The information available on the prosecution history associated with US patent documents, from USPTO’s Public PAIR, is invaluable. Studying the negotiations that took place between an examiner, and an applicant, and how they impacted the claim scope associated with a US patent document, can be a powerful method for helping to determine the value of a patent or a portfolio.
Unfortunately, as useful as the information in Public PAIR is, it is not easily accessible ordinarily, and the individual items contained in the Image File Wrapper were not previously searchable. In a previous post, on forward rejections associated with US patents, it was seen that third-party systems are needed to analyze the images extracted from Public PAIR in order to augment their functionality. In this post, we will look at the new Patent Document Search functionality that Reed Tech has incorporated into their Patent Advisor product. In addition to looking for forward citations within Office Actions, the system can also be used to find phrases, such as precedent setting case law, that is being used in Office Actions.
Reed Tech provides the following introduction to Patent Advisor and the new functionality:
Reed Tech Patent Advisor is a suite of online information and analytic services covering an extensive and frequently updated collection of the histories of U.S. patent applications. Patent Document Search is the newest addition to the suite. This tool provides the ability to conduct text-based searches across many millions of USPTO Office Action and Claims documents. Patent professionals are able to sort through identified matching documents based on a variety of different attributes, including art unit or examiner identity. Additionally, Reed Tech will soon be adding Office Action Response documents to the searchable document set.
The Patent Document Search functionality can be used to look for the occurrence of patent, publication and application numbers in the full-text of USPTO Office Actions that have occurred since the document of interest was published, as long as these references have been made since the images of the documents became available publicly. Today, these numbers would be enclosed in quotations and searched individually, for optimal recall, but the developers at Patent Advisor are working on an enhancement, that will search all associated numbers simultaneously when only one of the numbers is entered by the user.
Alternatively, when working with unique, first inventor last names, it can be useful to search with this word instead. In a number of cases, the last name of the first inventor becomes a proxy for the citing art of interest so searching for unique names can be a useful way to find references in Office Actions being made to an entire portfolio of documents. The image below provides an example of this functionality using the name Kavcic, the last name of the first inventor listed on the collection of patents asserted by Carnegie Mellon v. Marvell.
In this case, we find that there are 27 instances where Kavcic has appeared in an Office Action or collection of claims. Looking at the results, it can also be seen that the documents are referencing both the ‘180 and the ‘839 patents simultaneously. Since subsequent mentions of the patents, within the actions, refer to Kavcic instead of the document number, the use of the name can be a more efficient way to search.
It is also possible to distinguish the 103 secondary reference rejections citing Kavcic from the 102 rejections by searching using the phrase “in view of kavcic”. As can be seen in the screen shot, the phrase “and further in view of” uses the first listed inventor’s last name as the identifier for the art, in the text of these Office Actions.
In a previous post, on key court cases which have impacted US patents, a collection of precedent setting US court cases were identified. These cases are often cited in Office Actions and it can be useful and interesting to see which art units, and examiners are beginning to justify their actions based on these cases. The image below demonstrates the use of this technique to search for documents citing the recent Association for Molecular Pathology v. Myriad Genetics.
While the ink is barely dry in this case, it is already starting to be used in a fair number of additional cases. In the first one provided, Steven C. Pohnert is listed as the examiner, and the case resides in art unit 1634. Using the filter results functionality, it is possible to see how often these cases are arising in art unit 1634 and if this is the first, or the most recent use of this case by Examiner Pohnert.
The system currently has access to just over ten million claims and Office Action documents with another two million still left to process. Once the claims and Office Actions are complete the company plans on starting the processing of the applicant responses. The developers are calling the new patent document search functionality a “work in progress”, but the system today is providing unique functionality that doesn’t seem to be available elsewhere.
In related news, Reed Tech also recently announced the launch of their United States Patent and Trademark Office Bulk Data Downloads site:
Reed Technology and Information Services, part of the LexisNexis family, has announced the launch of Patents.ReedTech.com, a website that allows users free access to USPTO Patent and Trademark information. The bulk content sets available at the website will be the same as those provided in recent years by the USPTO through Google USPTO Bulk Downloads.
The transfer of service from Google to Reed Tech was first announced at the 2013 PIUG Annual Conference during a plenary session presentation. Reed Tech is working independently to make the content available on the Reed Tech site, to include content previously available on the Google website.
While participating in the beta test associated with the development of this site, a relatively small collection of file wrappers was accessible. Now that the site has officially launched, there appears to be a much larger collection of case histories available. There is even a handy listing of the number of file wrappers available by application number range provided, which shows that there are a little over 2.5 million case histories available for download. Using the bulk downloaded file wrapper data to provide a client ready summary of the prosecution history of a patent, was discussed previously.
Reed Tech has made significant enhancements and additions to their collection of tools and data available to patent professionals. The ability to search the full text of Office Actions and Claim for US patent applications provides options for working with a valuable set of data that is normally not accessible, except by manually looking at documents one by one. The tools available in Patent Advisor open a window into a critical, and previously under utilized collection of critical data about patent prosecution in the United States. The bulk data download site is also a welcome addition, and is providing a large amount of useful USPTO data to the public.
