, but he’s probably also not alone. It’s available to anyone who isn’t a robot. And yes, you have to prove that by showing you can tell the difference between dogs and fire hydrants, or whatever. So if you’re not a robot, read on.
20th Century Memories – the Bad Old Days
Years ago the entire USPTO was a paper operation, just like everything else. I remember the last days of that era, from when I was a baby patent attorney. Examiners’ offices and attorneys’ briefcases were overflowing with files and reference materials. But just like station wagons lacking seatbelts (yeah, I remember those, too–but just barely), a paper-heavy USPTO finally was superseded by something better. The paper was replaced by electronic filing and paperless files accessible from anywhere.
The move toward paperless patent files happened around the same time that the USPTO was transitioning to a system of publishing applications 18 months after their earliest priority date. That approach to publication finally put the US in line with the rest of the world, and it created an interesting opportunity for the public. This is because the files of ISSUED patents have always been available for public inspection, even if they were hard to actually access. But when patent applications started being published BEFORE ISSUANCE, it also made sense for the files of those patent applications to be available for public inspection.
It’s (Almost) All Public After 18 Months
So now, almost all US patent applications are published very close to 18 months after their earliest filing date. And as soon as they are published, their associated “file history” also becomes part of the public record. This is what you get to see when you access Public PAIR. And yes, there is also a “Private PAIR” which gives paperless access to the files of still-unpublished patent applications. It is private because those files are confidential until published, so only applicants and their attorneys can access those files.
What can you do with Public PAIR, and how do you get started? Well, to get started you need to have an identifying number, either of the application, or the publication, or the patent. You can find that information by going to the USPTO’s patent searching page and search either published applications or issued patents. You can search by keywords, inventor names, patent owners (called “assignees”), etc. Or you can go to MJPatentsWeekly.com and browse interesting Cannabis-related patents and applications there, then grab an application number and plug that into Public PAIR.
How to Find the Good Stuff
Once you are in the Public PAIR page for a given patent or application, you’ll see information about the applications title, examination status, filing date, and more. And you’ll see some tabs near the top of the screen that give access to “Continuity Data” (related applications); “Assignments” (to identify who is the owner of record and how it got from the inventors to the current owner); and many other bits of information. But the very best tab, which is USUALLY there but not always, is one called “Image File Wrapper.” This takes you to a page with a column of dates in reverse chronological order. Each dated item has a “Document Description” that tells you what it is. If you trace it all the way back it will get you to the earliest papers filed, including the application itself.
Off to the right at the top of all of those rows is a blue radio button labeled PDF. Check the box next to it and then click PDF and you’ll get a download of the ENTIRE FILE HISTORY. In other words, you’ll have all of the steps in the process from when the patent application was first filed until it was allowed, or abandoned, or up to the current stage is if the application is still being examined. With a little practice you can learn what to look for. Among the most interesting documents are usually the Specification, Claims and Drawings near the bottom of the PDF, because they are the original content that was filed. Also must-see are the rejections by the Examiner, labeled in the list of documents as “Non-Final Rejection” or “Final Rejection.” And often best of all are the entries labeled as “Amendments.” These are the submissions by the applicant to overcome a rejection. They will often include changes to what is claimed, and will also include legal and technical arguments pointing out the flaws in the rejection.
It’s Not Football, but It Can Be Interesting
I wouldn’t say this is as interesting as a Fall Sunday watching football, but in some cases it can be quite fascinating. I have reviewed these kinds of files with many clients who were concerned about someone else’s patent or application. Many times we have been able to see serious weaknesses or errors in arguments made to overcome a rejection. Those mistakes or misdirections create great opportunities for someone to challenge a patent if they were ever sued for infringing it.
In some cases when reviewing a file history for a client, we have identified errors or deceptions that were very clear, very big, and were absolutely critical to the eventual allowance of the patent. In those cases, I have been able to give a legal opinion of invalidity. Those opinions are not given lightly, because people make big decisions based upon their sense of the risk of infringing a valid patent. And it’s always even safer to find a way to not infringe a patent, even if its validity seems highly suspect.
Do Try This at Home – But Just for Fun
So if you would like to try your hand at reviewing a patent file, weighing the arguments made to the examiner, deciding what you think about a given patent, now you know where to look. Happy hunting. Just remember that before you make any big decisions based on what you see, run it past someone well qualified to give you a sanity check. Someone who has a lot of experience interpreting patent files and applying hardcore patent law to the things you have spotted that seem interesting. And watch out about giving legal advice without a law license! That’s illegal and risky in all sorts of other ways.
And for you stalker-hobbyists out there, see you on Instagram. Tag me @plant.and.planet. I might comment. But it sure as hell won’t be legal advice. Even WITH a law license and lots of experience, I only do that after a very careful analysis. This new obsession of yours—this is just for fun and conversation. Maybe a little rabble rousing. But not for making business decisions. Get a real attorney for that. I know a guy.