In a previous blog post I introduced the “What to Look for When Using US Public PAIR” infographic which I put together to help new Public PAIR users find their way around the system and to identify the sections of the site which would help them make a preliminary decision on how valuable a patent might be based on an analysis of its progress during examination at the USPTO.
A lot of commentators like to give the examiner’s at the USPTO a difficult time for granting patents of dubious value. Personally, I think they get a bad rap and most of the time when you look at the prosecution history you see that the examiner has done a reasonable job of limiting the initial claims based on a reasonable, if not comprehensive, search. By way of an example, I looked at US6932368, Apparatus for Harnessing Wind to Drive a Bicycle. This particular patent has made a few lists of “outrageous” patents and on the surface seems entirely obvious. Looking at the file wrapper we find that there are specific elements of this invention that appear to be patent-eligible and after examination the claims of the patent have gone through a significant change. Let’s have a look at US Public PAIR and see what we can learn about the ‘368 patent. We will also look at how potentially valuable this patent might be based on what we learn.
After getting past the ReCaptcha on Public PAIR we are met with the search screen where we can enter our patent, application or publication number. In this case we want to enter 6932368 (without the US, since this is a US government system) into the patent number field.
This will take us to the Public PAIR record for this patent starting with the Application Data tab:
The first thing we notice is that the status of this record is Patented Case so the document is still in-force. We also notice that there is no pre-grant application associated with this patent (it would be listed under Earliest Publication No:) and that it was granted in less than 18 months, which is why no pre-grant application is associated with it. We can see that the patent granted in less than 18 months by comparing the Filing or 371 (c) Date to the Issue Date of Patent. In this case the patent granted in just less than 17 months. This is pretty fast by most standards and would suggest that there may be issues with this patent which could impact its value.
We can also see from this page that there is no Continuity Data tab associated with this patent. Without this present we can tell that this patent does not have additional patent applications which claim priority to this one and this application did not claim the benefit of any other. In other words, there was no provisional applications, additional US family members or any PCT fillings associated with this patent. Ordinarily you would like to see PCT filings to suggest patent coverage in other countries and additional US family members. Both of these items are indicators of additional investment and thus higher potential value.
Let’s move next to the Fees tab. When you click on this tab a new window or browser tab will open into the USPTO Maintenance database. We already know that the most recent fees have been paid for this patent since the Status field under the Application Data tab would have said something other than Patented Case if this had been otherwise. Before clicking on the Fees tab make sure you copy the application number from the top left corner of the Application Data tab since you will need to paste this information into the Maintenance database page. The patent number is copied automatically but for some reason you still need to add the application number. The page looks like this:
Once the application number is added click on the Get Bibliographic Data button to get information on when the next fee window opens and what the fee will be. This database is also used for looking at the entity type associated with the Assignee. This will tell you if this is a large company or a small one.
Going back to Public PAIR, let’s explore the Patent Term Adjustment tab.
On the full page you can see a lot of detail on exactly what constituted the different types of delays which are used in this calculation but the bottom line is the number found in the Total PTA Adjustments field. For the ‘368 patent we see that the patent term was extended by 17 days. This does not have a significant impact on the life of this patent. In some cases though this number can end up in the thousands signifying an increase in term by several years which will have a significant impact on the life of the patent.
The next tab up is Display References. While I can see the references filed by the applicant in the form of their Information Disclosure Statements (IDSs) and the List of references cited by examiner in the Image File Wrapper tab I can also get them directly from there.
In this case I can see that no IDS was filed by the applicant and that there is only one Form 892 (List of references cited by examiner). Additional Form 892s and IDSs are signals of a more involved back and forth discussion between the examiner and the applicant and can indicate a more thorough examination but you have to look at the details to get a real sense of the number of documents discussed and how they were applied by the examiner and argued against by the applicant.
This brings us to the most important tab of all, the Image File Wrapper. Here we will find all of the office actions and correspondence that took place between the examiner and the applicant and we will get a sense of the real value of this patent. So far our indicators suggest that this is not a particularly valuable patent but we will find out for sure by looking at the documents listed in the Image File Wrapper.
