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Corporate Edge
Spring 2009

New on Westlaw: More patent file history

If you are prosecuting or litigating patents, patent file history (as reflected in the file wrapper) is probably a vital part of your research. "Statements and amendments reflected in the file wrapper will not only help with interpretation of the meaning of the patent claims but will estop the patentee from later attempting to recapture a broader reading of his claims by arguing a contrary position under the 'doctrine of equivalents.' " William C. Holmes, Intellectual Property and Antitrust Law § 1:6 (2008).

US-PAT-HISTORY documentIt can be extremely time-consuming to retrieve a copy of the file history, review all pertinent communications, and identify when and why various claims were revised, merged, amended, or dropped.

Now, however, West has added the U.S. Patent File Histories database (US-PAT-HISTORY) to Westlaw, which allows you to search the largest online portfolio of U.S. patent file histories available anywhere, including related office actions, correspondence, and exhibits. Patent file histories are available for selected U.S. patents, with an emphasis on patents that are commonly requested or litigated. Documents are exact PDF images, with all handwritten comments and time stamps intact.

For added convenience, links to US-PAT-HISTORY documents are displayed in documents from the U.S. Patents Full-Text (US-PAT) and United States Patent Applications (US-PAT-APP) databases, where available.

PDF imageof petition for extension of timeSearch example

Suppose you are viewing U.S. Patent No. 7,315,741. Click View Patent File History at the top of the document or on the Links tab. Links are displayed to PDF images of such materials as the file wrapper jacket, application, and petition for extension of time (see figure below).

The US-PAT-HISTORY database is part of Westlaw Patents, a suite of patent research tools and features that includes a claims version comparator and graphical views of claims histories and patent families.