All you need to know about file wrapper analysis for patent invalidation search

Introduction
Patent File Wrapper, as the name suggests, is a file that wraps all the documents involved in prosecution as well as opposition (if any) of a particular patent application. It is the complete documentation of a patent application comprising all the documents related to a patent such as drawings, block diagrams, forms, receipts, etc. Any communication being written or oral that happens between the examiner and the applicant gets recorded in the File Wrapper. The File Wrapper is also popularly known as File History or Prosecution History.


Extracting The Patent File Wrapper
File History of patents can generally be extracted from the official websites of the national Intellectual Property Offices. For example, File Wrapper of US patents can be downloaded from Public Pair website and File Wrapper of a European patent can be downloaded from EP Register of Espacenet. File Wrapper serves as an authentic source of information and proves to be helpful in developing a thorough understanding of the prosecution history.

How To Effectively Study File Wrapper?
An effective and in-depth analysis of the File Wrapper is required during the invalidation study of a patent. File Wrapper includes many documents. Some documents such as issue notification, Issue fee payment, electronic acknowledgment receipt, filing receipt, etc. are not important from the perspective of invalidation. Therefore, some researchers prefer to selectively extract the relevant files which are useful for conducting invalidation search. For a better understanding of prosecution history, we only need to analyze documents pertaining to specification, claims, rejections, arguments, amendments, appeals, a notice of allowance, and opposition proceedings (if any). All these amendments, rejections, and arguments help us in developing a deep understanding of the reason for the grant of the patent and the same help during the invalidation study of the patent under investigation. Further, the File History documents the complete search strategy of the examiner including keywords, classifications, and queries executed. The citations including those disclosed by the applicant as well as cited by the examiner during the examination can also be extracted from Information Disclosure Statement (IDS).


Insights Provided By A File Wrapper To Conduct Invalidation Search
Novelty or Inventive Step
To conduct a good invalidation search, it is most important to comprehend the novelty as well as the inventive step of the invention on the basis of which the patent application materializes into a grant. Most of the time, the novel aspect of the subject patent is present in the “Notice of allowance” issued to a patent application; if not so, then we need to inspect all the rejections given by the examiner and the amendments that the claims of the patent under investigation have gone through. Generally, before a claim is granted, it goes through a series of amendments and once the claim(s) is modified up to the satisfaction of the examiner, it gets granted. Most possibly, the final amendment, after which the application is granted, contains the reason for issuance of the notice of allowance.
There may be times when the reason for grant is neither mentioned in arguments nor in the notice of allowance. In such a situation, we should look for appeals made by the applicant to the concerned appeal board such as PTAB. As 35 U.S. Code § 134 provides to an applicant, whose claims have been twice rejected, to appeal from the decision of the primary examiner to the Patent Trial and Appeal Board. If there exists such an appeal in File History of a patent, the reason for the grant can be extracted from the decision of the appeal board on such appeal.


Opposition Proceedings
Opposition proceedings (if any) famously known as Post-Grant review are also an important part of a File Wrapper. While conducting an invalidation search one needs to ensure that the claims which have been picked up for the study are the updated granted claims. As it is a possibility that the claim(s) could have been opposed and the applicant could have been persuaded to amend the claims to keep patent in-force. One more thing to notice here is that during the opposition proceedings, an applicant is allowed to file multiple Auxiliary Requests and/or the main request containing amended claims to be used during the proceedings, in case the original claims do not meet the patentability requirements.


Relevant Keywords & Classification
File wrapper includes “search information including classification” which provides the information of classifications used by the examiner while conducting the search. These classifications can be utilized for conducting an invalidation search. The information of keywords and synonyms used by examiner given in “Examiner Search Strategy and Results” is also helpful in conducting an invalidation search.


