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This is the third part of a 3-part series that covers the action after filing a patent, commonly dubbed prosecution within the patent industry. The first article covered the rough timelines that an applicant faces for a patent to be examined and issued. The second article discusses the Examination Report - Response cycle discussed in the first article. The third article here covers finding all this information in the public record, as was used in the example for the second article.
Prosecution history: why you should be interested
Patent prosecution history provides valuable insights into the strength and scope of a company's patent. The history reveals how patent claims were challenged during the examination process. In particular, the Examiner Reports and responses to the Reports will have the grounds of rejection and give an idea as to the approach of the Applicant or their Agent for arguing or making changes to the claims to satisfy the Examiner.
These records or correspondence between the examiner and the applicant are made publicly available during the examination process and can thus be used to see if there are any significant issues facing a patent application that is still pending.
Finding the prosecution history
Examination of patent applications is a process that happens at a national level; the prosecution history is typically found in the respective country’s patent database. Therefore, the simplest and most accurate way to find the prosecution history is to start by locating the patent. To search for the patent you will need either an application number (for US patents, this will have a format of YEARNNNNNNNLN, for example 20001234567A1) or granted patent number (usually just a jurisdiction code and number, for example CA1234567 or US87654321).
How to find which country the patent is prosecuted in
When applicants are seeking to protect their invention in many countries they will have something called a patent family. The patent family includes all the patent applications related to the same invention, including filings in different jurisdictions/countries, divisionals (different inventions claimed from the same disclosure/description), and continuations (a US-specific action where a new patent is applied for using the same description but different claims). Critically, patents within a patent family will usually have the same title, inventors, and applicant and so the specific number is needed to differentiate them. If the exact number is unknown, one can often find a patent family by title, inventor, and/or applicant though Google Patents or patent office search tools, such as Espacenet or PatentScope. Both Espacenet and PatentScope has a tab for “patent family” where all patents in the family are listed, but you may not be able to access all related documents here. Instead, you may need to do jurisdiction-specific searches, such as the USPTO Patent Public Search or CIPO’s Canadian Patent Database.
Documents in the Canadian Patent Database
The Canadian Intellectual Property Office’s Canadian Patent Database has a search engine that allows for a patent number specific search using the Canadian patent’s assigned number. The database contains all the publicly available information for each Canadian patent or patent application, such as administrative status (with event, abandonment and fee histories), the current and past Owners on Record, and the Documents including Examiner requisitions (office actions) and responses along with the description, claims, drawings, abstract, and other documents related to the application itself.
USPTO: Global Dossier
The USPTO has a search engine, the Patent Public Search, that is separate from their file history database, the Global Dossier. Global Dossier searches exclusively by patent number, either granted or application, and will find the patent family associated with that patent number. The results can include patents from different jurisdictions, including the US, the European Patent Office, Korea, China, and Japan by default or more if you wish to include the “Non-IP5 Offices”. Once a patent is found, the file history is available by navigating to the “View Dossier” link. Within the file history, there are many documents that are beyond the scope of this article, but it is often worthwhile to look at the Examiner Reports (non-final and final rejections) and the responses on file. To illustrate what might be found here, an example case is shown below.
Putting it all together: McGuire Aero Propulsion Solutions
McGuire Aero Propulsion Solutions' IP Success Story highlighted the company’s patent journey from the perspective of the founder. We will now take a brief look at the behind the scenes of their patent towards a “Rotary manifold for a cohesion-type drive” (US10794239B2) by looking at the the USPTO Global Dossier file for the Examiner Report (“non-final rejection”) and the response filed by their patent agent (“Applicant Arguments/Remarks Made in an Amendment”).
Brief summary of objections and response
Restriction: As mentioned in the IP Success Story, the Applicant purposefully included two innovations (identified by the examiner as a “cohesion type drive” and a “manifold for a rotor assembly of a cohesion type drive”) in the single application and would have expected a likely restriction rejection. In the response, the Applicant indicates that they elect to pursue the cohesion type drive and cancel claims 13-33, corresponding to the manifold assembly. To protect the invention in the cancelled claims, the applicant filed a divisional patent application directed to “A rotary manifold for a cohesion-type drive” (US11572788) which was subsequently prosecuted and granted.
Above: example of an election / restriction requirement raised by the examiner
Informalities: The Examiner objects to claims 1-12 for a number of informalities, such as “‘the drive’ should read ‘the cohesion type drive’” and indicates the corrections needed for compliance. In response, the Applicant amends the claims as requested.
Above: example of an objection regarding informalities raised by the examiner
Indefiniteness: The Examiner objects to some wording in claim 1, 6, and 8 that is unclear as to the meaning - for example, “the claim is unclear whether “therewith” refers to the shaft of the casing” which can be corrected with the suggested language of “with the shaft”. The Applicant made all requested amendments.
Obviousness: The Examiner cites two patents, Amero and Eskeli, arguing that it is obvious to combine the two. The Examiner asserts that the two patents “teach” (discloses or makes public knowledge) the contents of claims 1-12. In regards to claim 1, the Examiner cites Amero as teaching “a cohesion-type drive” bearing a number of features, but lacking explicit reference to “a shroud manifold…ductwork in fluid communication with the plurality of compression chambers” and cites Eskeli as teaching the “fluid drive”. In response, the Applicant “traverses without substantive amendment” (argues without changing the claims) and points out a variety of differences between the claimed invention and that which is disclosed in Amero and Eskeli. One example argument is that Amero’s disclosure, based on both the description and a figure, describes a feature that is in “fluid communication” that the examiner likens to features of the claimed invention that are in “fluid isolation”.
Above: example of an obviousness rejection raised by the examiner; below: an excerpt of the remarks made in response to the rejection
As listed above, the Examiner Report raised objections related to restriction, informalities, indefiniteness, and obviousness. However, these were not final. In fact, the prosecution continued and resulted in a combination of amendments to address the informalities and indefiniteness objections, election of invention and subsequent cancellation of claims pertaining to the 2nd invention, and arguments against the Examiner’s obviousness objection. All of these proved successful as no further rejections were issued and the patent application was allowed.
About the Author:
Greg Hong came to ventureLAB as a part of Osgoode Hall Law School’s IP Intensive program. At Osgoode, Greg focused his studies on intellectual property, receiving the Gowling WLG Best Blog in IP Law and Technology Prize and competing in the 2024 USPTO National Patent Drafting Competition. Greg looks forward to articling at Rowand LLP upon completion of his law degree.