Users can download copies of the prosecution documents by checking the boxes below the PDF button and then pressing the PDF button to transfer the file. For the ‘368 patent I am interested in the Notice of Allowance and Fees Due documents, the Amendment/Req. Reconsideration – After Non-final Reject, the Claims (original and revised), the Applicant Arguments/Remarks Made in an Amendment, the Non-Final Rejection, and the List of references cited by examiner (Form 892) documents in order to discover what occurred during prosecution. After reading these I discovered the following facts about this application.
The original first claim read:
Apparatus detachably connectable to a bicycle, said bicycle having a frame with front mounted handle means and rear mounted seat means, the bicycle having front and rear wheels secured thereto, the front wheel extending in front of the handle means, the rear wheel extending rearward from the seat means, each wheal having a corresponding axle extending therethrough, said apparatus comprising:
a sail attachment which when connected to the bicycle harnesses wind to drive the bicycle forward, said attachment adapted to fit on the rear of the bicycle above the rear wheel and securable to the seat means, said attachment being provided with a wind receiving sail which when attached to the bicycle can harness wind 45 degrees from either the left or right side of the bicycle, 90 degrees from either the side of the bicycle and at the rear of the bicycle to power the bicycle.
This is very broad and if allowed would have been a potentially valuable patent covering a number of designs associated with the addition of a sail to a bicycle. The examiner in their Non-final rejection, pointed out ten US patents, including a document from 1899 which were the basis of 102 and 103 rejections of the first claim as written.
In order to avoid the prior art the applicant canceled claims 1 and 2 and provided new claim 6 which was essentially dependent claim 2 incorporated as part of claim 1. This became the new claim 1 in the granted patent and reads as follows:
Apparatus detachably connectable to a bicycle, said bicycle having a frame with front mounted handle means and rear mounted seat means, the bicycle having front and rear wheels secured thereto, the front wheel extending in front of the handle means, the rear wheel extending rearward from the seat means, each wheal having a corresponding axle extending therethrough, said apparatus comprising:
a sail attachment which when connected to the bicycle harnesses wind to drive the bicycle forward, said attachment adapted to fit on the rear of the bicycle above the rear wheel and securable to the seat means, said attachment being provided with a wind receiving sail which when attached to the bicycle can harness wind 45 degrees from either the left or right side of the bicycle, 90 degrees from either the side of the bicycle and at the rear of the bicycle to power the bicycle.
a U shaped member having two downwardly extending legs and an upper horizontal element extending therebetween with the legs being securable non-rotatable to the rear wheel axle;
a horizontal hollow tube open at both ends secured to said element, said tube being disposed at right angles to said element;
a vertical hollow mast security to the tube extending upwards therefrom;
a horizontal boom secured at one end to the mast adjacent the lower end of the mast;
said sale having an elongated vertical leg that is secured rotatably to the mast and a short horizontal leg secured rotatable to the boom; and
a boom haul extending along the hypotenuse of the sail and spaced therefrom, the boom haul being connected between the other end of the boom and the upper end of the mast.
The examiner, in the Notice of Allowance wrote the following:
“The prior art shows a number of bicycle sail configurations, but none include all of the details claimed, including a U-shaped member with an upper horizontal element that is fixed to a hollow horizontal tube, the tube being open at both ends and positioned perpendicular to the horizontal element, and a mast secured to the hollow tube, for securing the sail attachment to the bicycle rear axel and seat tube.”
So, a claim that was originally very broad and which could embody a number of different designs has now been narrowed to something very specific requiring a number of elements which theoretically could be designed around.
While the general idea of a sail powered bicycle might be of limited economic importance in the first place this particular patent seems to be of even more limited value based on the fact that there are no additional US or foreign family members associated with it and that after a reasonably efficient examination the claims were narrowed to such a degree that only an extremely specific design would actually likely infringe the patent.
While the title and perhaps even the abstract of the ‘386 patent may seem threatening after studying the prosecution history using Public PAIR we find that perhaps it is something to not be quite so concerned with after all. It is certainly not anything to make a fuss about.
