What to Look for When Using US Public PAIR and Other Lessons from Blogging

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What to Look for When
Using US Public PAIR and
Other Lessons from
Blogging
Anthony Trippe, Managing Director
2013 PIUG Annual Conference

The Most Popular Posts on the Site
Have Been the Infographics
• High
resolution
images
available on
the site
• First one
covers Public
PAIR
• Second one
covers Key
Court Cases

Public PAIR Infographic Designed to
Let People Evaluate Patents
Themselves
• Uninformed people complain all the time about
patents that are quite limited in scope and
have significant limitations imposed upon them
in order to put them in condition for allowance
• A quick look at a few items in the file wrapper
can offer some idea of how broad and
potentially valuable a patent is
• Any conclusions, especially business critical
ones, should be confirmed by a patent
attorney
• This review can assist with that conversation

What is US Public PAIR and How can
I Access the Information?
• PAIR (Patent Application Information
Retrieval) is the USPTO Registry system for
information on the prosecution of patent
applications
• Once the application publishes or the patent
grants this information is made available to the
public
• Most cases available with electronic Image
File Wrapper since 2002
• http://portal.uspto.gov/external/portal/pair

Once past the reCAPTCHA you Enter
the Patent or Application Number
• No kind or
country codes
necessary
• Application
number should
include / after
series number
but no comma in
serial number
• Publication
Number is for
pre-grant apps

PAIR is Organized Using a Tabbed
Interface - Application Data Tab
• When was the
application filed?
• What is the
status - is it still
in-force?
• Does the
location say
Electronic or File
Repository?
• Is there a pre-
grant app?

Continuity Data Tab
• Is there a PCT
filing?
• Is the family still
open for
prosecution?
• Are there
additional US
family
members?

Patent Term Extension History Tab
• Previously called
Patent Term
Adjustment
(PTA)
• In this case the
patent was not
extended
• Displays delays
by applicant and
by the Patent
Office

Display References Tab
• How much prior
art did the
applicant make
available to the
examiner?
• Are there any
892 or examiner
citations
associated with
case?
• Are there NPLs?

Image File Wrapper Tab
• Are there
Terminal
Disclaimers?
• How many
Office Actions
until an
allowance?
• Are there any
abandonments
in the file?
• Did the claims
change?

Notice of Allowance Provides
Reasons for Granting the Patent
Document• First 15 claims
canceled -
presumably
double patenting
• Claim 16 has
many steps
including -
“selectively
dispense
encodable
credit”
• Pretty specific
claim overall

Conclusions from Analysis
• The original patent is still in-force with a 1998
priority date
• At least 15 US granted patents in the family
• Open for continued prosecution
• At least 10 applications still pending
• PCT filing suggests possibility of international
filings
• Significant number of patent and non-patent
literature references considered during
examination
• Likely a valuable portfolio

Also Provide a Method for
Downloading PAIR Data for Google
Patent

The “Friday Fun” Posts on Litigation
Developed Differently than Expected
• Originally, just for fun but
provided an opportunity to
share interesting
examples
• Designed to use litigation
and off-beat topics to
provide lessons on
business aspects of
patents
• Panties post became very
popular

And Then There was That Series of
Posts on Patent Citations• Discovered initial issue Summer of 2012 when
noticed that some granted US patents didn‟t
have any citation but their corresponding
applications did
• Ended up asking two questions:
• Do pre-grant applications contribute
significantly to the citation counts for a granted
patent?
• Are citation patterns different between
countries?
• A third question was asked by others
• Do sources of patent citations agree with one
another?

It All Started with the Following
Question
• So which answer represents the number of
forward citations for US8341981?
• a. 22
• b. 0
• c. 7
• d. All of the above

It All Started with the Following Question
• So which answer represents the number of
forward citations for US8341981?
• a. 22 - Represents citations to INPADOC
Patent Family
• b. 0 - Citations to Discrete „981 Patent
Document
• c. 7 - Citations to „981 and Corresponding
Pre-Grant App
• d. All of the above

When Looking at Citation Patterns in
the US I Found the Following
• 83% of the cases where a granted patent from
the study has a forward citation and a
corresponding pre-grant application there are
forward citations associated with both
documents
• Individually, both pre-grant applications and
granted patents from the study had ~75% chance
of having at least one forward citation - much
higher than expected
• For the granted patents that did not have any
forward citations associated with them, 60% of
the corresponding pre-grant applications still had
at least one

The Situation in Europe However is
Very Different - But Still Surprising• It is critical to consider pre-grant applications in
Europe when talking about forward citations with
patent equivalents - Less than 10% of grants
have forward citations
• In Europe the likelihood of finding forward
citations associated with pre-grant applications is
four-times higher than finding them with the
granted patent - between 35-45% chance of
finding forward citations on pre-grant
applications
• Europe only has examiner citations but more
applications than expected still have forward
citations

Surprisingly, the Discussion Launched
a Separate Question on the PIUG
Wiki

What to Look for When Using US Public PAIR and Other Lessons from Blogging

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