This week in class, we discussed the concept of a file history, which is an extremely important part of the patent application and approval process. Basically, the file history is all communications between the inventor and the patent examiner regarding the patent in question. This keeps transparency high and allows both sides to prove everything that they have claimed, if it ever had to be retrieved. This aspect is extremely helpful in court cases. The concept of a file history is one I had not heard of, but is clearly a useful tool provided by the USPTO to all parties involved.
The file history becomes extremely important if someone charges infringement on a certain patent. If a review of simply the patent does not prove infringement, often the examiner will next go through the file history to review the scope of the claims in the patent. Statements made by the inventor can go a long way in interpreting this. Especially when patents can be granted to overarching concepts that can be applied to various fields, it is important to truly narrow down the intended scope when the inventor initially filed for his/her patent. The file history can be the difference of millions of dollars for either side, or the difference between the ownership or rejection of a patent.
The file history becomes extremely important if someone charges infringement on a certain patent. If a review of simply the patent does not prove infringement, often the examiner will next go through the file history to review the scope of the claims in the patent. Statements made by the inventor can go a long way in interpreting this. Especially when patents can be granted to overarching concepts that can be applied to various fields, it is important to truly narrow down the intended scope when the inventor initially filed for his/her patent. The file history can be the difference of millions of dollars for either side, or the difference between the ownership or rejection of a patent.
I never envisioned that file history would be that important to an infringement case. This is very interesting. This also means that an important must be very careful throughout the process about any statements made and any exchange of information with the patent examiner. Thanks for bringing up the importance of the file history. It was something I had never considered before.
ReplyDeleteGood article to explain what file history is for. Previously I know that professor has talked about it but I wasn't very sure on exactly what it is. Now understanding that it is the communications that go back and forth between the inventor and the patent examiner, it makes more sense.
ReplyDeleteSince it would be a longer and clearer explanation on the precise scope of the patent, the inventor can't claim that the patent is used for another scope in case infringement happens.
I wonder how many people out there who file for patents are aware of the file history. I'm sure lawyers hired for cases know about it and are capable of tracking down file history for a case their on, but do the inventors know? This post can almost act as a cautionary tale to people filing for patents. Going on the examples used in class about a processor for cucumbers vs. one for tomatoes, it makes me think that many people will say whatever they want to get their patent approved. Do you think these people also will turn right around and sue someone for infringement? Do they remember the conversations they had with the patent examiner? This is definitely a case where watching what you say is important because it can and most certainly will come back to bite you.
ReplyDeleteThanks for expanding on File Histories. The entire concept still seems really subjective to me however because there's no way of pinpointing exactly what the scope of the patent was without talking to the inventor. I think this could be detrimental for an inventor who wasn't careful but at the same time it could help protect firms who are wrongly being accused of infringing patents. I guess since patents are such a competitive mode of protection there is a need for such subjective discourse
ReplyDeleteI can see how file history allows transparency and a fuller understanding of the scope of the patent (especially when there is litigation controversy). I think it is important that this is noted for new patent filers. Patent history could be used against them if they are not aware of the difference it can make. At the same time, I think this concept always helps the process be more efficient as people are more cautious about each time they communicate or make adjustments to their application
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