Six Practical Uses for File Wrapper Searches

November 12, 2017 David Bennett

Beyond the depths of USPTO prosecution statistics there sits a world of rich, actionable content waiting to be tapped and utilized by patent practitioners. Tied to every patent application is a file wrapper containing the text of office actions, responses, claim language, appeal documents, and much more. While these file wrapper documents are mostly public record, an inability to efficiently comb through the text of these documents has diminished their value as quality resources for patent prosecution. LexisNexis PatentAdvisor® gives you the ability to search an archive of these file wrapper documents and to unlock more actionable information than ever.

  1. Searching for Licensing Opportunities

Being awarded your patent gives you the ability to license your idea to other inventors - but first, those inventors must be identified. PatentAdvisor™ full-text searches now provide you with a means to find potential licensees by searching file wrapper documents for your patent number or application number If your patent application has been cited as being applied art in a different patent application, the applicant has based his invention in part on yours, and is likely in need of your permission to bring it to fruition.

  1. Collecting Information about a Patent Practitioner

Compiling information about a particular patent practitioner has never been easy, until now. The ability to search a database of full-text file wrapper documents for patent practitioners' application numbers will provide you with access to every file wrapper document they have worked on. Any patent practitioner’s entire prosecution history can be found with a click of your mouse.

  1. Identifying Trends in the Examiner’s Prior Art Statements

Patent examiners tend to have their favorite pieces of prior art that they cite regularly in office actions. With full-text file wrapper search, you can take a look at every office action your patent examiner has ever written. You may find previous office actions citing the same piece of prior art, allowing you to study how it was handled in the past, and to use your patent examiner’s former statements to your advantage.

  1. Anticipating an Examiner’s Response

A great way to evaluate your argument is to anticipate your examiner’s response. PatentAdvisor file wrapper searches allow you to search through your patent examiner’s previous office actions to find responses that mirror your own. If those responses have proven to be unpersuasive, you may want to redraft your argument or even consider an appeal.

  1. USPTO Trend Analysis

The key to identifying USPTO trends is to look at the broader picture, and not just to one case. File wrapper searches give you the ability to find patents with a common attribute and analyze how they have been handled over time. For example, by searching for specific claim language, you can work your way through similar patents to identify pivotal moments in patent prosecution.

  1. Pulling from Collective Wisdom

Facing a rejection you have seen before? There is no need to start from scratch if you can build an argument from your previous responses. Searching your hard drive for previous work has its limits, but file wrapper searches allow you to filter all of your previous responses by rejection type or identify the winning arguments of other patent practitioners. You can then use elements of those arguments as part of your own to increase the odds of persuading your patent examiner.

LexisNexis PatentAdvisor is much more than just patent analytics. PatentAdvisor full-text file wrapper searches unlock valuable resources to create winning arguments for superior patent prosecution.

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