Detail of Cited References
The file wrapper provides the information of references cited by the applicant and examiner. Some references are discussed by the examiner in “non-final rejections” and “final rejections”. It is a very important step in the invalidation search to analyze all the cited references. Analysis of cited references gives a clear indication that which aspect of the claim is not covered by these references and a searcher can focus on that missing aspect to find a relevant reference.


A Real Scenario In Which 102 Prior Art Is Obtained Only By Carefully Analyzing The File Wrapper
Here is a scenario in which we have found a killer prior art by carefully analyzing the file wrapper. The subject patent was related to LCD (Liquid crystal diodes) and we have also analyzed the litigation data in which so many products are infringing on the invention of the subject patent. After analyzing subject patent and litigation data, we have analyzed the file wrapper to ensure the novel element of the subject patent. We have read all the arguments between examiner and applicant discussed in “Non-final Rejections” and “Final Rejections”. In non-final rejections, some patents were discussed and while analyzing those patents in detail, we have come across a patent which was covering all the elements of the claim. However, that text was not discussed by the examiner. That patent was disclosing various embodiments related to LCD. The examiner discussed one embodiment which was not covering the novel element of the claim whereas the text analyzed by us was some different embodiment which was covering all the concept of the subject patent.
We have further continued our search with different strategies such as keyword, classification, inventor, assignee, spider (i.e. forward and backward citation search), and NPL to uncover all existing promising references. Finally, we have noticed that there is only a single 102 prior art reference and that reference was already discussed in non-final rejections of file wrapper. Apart from that, we have also come across some 103 prior art as we believe to uncover all the solutions which can be utilized to invalidate a patent.
From this scenario, we have noticed that file wrapper analysis is very important for conducting an invalidation search. In some scenarios, a careful analysis of file wrapper can provide you a promising prior art at the very initial stage of a project that was missed by the examiner. Also, it provides a lot of insights that are very important for invalidation search.


Conclusion
We have concluded that File Wrapper analysis is an essential part of an invalidation study. A detailed study of File History may reveal loopholes in the prosecution of a patent. It helps in understanding the technical as well as legal boundaries drawn around an invention. As the File Wrapper analysis helps in conducting the study in an efficient manner, the importance of File Wrapper analysis must not be underestimated while conducting an invalidation study. Also, careful analysis of file wrapper helps in providing killer prior art.

Expedited Examination

The Indian Government has taken up initiatives to reduce the time taken to examine patent applications. One of these initiatives was the option of the expedited examination of patent applications in which the application examination is done within an expedited period of time that is approximately less than 12 months. It was introduced in the Amendment Rules 2016 which were amended in 2019. It facilitates the below mentioned applicants (applicants must qualify as one of the following for an expedited examination):

1. A Start-up

Startup is the entity that is recognized by Department for Promotion of Industry and Internal Trade (DPIIT). The entity needs to fulfill a few criteria to be recognized as a startup. They are as follows:

I.   Any company which is incorporated as a Private Limited Company or Registered as a Partnership firm or Limited Liability Partnership (LLP)
II.  Less than 10 years of incorporation of the firm
III. Less than INR 100 crores turnover in any of the last Financial years
IV. Entity should not have been formed by splitting up or reconstructing an already existing business
V. Working towards development or improvement of a product, process or service and/or have scalable business model with high potential for creation of wealth & employment

2. A Small Entity (defined in Rule 2(fa) of Patent Rules)

Small Entity is the Small enterprise classified under the Micro, small and medium enterprise development (MSME) Act. As per Revised Classification applicable w.e.f 1st July 2020, a Small entity is an enterprise:

I.  Investment in Plant and Machinery or Equipment:
Not more than Rs.10 crore and
II. Annual Turnover; not more than Rs. 50 crore

3. A female natural person (when there are joint applicants, at least one of them must be female)

4. A Government undertaking (defined in Section 2(1) (h) of the Patents Act, 1970), or government-owned, finance, or established authority/company.

5. Any application, whereby India has been chosen as the appropriate International Searching Authority or International Preliminary Examination Authority (in cases of PCT International patent application filed).

