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On Aug. 4, 2004, Public Patent Application Retrieval Information (PAIR) became available. Before then, there was no online access available to the official records of published patent applications and patents that are kept by the U.S. Patent and Trademark Office (PTO), except through private PAIR. Private PAIR limits access to only those official records that are associated with the same customer number as that of those who seek access. Image capture of the official files has only been accessible online since July 1, 2003, through private PAIR. Now image capture of official records is accessible through public PAIR. Public PAIR allows anyone with Internet access to view, download and print all the official records of published patent applications and patents in PDF format, except for nonpatent literature (NPL) documents. NPL documents may be ordered through the PTO, but are not accessible online in deference to rights of copyright owners. Nonpublished patent applications remain protected by secrecy laws, and their official files are only accessible through private PAIR, but not through public PAIR, provided they are associated with the customer numbers of those who seek access. Links are provided so that official records of published patent applications and patents that share the same domestic priority may be accessed and the status of the patent applications as they move from publication to final disposition may be tracked via public PAIR. Public PAIR even identifies pending nonpublished patent applications that share the same domestic priority as a published patent application or patent, even though the contents of the nonpublished patent applications remain protected under secrecy laws. Through online access via the PTO Web site, more than 6.8 million patents and more than 500,000 published patent applications are available for viewing, downloading and printing. Patents became accessible online in 1998 through the PTO Web site, and published patent applications became accessible online on March 15, 2001. Through public PAIR, the PTO expects the official files of an additional 300,000 published patent applications each year to become accessible. The PTO describes the PAIR system on its Web site as follows: “There is both a Public and Private side to PAIR. ‘Public PAIR’ only displays issued or published application status. To access Public PAIR, you need only have a patent, application, or publication number that you wish to search. ‘Private PAIR’ is the Patent Application Information Retrieval system developed to provide secure access for customers who want to view current patent application status electronically via the Internet.” See www.uspto.gov/ebc/pair/pair_faq.html. What information is available Public PAIR is accessible from the PTO Web site, www.uspto.gov, by clicking on the icon that is identified as Status & IFW under the Patents link. IFW stands for image file wrapper, which refers to image capture of the contents of official patent prosecution files at the PTO. Clicking the icon takes you to a screen display with a drop-down window to choose a type, either application number, control number, patent number or publication number. See http://portal.uspto.gov/external/portal/pair. After choosing the applicable drop-down window and entering the appropriate number in the space provided, a screen display appears that has a row of tabs from which to choose pertaining to that number. The tabs in the screen display may be entitled application data, transaction history, continuity data, image file wrapper, patent term adjustments, foreign priority, published documents, fees, publication dates and address & attorney/agent. Only tabs containing information are displayed. Public PAIR also offers a quick-click feature for ordering certified copies of patent applications and application files. The application data tab lists categories with applicable information for each category that pertains to the chosen type and entered number. The categories are application number, filing or 371(c) date, application type, examiner name, group art unit, confirmation number, attorney docket number, class/subclass, first named inventor, title of invention, customer number, status, status data, location, location date, earliest publication number and earliest publication date. Links are provided to the examiner’s office location and phone number, and they also offer further information regarding the location of the file folder. The transaction history tab presents a chronological list of transactions, including a listing of internal transactions within the PTO. The continuity data tab identifies all related domestic patent applications from which, or to which, there is a common domestic priority claim, such as provisional, continuation, continuation-in-part, divisional, re-examination and reissue patent applications. Such related applications have a link to them if their contents are publicly accessible. The image file wrapper tab presents a chronological listing of each document in the file examination record and a link to the corresponding document in PDF file format for viewing, downloading and printing. Each document may be displayed and printed page by page or downloaded, saved and printed in its entirety by checking a corresponding box to the far left under a button identified as “Start Download.” If a user clicks on that button, whatever documents are checked will be downloaded and saved for subsequent retrieval and printing. The patent term adjustments tab reveals the calculation performed to determine the number of days added to the life of the patent attributed to internal delays of the PTO in handling the patent application that are not offset by delays attributed to the applicant’s conduct. The foreign priority tab identifies the country/office, application number and foreign filing date of the foreign priority patent application claim, if any. The published documents tab displays the corresponding published patent application. The fees tab reveals a window with a drop-down list to choose information pertaining to