About the service
A patent file wrapper or File History is an official record related to prosecution history, giving a view of office actions, prior arts and reason of allowance. The history include all the documentation of patent application and provide a timeline of a patent application. The file wrapper estoppel is a doctrine that limits the extent to which a patent can be broadened by the doctrine of equivalents which means that the patentee cannot use equivalents to expand the claim scope in an infringement action in a way that is inconsistent with his position on claim scope before the Patent Office as reflected in the patent file wrapper. The file wrapper includes communication/arguments between inventor/ patent application representative with the patent office examiner. Apart from the communication, the provisional document, claims, abstract, specification, references cited by examiner, references cited by applicant and considered by examiner, examiner search strategies, Rejections and amendments after considering the rejection, request for continued examination (RCE), IDS, Oath and declaration, Notice of allowance are also disclosed in the file wrapper.
If any infringement or litigation issues are faced in the future, the file wrapper can be used in court to help determine a legal outcome. File wrapper can be accessed from . The information in the file wrapper offers insight into the technical limitations that define the scope the invention disclosed in the patent application. The patent application issuance or rejection depends on the examiner’s interpretation of the prior art in light of the claims being pursued by the patent applicant. This process can continue through multiple office actions and requests for continued examination until the patent application is either allowed (issued) by the patent office or abandoned by the patent applicant. By analyzing the prosecution history, one can easily identify the novel elements of the patent’s claims. In addition to the arguments between the applicant and the patent examiner, the file wrapper contains a ledger of all of the administrative details that occur between the patent applicant and the patent office, inventor declarations, examiner search strategy, prior art references etc.
At Effectual Services, we have developed an in depth experience in performing a file wrapper analysis to mine out specific information, or to provide the complete overview of the file wrapper. We have done 1000+ Invalidity Searches with file wrapper analysis.
Why Choose us?
Effectual Services offering IP support solutions to Fortune 500 companies, law firms, research institutes and universities, and venture capital firms/PE firms. Our teams consists of multi-disciplinary experts with rich experience in handling complex patent related services lie invalidity Searches and also provide other post grant services. Further, we have a Flexible and customer-oriented engagement process.
- Experienced team of 250+ members with expertise in core domains
- Comprehensive analysis of prior art from 20+ databases
- Customized pricing plans for each budget and set of requirements
- Success fee-based pricing plans available
- Analysis and reporting in 10+ languages
- Interim results and constant communication enabling control over the search direction.
Identified a Relevant Prior Art through File Wrapper Analysis of cited documents
Few days back, we received a quick invalidation search request where the client gave us a short deadline. The client had already done some searching from his end but did not find any prior art that disclose the novelty part. But he was sure, that there will a prior art as the list of references cited during prosecution was a huge, so chances of missing out was more. When client shared his requirement with all this information to us, we quickly start understanding of the subject patent. After Subject patent understanding, we started reading file wrapper and during our analysis we came across a strong rejection having quiet similar claim elements as that of subject patent but missing exact novelty of the subject patent explicitly.
As a team, we strategies that our first step will be analyzing the references cited in file wrapper and utilize our time wisely. To our victory, we came across a good reference from that cited list that discloses the novelty point and the reference was not discussed during prosecution history. We identified other references also that were promising and pulled off the project really well. The client really liked our work and the approach. So, this time, a smart approach works.
"It has been a privilege Working with Effectual Services for an extended period and continue to be astounded by the standard of their services. Their ground breaking hybrid approach with AI tools in their searches has proven to be transformative and helping us from challenging circumstances on multiple occasions. I wholeheartedly recommend Effectual Services and their services."
"We have been working with Effectual Services for Years and have been delighted with our experience. Effectual Services is now our first call for any Invalidity Search Request. Their analysis of prior arts is thorough and precise. They put extra efforts while finding right prior art. Their communication and responsiveness is just great and it’s a pleasure to working with them. We are looking forward to many more years of collaboration."
"Much thanks to you for connecting. Your correspondence, immediacy, and exploration abilities were perfect. You found a ton of incredible workmanship that is exceptionally helpful to us. No awful input. The art is on point for our purposes and we will be using some of it as our key prior art."
The steps for performing a patent validity search and an invalidity search are similar. The only difference lies in the fact that which party is interested in getting the search done.
- A patent invalidity search is generally requested by an alleged infringer to get away with the infringement lawsuit.
- On the other hand, a patent validity search is requested by a patent holder to check the validity of the claims.