The Patent Box: Searchable Image File Wrapper Documents

By Gene Quinn
May 10, 2010

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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 7 Comments comments.

  1. Ron Q. Dry, pseudonymous docketing guy May 10, 2010 10:34 pm

    Gene,
    Thanks for the post – sounds like an interesting service…
    A question, though – I wonder if you (or any of your readers) might have any insight into why the patent side of the USPTO issues documents as ‘image-only’ PDFs? The folks on the trademark side of the office don’t seem to have any problems with allowing users to search the text of the office actions that they issue, so I have trouble believing that it’s a technology-related issue. The only thing I can figure is that it’s a security issue (that is, the office wants to prevent search engines from trawling through their records and making sensitive, confidential, pre-publication patent records google-able…), but I’d have thought that the CAPTCHA around PAIR, among other things, would take care of that concern. Am I missing something?
    cheers, and thanks again,
    Ron

  2. Paul Dougherty May 11, 2010 1:06 am

    Ron –

    Great questions.

    I can’t say exactly why PAIR documents (in particular Office Actions) are currently provided as image-only PDFs. There was a time when Office Actions were still printed out and then physically scanned in, despite being originally prepared by an Examiner using MS Word. I’m pretty sure that is no longer the case but I can’t say for sure. Obviously, correspondence that is received by the USPTO via US Mail ( as opposed to EFS) is still physically scanned in so the PTO would at least need to perform OCR processing to extract text from those documents.

    As I understand it, the CAPTCHA was put in place to prevent automated scripts (e.g. crawlers or bots) from accessing Public PAIR for performance reasons only. Since Public PAIR only provides access to documents associated with published applications I don’t think the issue of the documents being provided as image-only PDF’s relates to security.

    See the following announcement regarding the reasons for the CAPTCHA security: http://www.uspto.gov/patents/process/search/public_pair/announce/publicpairupdates.jsp

    The following webcast provided by the USPTO back in 2008 also addresses the CAPTCHA: https://uspto.connectsolutions.com/p20896780/

    I know that doesn’t fully answer your question but I hope it helps.
    Paul

  3. Gene Quinn May 11, 2010 2:02 pm

    Ron-

    I don’t think you are missing anything, and for the life of me I don’t understand why the Trademark side of the building works so much more efficiently than the Patent side of the building when it comes to technology and electronic communications. It ought not to be that way (my opinion) but with the IT infrastructure as it is and the backlog there are so many demands on the Patent side of the building that I don’t know whether we can realistically expect it to get better in the foreseeable future.

    -Gene

  4. Ron Q. Dry, pseudonymous docketing guy May 11, 2010 11:31 pm

    Paul,
    Thanks for the info, and kudos on your new venture. I’m just a docketing guy, but I can’t count the number of times that I’ve wished that the stuff that comes across my desk from the patent office was searchable/indexable. (As an aside, especially considering your remarks re: patent document creation/scanning, I’ve noticed that there are some sections of the patent office, that don’t appear to go through the “paper” phase in between document creation and transmission, but others which clearly do print out pieces of paper, and then scan them into the PAIR system. In particular, the L & R office, it seems, has an old ink-jet printer, and a scanner that hasn’t been cleaned since the Clinton era; the documents that find their way online from that particular office do their darndest to resist the best efforts of the OCR software we use… Okay, that’s not really fair, as the L & R folks are responsible for communicating w/ DoD, DoE & NASA on national security-related issues (among others) surrounding pending patent applications, and I’d imagine that most documents issued by L & R have been faxed back & forth several times before they get onto PAIR. But still, I’m just about at the point of adding a note to any L & R document that I forward along, to the effect of, “Best Copy Available”…)

    Gene,
    Indeed; I’ve long suspected that the issue here (as with many other issues on the patent side of building) is one of institutional inertia – a bureaucracy in a rut tends to stay in a rut. I guess we should take comfort in the fact (my opinion, anyway) that Director Kappos really does seem to get it – he’s certainly talked the talk when it comes to modernizing the patent office’s systems & procedures. Will he walk the walk? Will he even be allowed to walk the walk, by our (ahem) dedicated, hard-working elected representatives in Congress? Well, that remains to be seen… But for now, I’ll look on the bright side when considering the future of the patent system in America (taking into account both the work of Director Kappos, and entrepreneurs like Paul). Call me a cockeyed optimist.

    thanks again to you both, and cheers,
    ron

  5. Erwin October 28, 2011 11:14 am

    Gene, interesting questions and answers. I wonder why the USPTO signed an agreement with Google to make accessible outdated data. Currently, there are only two ways to access US PAIR records: the USPTO’s Public PAIR web site and the Google PAIR archive. However, the first one is the only updated. Do you know a way to access updated data in the way of bulk data? USPTO offers different bulk data and XML files, however, I did not find any containing transaction history. Thank you and cheers, Erwin

  6. Lyon May 17, 2012 4:27 pm

    Eugene and/or Paul:

    The links in this post to The Patent Box send me to a site that is selling ifwinsight.com. Has The Patent Box already seen its last days?

  7. Paul Dougherty May 21, 2012 1:46 am

    Lyon,

    We are alive and well. Our primary URL is: http://www.thepatentbox.com I didn’t realize Gene’s article was pointing to ifwinsight.com. I updated our DNS to redirect traffic from that URL over to thepatentbox.com so either should get you there now.

    Now is a great time to try out the site. We’re in the process of rolling out a variety of upgrades. Among other features, we just added an OCR text layer to relevant portions of the file history docs we host. We’re also upgrading our payment processing system, so for the next few days you can try out the site at no charge. That’s temporary of course. 🙂

    Let me know if you have any questions.

    Paul
    paul@thepatentbox.com