The expedited examination has to be requested by way of application through Form 18A. This request has to be accompanied by the early publication request. According to Rule 24C of Patent Rules, 2003 the examiner has to organize a report within a maximum of 2 months from the date of receipt of such a request. An ordinary application also has a provision to be converted into an expedited examination by paying the stipulated fee.

The Controller is mandated to dispose of the report of examination within 1 month of receipt of such a report. The first statement of objection shall further be issued within 15 days. The time span provided to put the application in order for a grant is 6 months from the date of the issue of the first statement of objection. An extension on the 6 months provided can be requested by way of an application made through Form 4 for a period not extending 3 months (before the expiry of 6 months). The application shall be disposed of within 3 months of receipt of the last reply to the first statement of objection or the order of grant. This period, provided for grant and disposal of application, is subjected to the pre-grant oppositions.

Conclusion

The main objective of the expedited examination is that the applications for which this is requested will be assigned to a different queue unlike ordinary examination queue, which already has an overflowing number of applications awaiting examination. Thus, the applications for which expedited examination is requested will be allotted to an examiner for examination significantly sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, time-framed procedure is to be followed.

Authored By: Chaitanya,Patent Specialist, Operations Team

How To Enrich A Prior Art Search Using Citation Analysis?

Introduction

A prior art search is conducted to identify relevant published work in a particular domain of technology. There exists a plurality of techniques to conduct a prior art search, among them the keyword and classification based searches are widely used. However, sometimes to find the relevant prior art, these techniques alone do not prove to be adequate and in such a situation, to improve the quality of the prior art search, citation-based searching comes into the picture. It is also known as spider search. The usual searching implementation of citation-based analysis can yield brilliant results.

Before going into depth of the patent citation analysis, we should first understand what is the meaning of patent citation? A patent citation is a document having content related to the content present in the document in which the citation is being made. A patent is generally cited by an applicant or an examiner during the prosecution of patent applications. Patent citations are basically of two-type, viz. backward citations and forward citations.

Backward citations: These are the documents that are publically available before the filing date of a patent application and contain related information. Analyzing backward citation can enhance the prior art searching, as these documents may consist of the closely related prior art, and analyzing backward citation of all the family members of a patent is also very useful as examiners in different jurisdictions cite different prior arts.

Forward citations: These are the documents that are released after the publication of the patent document and contain information related to the patent document. Analyzing forward citations can reveal different patents with technological advancements.

While conducting a prior art search, analysis of both forward citations as well as backward citation of a relevant patent is of highly importance as it can reveal further relevant documents which might not have captured earlier using other searching methods.

Importance of Patent Citation Analysis

There are several reasons why the patent citation analysis is important during the prior art search, some of them are as follow:

Ready to Use Relevant Prior Art

A prior art search can be done using different techniques, among them citation based searching has its own importance as it provides ready to use relevant prior art. The prior art which is listed under patent citations is the prior art that was searched, analyzed and grouped by an examiner, meaning that an examiner has already conducted the prior art search related to the subject patent and has grouped the relevant prior art in the form of a list. Thereby, citation-based searching can efficiently yield relevant prior arts.

Useful in Finding Hidden Prior Arts

Citation based analysis helps in identifying documents that are difficult to find by conducting keyword or classification searches only. While searching for prior art, if only keyword and classification based searches were relied upon, important patent documents of some jurisdictions such as Korea, Taiwan, etc. may remain uncaptured. Citation analysis, if used in addition to the keyword and classification search, can deliver extraordinary results.

Usefulness in Invalidity Searches

Citation analysis can be very helpful in invalidity searches to find relevant prior arts which are being cited in a patent’s family member but not in the patent itself e.g. if there is a European Patent (EP) under investigation for invalidation and there exists a relevant prior art that was not cited by the EPO examiner, resulting in granted claims with a wider scope. And the same relevant prior art was cited during examination by the examiner of EP patent’s US family member, resulting in the narrowed scope of claims in the US. In such a situation, the relevant prior art can be easily identified by using a citation analysis of the complete family of the EP patent.

