How to Review the History of a Patent Application – Using Public PAIR. Episode 129

(This episode first aired in 2021. Significant changes have been made since then and patent file histories are reviewed through the new Patent Center, not Public PAIR. See Episode 135 about the new Patent Center).

Patent Process Overview

You know, I’ve covered at least the basics of pretty much everything that can happen during the patent application process. I can’t discuss every detail, because if you’ve ever looked at the Manual of Patent Examining Procedure on paper, it looks like two gigantic phone books.

My goal is that you know enough to have a productive conversation with an attorney such as myself when you’re going through the process. So when the attorney says, “Our options are filing a pre-appeal brief, a request for continued examination, or using the After Final Consideration Pilot 2.0 program,” you won’t have a complete blank stare. Maybe still a blank stare—but not a complete blank stare.

Introducing Public PAIR

But I did think of something that I haven’t discussed before—and that’s using Public PAIR to find the history of patent applications. What is PAIR, why is it public, and what is it used for?

PAIR stands for Patent Application Information Retrieval. It’s the government database that stores the entire history of what happened during a patent application. If you just do a regular patent search on Google or FreePatentsOnline, or even on the USPTO website, you’ll pull up a patent or a patent application and you’ll see the published application or the published patent—and that’s it. But that’s really just the final product.

Why Application Histories Matter

Let’s say you did a Google Patent search and saw that a patent application was filed but went abandoned. Google Patents will tell you that. But why? Did they just not pay some required fee? Did they get a rejection and never respond? Did they respond to a rejection but weren’t able to convince an examiner?

You might want to know this because let’s say you came up with a very similar invention and you came across this patent application that was like yours—maybe yours is a little different—but if their application got rejected because of some other related application out there, you might want to know that. If that’s what happened, there’s a good chance you might get the same rejection.

If it just went abandoned because they didn’t pay a fee, then maybe that’s not as concerning for you. Also, getting the complete file history is useful if you want to file your own application because you can see every document filed. You can see how their powers of attorney looked, what their declarations of inventorship looked like, what their assignments looked like, the format for how they responded to rejections, and any other document either submitted to the Patent Office or sent from the Patent Office to the inventors.

Public vs. Private PAIR

I mentioned Public PAIR, which means—if you’re thinking logically—that maybe there’s something called Private PAIR. And yes, there is. Private PAIR has the same information as Public PAIR, but Private PAIR is when you are looking at the file history of your own patent application before your application goes public.

Remember, most of the time, your patent application is not publicly available until 18 months after you file it. Other people can’t look it up, but you can look it up yourself if you set up an account and enter your login and password on the Patent Office website. I talked about setting up an account at the Patent Office and how to do that in a previous episode.

After 18 months, that same information that’s on Private PAIR now becomes available on Public PAIR, where you don’t need any login information. All you need is an application number or patent number, and I’m going to run through an example.

How to Access Public PAIR

Website URLs may change, so I can only tell you what works now. To get to Public PAIR, you can go directly by typing in:

portal.uspto.gov/pair/PublicPair

You have to put in a number and select whether you are entering an application number, control number, patent number, PCT number, publication number, or international design registration number.

I’m going to put in a patent number. And if you’re a fan of the podcast, you’re going to know which patent I’m putting in. It’s my favorite kitchen device—the avocado pitting device that splits, pits, and slices an avocado in one tool. The patent number is 8726799.

So click the button that says “patent number,” and then type in the number.

Exploring the PAIR Interface

Once you do that, you get to the PAIR screen, and there are a bunch of tabs. The first tab shows you what’s called bibliographic data. It says the inventor name, when it was patented, when it was filed, and just some basic information.

If you want the entire file history of every document related to this patent, you click the tab that says “Image File Wrapper.”

By my count, it looks like there are 100 different files. You can sort them in different ways. The way I like to sort is by the column called “Mail Room Date”—this is the date the Patent Office received or sent the file. You can sort it in either chronological or reverse chronological order. By default, it’s reverse chronological, but I like to click it so it’s in regular chronological order so that as I’m scrolling down, I’m scrolling through time.

Reading the File History

If you click the arrow so it’s in regular chronological order, you’ll see the first file submitted was August 23, 2011, and the last date is September 22, 2021. I was actually a little surprised to see such a late date because the patent issued in 2013—but let’s go through it.

Now, you can click each file separately and a new window will pop up showing the PDF. But what I like to do is use the far-right column that says “PDF.” If you click the button next to that, it will select every file there, and you’ll see checkboxes show up next to each file.

Then click the purple PDF button, and this will generate a single PDF of the entire patent history. It’s called the Image Wrapper. The file it creates will have bookmarks for each individual file, so it’s easy to navigate in one PDF. But you can also look at it directly on PAIR and just click through one by one.

You’ll see that there were 19 files uploaded on that first date. You can see the Information Disclosure Sheet, which is a listing of similar products the inventors knew about. You’ll see uploads of what’s called non-patent literature—maybe it’s product catalog photos of similar devices. You’ll see the Application Data Sheet, which provides the Patent Office with basic information about the applicant and inventors. You’ll see the specification, claims, abstract, drawings, the declaration of inventorship—everything needed for a proper application upload.

