For patent attorneys: the essential back story

For lawyers prosecuting or litigating patents, patent file history (as reflected in the file wrapper) is a vital part of 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).

Unfortunately, it 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.

Relief has arrived.

By using the newly released U.S. Patent File Histories database (US-PAT-HISTORY), you can instantly retrieve 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.

Search example
For instance, suppose you are viewing U.S. Patent No. 6,237,565. You can click View Patent File Wrapper at the top of the document or on the Links tab. PDF links are displayed for such materials as the file wrapper jacket, a rejection notice from the U.S. Patent and Trademark Office, and an amendment subsequently filed by the applicant.

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

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