A Real Scenario In Which We Have Found A Killer Prior Art From Citation Analysis

While doing an invalidation project related to the image capturing apparatus, when we have done a backward citation search we came across a patent which was covering all the elements of the invention except the novel aspect. Then we analyzed the backward as well as forward citation of that reference. We found a patent that was disclosing all the elements of the subject patent including the novel aspect. This is how the citation search helps us to get a promising prior art within a limited time.

Apart from this, citation analysis helps us in improving the technical knowledge regarding a project and provides us a lot of important leads such as relevant keywords, classes, inventors, and the assignee. In addition to the patent literature, it is also possible to analyze the relevant non-patent literature cited in the backward and forward citation. That’s why we consider the citation analysis as the most crucial step for conducting a prior art search.

Conclusion

A good prior art search must leave no stone unturned in the relevant field of technology. All the known methods to identify satisfactory results must be used. It is not possible to enrich the prior art search without performing citation analysis. Citation based analysis not only helps in fostering understanding of the technical domain but also provides related keywords and classifications, making citation analysis an essential part of a good prior art search. It is always advisable to conduct citation searches before using other search strategies to make a strong foundation for a project.

Authored By: Shubham Chaudhary, Research Associate, Operations TeamA prior art search can be done using different techniques, among them citation based searching has its own importance as it provides ready to use relevant prior art. The prior art which is listed under patent citations is the prior art that was searched, analyzed and grouped by an examiner, meaning that an examiner has already conducted the prior art search related to the subject patent and has grouped the relevant prior art in the form of a list. Thereby, citation-based searching can efficiently yield relevant prior arts.

Useful in Finding Hidden Prior Arts

Citation based analysis helps in identifying documents that are difficult to find by conducting keyword or classification searches only. While searching for prior art, if only keyword and classification based searches were relied upon, important patent documents of some jurisdictions such as Korea, Taiwan, etc. may remain uncaptured. Citation analysis, if used in addition to the keyword and classification search, can deliver extraordinary results.

Usefulness in Invalidity Searches

Citation analysis can be very helpful in invalidity searches to find relevant prior arts which are being cited in a patent’s family member but not in the patent itself e.g. if there is a European Patent (EP) under investigation for invalidation and there exists a relevant prior art that was not cited by the EPO examiner, resulting in granted claims with a wider scope. And the same relevant prior art was cited during examination by the examiner of EP patent’s US family member, resulting in the narrowed scope of claims in the US. In such a situation, the relevant prior art can be easily identified by using a citation analysis of the complete family of the EP patent.

A Real Scenario In Which We Have Found A Killer Prior Art From Citation Analysis

While doing an invalidation project related to the image capturing apparatus, when we have done a backward citation search we came across a patent which was covering all the elements of the invention except the novel aspect. Then we analyzed the backward as well as forward citation of that reference. We found a patent that was disclosing all the elements of the subject patent including the novel aspect. This is how the citation search helps us to get a promising prior art within a limited time.

Apart from this, citation analysis helps us in improving the technical knowledge regarding a project and provides us a lot of important leads such as relevant keywords, classes, inventors, and the assignee. In addition to the patent literature, it is also possible to analyze the relevant non-patent literature cited in the backward and forward citation. That’s why we consider the citation analysis as the most crucial step for conducting a prior art search.

Conclusion

A good prior art search must leave no stone unturned in the relevant field of technology. All the known methods to identify satisfactory results must be used. It is not possible to enrich the prior art search without performing citation analysis. Citation based analysis not only helps in fostering understanding of the technical domain but also provides related keywords and classifications, making citation analysis an essential part of a good prior art search. It is always advisable to conduct citation searches before using other search strategies to make a strong foundation for a project.

Authored By: Shubham Chaudhary, Research Associate, Operations Team