Understanding the Patent File Wrapper
With a long and tedious process for the patent filing, it is important to be clear with all application processes and the deadlines involved in the midst of the same. The development of a patent is a long and costly process. Like for example, if we talk about the patent portfolio, we can say that after the development of the Patent, various administrative transactions are required in maintaining the patent. These additional works include submitting the proper documents from time to time and payment of fees etc. Missing any of these deadlines will be costly for the applicant. Undoubtedly, these administrative responsibilities are seen as a burden on the patentee, since the patentee focuses on various research works and not on the administrative chores. In this case, we take up patent portfolio management for the sake of not missing any deadline.
In almost every jurisdiction, the patent application process is long. If we take the example of the United States Patent and Trademark Office (USPTO) takes an average time of two years to grant of patent. With rigorous evaluation by the patent examiner, there are multiple deadlines to be maintained and every information is being included in the patent file wrapper. This wrapper is like a patent file history which will include all the communication and documentation of the patent application. In the USPTO, the average time taken from filing to the grant process is on average of two to three years. The patent wrapper will include all the information which includes responses and office action that is generated by the USPTO. This way, the deadlines, and all the documents are maintained.
The patent file wrapper is very important for a patent applicant. This wrapper is useful for understanding the timeline and getting along with it. In case, the applicant faces any legal issues in the future then the file wrapper will be helpful for the applicant to be used in the court and will help in legal outcomes in case of infringement and litigation issues. Not only to get along the lines of infringement and litigation issues but there are various other use of file wrapper as well. The file wrapper can be a value for various purposes and it can be valuable to various stakeholders such as competing inventors and companies, other licensees and business partners, and third parties.
For getting along with the prosecution part it is important to understand that it is not always about the result but also with the whole patent application process and the journey from start to end. This way the patent file wrapper must include every process and must include all the steps for providing intricacies involved in the process.
[Image Source: https://www.uspto.gov/web/offices/pac/mpep/s719.html]
What to include?
As stated above, the wrapper must include information with regards to patent application with USPTO which will help the applicant to define the scope of the claimed invention and patent owner’s right. Not only with the deadline but also the reasons involved during the examination process must also be included in the wrapper. 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 the applicant
- Any other relevant correspondences
The applicant needs to understand that there is no such standard file wrapper format and depends from applicant to applicant and the objections raised thereof. One should be very clear and prompt concerning patent file wrapper and any mistake can cost a lot to the applicant in the grant of a patent or any patent litigation issues arising thereof.