Using Examples for Guidance

If you want to see how people actually filled out and uploaded the actual forms, you can see exactly what they did. I’m not saying to copy it—because maybe they did it wrong—but if they did do it wrong and the Patent Office caught it, they’ll send a notice to fix it. That will also be in the file listing, so you can see what they did wrong, what they had to do to fix it, and whether their fix was accepted.

There are a lot of files you probably won’t care about, like fee worksheets and acknowledgment receipts. The ones you probably want to look for are things with the word “Rejection” or “Response.”

For example, on March 11, 2013, they received a non-final rejection. You can click that to see what the rejection was about—here, the examiner found something similar and rejected it.

Then, if you scroll down to files after that, you’ll see on May 9 there’s an amendment and a request for reconsideration of the non-final rejection. You’ll also see a separate claims file, where the inventors changed some of their claims to try to distinguish their invention from the prior art.

Final Rejections and Continued Examination

Then, on June 21, 2013, they got a final rejection. The examiner cited more prior art with similar features and still refused to allow the patent.

On August 2, 2013, the inventors filed a response after final using the After Final Consideration Program. Remember, “final” doesn’t really mean final—and I’ve talked about what you can do when you receive a final rejection. You can click that file to see what they did—they amended the claims further to make them narrower.

Yada yada yada—like I said, there are 100 files in this file wrapper, so I’m not going to go through every one—just the main ones.

Still, they didn’t get the patent after that. So they filed a Request for Continued Examination on August 29, made more claim amendments, and added new arguments. Then again, on October 4, 2013, they received a non-final rejection.

Why non-final when it was final before? Go back and listen to my episodes on what happens when you file a Request for Continued Examination. Basically, you get two more bites at the apple—with payment—and that’s what they did. So the first rejection after a Request for Continued Examination is a non-final rejection.

Then, on December 26, 2013, they made more amendments and arguments to support patentability.

A Successful Outcome and Surprise Litigation

On March 20, 2014—guess what—they did it! Bum bum bum bum: a Notice of Allowance. Five days later, they paid the fee to get the patent allowed, and the Issue Notification came in on April 30, 2014.

That was the last I knew about it until I checked the file history today. I thought it was one of millions of patents that just sit there, but on June 24, 2021, there was a file titled “Report on the Filing or Determination of an Action Regarding a Patent.” If you click it, you’ll see that the patent holder is suing IKEA for patent infringement.

Now—I’m not saying this is true—but what if my podcast was so popular that IKEA listened to it, liked the idea of the avocado slicer I’ve talked about so much, and thought they could pull a fast one and start selling a knockoff? Or maybe someone told OXO that someone did a podcast focused on their avocado slicer, so they decided to investigate.

The patent is owned by a company called Helen of Troy, even though it has the OXO name on it.

Patent Litigation Insights

In the complaint I looked up online, they say the tool has “garnered unsolicited media praise,” listing places like Business Insider, E! Online News, Food & Wine, and others. I’m a little disappointed that I wasn’t mentioned—but oh well.

You can see in the complaint the version that IKEA is selling. It looks different enough that no one would think it’s counterfeit. But remember, with utility patents, infringement isn’t about how something looks—it’s about whether the words in the claims cover another product’s features.

If their patent claims a device with a multi-slicer region, a pitting region with spokes, and a blade all connected together, then it doesn’t matter if another product looks visually different from the OXO one.

If it’s about visual similarity, then we’re talking about design patents or trade dress. But if it’s about how something functions, that’s utility patent territory.

OXO actually has a design patent too. Honestly, these products look pretty different—that’s a stretch. No ordinary consumer would think IKEA’s version is the same. But in patent litigation, you sometimes throw in the kitchen sink and hope something sticks.

The last document says there was a Joint Stipulation of Dismissal dated September 22, 2021. So they came to some agreement. Maybe IKEA paid them to settle. I’m sure you can look it up.

Conclusion and Other Public PAIR Tabs

I got a little sidetracked because of my favorite kitchen gadget, but the whole point was—you can find out a whole lot more about a patent and the process it went through by using Public PAIR.

There’s other information you might find useful on Public PAIR besides the Image File Wrapper.

There’s a tab to see Patent Term Adjustments—which lets you know if the patent is getting extra time beyond the typical 20 years. In this case, it’s getting an extra 139 days.

There’s a “Continuity Data” tab that tells you whether this patent claims priority to an earlier one or has later applications based on it. In this case, there was an international PCT application filed based on this one.

There’s a “Fees” tab, showing when fees were paid, what fees are due, and how much they are to keep the patent active.

There’s a “Published Documents” tab, linking to both the published application and the published patent. These might differ because changes may occur between filing and allowance.

There’s a tab for the attorney or firm address. A tab for “Assignments,” showing ownership transfers. And the final tab is “Display References”—this shows all references considered relevant by the inventors or examiners.

Final Words

So I hope you’ve learned about Public PAIR and all the detailed information you can get from it—beyond what you’d see in a basic patent search.

I’m Adam Diament, and until next time—keep on inventing.