The Patent Box: Searchable Image File Wrapper Documents

Paul Dougherty is a former Patent Examiner at the United States Patent and Trademark Office, and he works with me regularly, helping me with patent applications and Office Actions.  Paul is also an entrepreneur, having recently launched The Patent Box, which is a website that delivers patent-related software tools.  Currently, The Patent Box provides IFW Insight, which is a web-based research tool for patent professionals. Additional tools are currently under development for use by both patent professionals and inventors.

IFW Insight is a web-based application for searching, sharing and collaborating on US Patent Image File Wrapper (IFW) documents, which are also commonly referred to as “File History” documents.  The IFW Insight database currently includes over 1,000 IFW documents.  IFWs are created by the USPTO as image-based documents, and are thus not searchable.  Notwithstanding, by applying optical character recognition (OCR) algorithms The Patent Box is able to expose text data embedded within these image-based documents, thereby making them fully searchable. Dougherty says that “there are pending patent applications that relate to The Patent Box, but none have published yet. They cover several aspects of the system including features that we have not yet deployed so I can’t say too much more on that.”

The IFW Insight search interface includes powerful search features including support for both proximity and Boolean search operations.  On February 23, 2010, The Patent Box announced that IFW Insight was revamped to provide a 3-page search preview and enhanced search functions.  On April 24, 2010, The Patent Box announced additional search enhancements, including that search results can now be refined by correspondence type.  Just last week Paul gave me the go ahead to write this article, telling me that the soft launch has proceeded successfully and it is all systems go.  So I encourage patent attorneys and agents to check it out.  I think you are really going to like IFW Insight.

Here are some features you can expect from IFW Insight:

• Uploading IFW documents: FW insight also allows users to upload and share locally stored IFW documents for published applications or issued patents.  Uploading IFW documents has numerous benefits.  Uploaded IFW documents are automatically processed to allow advanced search queries to be performed across all uploaded documents. Sharing IFW documents has the added benefit of improving the search experience for other users of the system.
• Unique URLs: A unique public web page is created for each IFW document added to the IFW Insight database.  This unique web page includes a link to the associated IFW PDF document and is accessible to both subscribed and non-subscribed users of the system.  After uploading an IFW document, a user can easily share the document with anyone who has access to a web browser.
• Commenting: IFW Insight also allows users of the system to add comments to these public web pages.  A comment could be added, for example, to let other users know that a particular IFW provides a good illustration of overcoming a specific type of rejection. These comments are also searchable via the IFW Insight search interface.

IFW Insight is intended for patent professionals and was originally designed for solo/small firm practitioners who often lack access to the large file repositories typically available in a large firm environment. However, the functionality has grown since inception and now offers benefits for all patent practitioners.

IFW Insight can help practitioners prosecute applications more efficiently.  Our search interface allows users to quickly locate IFWs that exhibit a similar fact pattern to a case they are prosecuting.  This is particularly helpful when the practitioner must do something new or non-routine (e.g. prepare a 131 affidavit or respond to a 101 Bilski rejection).   Sometimes practitioners simply have writer’s block – they know how to solve the problem but can’t find the appropriate language.  This is where IFW Insight shines.  Seeing how another practitioner has successfully solved the same problem provides an efficiency boost that can lead to significant cost savings.

According to Dougherty, he “wanted to build an online environment that would help improve the learning curve for new patent practitioners and help practitioners of any experience level prosecute patent applications more efficiently.”  Dougherty explains that the learning curve can be bent through the use of tools, such at IFW Insight, which “allows practitioners and examiners to more easily draw on the experiences of others.”  The frustration of not being able to easily navigate file histories lead Dougherty to focus his initial efforts to build a search and storage tool for image-based documents, like file histories.
He explains:

IFW Insight allows a practitioner to quickly find patent file wrappers that exhibit a particular prosecution event. The benefits for a new practitioner who has little experience preparing a fairly routine Office Action response (e.g. arguing a 102 rejection) are pretty clear. However prosecution often requires the practitioner to perform non-routine tasks ( e.g. can you recall the last time you prepared a 132 affidavit showing evidence of commercial success?). IFW Insight allows examples of both common and uncommon events to be quickly identified, thus providing value even for experienced practitioners. As our database and interface grows and matures I think additional usage cases will continue to emerge.

So what is next for The Patent Box next?  Well, building out those features mentioned in the pending patent applications and continuing to build out IFW Insight “will remain our core focus for some time,” according to Dougherty.   “We’ll continue to improve the existing functionality and add important features currently in development. You’ll see new features relating to collaboration, report generation and more.  I have received a lot of valuable feedback from users, some of which has already lead to specific improvements to the interface and I expect to continue that approach.”  Once Dougherty implements all of the bells and whistles he envisions for IFW Insight he plans on adding “some free tools including an attorney/agent directory” that will be more robust than the directory provided by the USPTO.

For the price — $24.99 for an individual, $29.99 for a small firm or $39.99 for a large firm, I think everyone should give this a try.  If it makes you even 10 minutes faster once a month it has more than paid for itself, making it more palatable to offer project billing fees for responding to Office Actions and preparing documents for filing at the USPTO.

EDITORIAL NOTE: In order to satisfy the FTC advertising guidelines, allow me to point out that I have not been paid for this article or my endorsement of The Patent Box or IFW Insight. Paul is a friend and very capable patent agent. He has come up with an innovative product that I think you should check out.