The patent application process can be long: the United States Patent and Trademark Office (USPTO) estimates the average application takes more than two years to process. In that time, a patent application will undergo rigorous evaluation by a patent examiner, and all this information is included in the patent file wrapper.
The file wrapper, also known as the patent file history, includes all the communications and documentation of a patent application. This includes information in the application itself, as well as responses and office actions filed by the USPTO’s patent examiner.
Why are patent file wrappers so important? A file wrapper is essentially a timeline of your application, and if you face infringement or litigation issues in the future, the file wrapper can be used in court to help determine a legal outcome.
But they’re also used for other purposes, too. The USPTO points out that file wrappers can be of value to:
- Competing inventors and companies
- Licensees and other business partners
- Third parties “attempting to invalidate the patent”
In each case, the party in question is interested not only in the end result of the patent application process, but the journey that was taken to get there. The patent file wrapper is required to include all steps of the process, and for that reason, it offers analysis and insight that might not be had otherwise.
What’s Included in a Patent File Wrapper?
The file wrapper includes all documentation related to your patent application with the USPTO. Simply, as the USPTO puts it, the wrapper “defines the scope of the claimed invention and the patent owner’s rights.”
The file wrapper must “clearly explain the rationale for decisions made during the examination” process, which puts responsibility on both the applicant and examiner.
The patent file wrapper includes:
- All documentation related to the initial application
- Cited prior art
- Office actions filed by the examiner
- Documents prepared by the examiner
- Statements and summaries of interviews
- Rejection and objection documentation
- Responses and amendments from applicant
- Any other relevant correspondences
The USPTO notes that the burden of responsibility and accuracy of the file wrapper resides both with the patent examiner and the applicant.
There is no standard file wrapper, then: each file history includes as many objections, rejections, office actions, responses and other communications as necessary.
Why are Patent File Wrappers Useful?
As noted, file wrappers can play significant roles in patent litigation and related issues. They are also used for case studies, research and other legal and creative endeavors.
Perhaps the most useful aspect of the file history is the fact that it clearly outlines the patent’s prosecution (the process of examination). The USPTO requires patent examiners to “provide clear and complete Office actions through the examination process.”
This means that instead of providing vague or unclear objections, the patent examiner must specifically outline reasons for objection, whether it’s due to prior art or the content of the application itself, or any other host of reasons.
This is the value of the file wrapper: it provides readers with a nearly step-by-step look at the prosecution of the patent, from application to final decision. Along the way, this offers insight into how the patent examiner went about evaluating the patent’s validity.
You can see, then, why competing inventors and interested partners would want to learn more about how the patent came to be. In litigation cases, particularly, this can provide the documentation needed to make important court determinations.
These are examples of patent applications that were eventually accepted. But even for those that were rejected, the USTPO requires examiners to fully explain “all outstanding grounds of rejection.” In this case, the file wrapper may be of more interest to the applicant.
Similarly, the applicant has a responsibility to accurately and completely file responses to the examiner’s findings, and this information is included in the patent file wrapper.
Learn More About Patents
File histories are an important part of the complex patent application process. If you have questions about patents, or other areas of intellectual property, the team at JacksonWhite Law can help. Our talented attorneys can offer you the legal solutions you need to best protect and grow your ideas and inventions.
Call JacksonWhite at (480) 464-1111 to discuss your Intellectual Property case today.
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