maintenance fees or maintenance fee statements. Depending upon which is selected, information is revealed regarding maintenance fees that still need to be paid and their deadlines and an image of maintenance fee statements that were sent. The recipient for mailing of such statements is also shown. The publication dates tab indicates the number assigned to the published patent application and the publication date. The address and attorney/agent tab indicates the name, phone number and address of the attorney/agent of record. Public PAIR provides a concise presentation of relevant patent application information and identifies patent applications sharing the same domestic priority claim. Patent practitioners no longer need to spend time extracting such information from the patent documents in the official files. Indeed, public PAIR should help speed completion of intellectual property audits, patent claim interpretations and patent validity determinations. Prior to public PAIR, one needed to order copies of official files and then wait for them to arrive before using them. The files might have taken weeks to arrive if they were being internally processed by the PTO. With public PAIR, the files are accessible online in real time; only NPL documents need to be ordered separately. Prior to public PAIR, comparing file histories for patents and/or patent applications that share a common domestic priority claim required tasks to be performed and a long waiting period. Such tasks may have included searching techniques to identify the files that share the common domestic priority claim, ordering the official files of each, waiting for their arrival, extracting file identifying information from each and organizing their contents in preparation for making the comparison. With public PAIR, those patents and patent applications that share a common domestic priority are linked with each other, thereby avoiding the need to employ searching techniques. There is no need to order and wait for delivery of the official files (other than NPL documents) because they are accessible online instantaneously. Indeed, the official files for each patent application are identified concisely and their contents are electronically itemized; there is no need to extract identification information manually from the official files or to organize their contents before making comparisons. Even reissues and re-examinations have links in the continuity tab to their official records and their status is readily monitored. Prior to public PAIR, identifying the official files that are presented in the continuity data tab required searching techniques to track them down, provided the files were publicly available for inspection. Patent applications protected under secrecy laws, however, were not readily identified through such searching techniques until they either published or became patented. That has now changed. Nonpublished applications Nonpublished patent applications that share a common domestic priority claim with one that is publicly accessible are now readily identified through public PAIR. This may require the patent practitioner to assess the significance of such knowledge when undertaking intellectual property audits, patent claim interpretations and patent validity determinations. In the past, patent practitioners never knew for sure whether nonpublished patent applications that shared a common domestic priority claim were pending unless they were divulged by the patentee or eventually became known publicly. Thus, there was uncertainty as to whether the patentee was in a position to seek different or broader patent protection through other pending patent applications. While such uncertainty still exists even with public PAIR, the patent practitioner is in a better position with public PAIR to know whether nonpublished patent applications are pending that share the same domestic priority claim as a patent under evaluation. The official records for pending nonpublished patent applications that share the same domestic priority claim as a patent may have an impact on claim interpretation for the patent. For instance, an inability to procure broader claim coverage during examination of claims of a nonpublished patent application may adversely affect how broadly claims in an earlier patent should be interpreted of the same patentee. If the claims in the nonpublished patent application eventually are granted and are broader in scope or cover different aspects of an invention than those in earlier patents, the rights of others to commercialize products that avoided infringement of the original patented claims may be affected by such broader claims. Thus, becoming aware that a patentee has applications pending that claim the same domestic priority as an issued patent should alert the patent practitioner of a potential future risk that should be taken into account. No one should believe that a patentee has no nonpublished patent applications pending with the same subject matter as the patentee’s patent just because none is identified in the continuity data tab. The patentee may have patent applications pending with the same subject matter as that of its patent, but opted to do so without making the same domestic priority claim. If so, the continuity data tab for the patent would not associate such a patent application with the patent. In sum, public PAIR is a time saver, providing a wealth of useful information in a concise, convenient manner that is found in the image capture of official files of published patent applications and patents. Links to official files of published patent applications and patents that share a common domestic priority claim are provided. Even the identity of nonpublished patent applications are revealed if they share a common domestic priority claim with a patent or published patent application. Robert J. Hess is a director at the New York office of Newark, N.J.’s Gibbons, Del Deo, Dolan, Griffinger & Vecchione. He counsels and represents clients seeking or litigating intellectual property rights. He can be reached at [email protected].

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