The Indian Patent Office (IPO) requires the details of all foreign filings of a patent application under Section 8(1) of the Patents Act. Furthermore, in case the patent has been granted or refused or abandoned in any jurisdiction, the applicant has to share such details with the IPO by providing relevant prosecution history of the corresponding foreign application under Section 8(2) of the Patents Act.
- Prosecution history of a corresponding foreign application might also come in handy in case the Controller has cited similar prior arts in the First Examination Report (FER), and the foreign application has proceeded to grant.
- It may also be useful in case you are relying on granted claims of a foreign application to amend the pending claims of your Indian patent application.
But, from where to retreive prosecution history?
There are certain patent databases such as Espacenet (useful for all EPO applications) and USPTO Public Pair (useful for all US applications) which may be relied on for retrieving the required details. This post will elaborate the procedure to retrieve prosecution history from Espacenet.
For USPTO Public Pair, see here.
The first step is to gather the details of the corresponding foreign applications. For this, you have to look into Form 3 of the applicant.
In case the applicant has not given entire details of the corresponding foreign application in its filed Form 3, all details of the other applications may be checked from USPTO Global Dossier by typing in the Application Number or Pre-grant publication number or Granted Patent Number of any one of the given application provided in Form 3.
After you enter the application number, the results will be shown as follows:
Once you have the publication number or application number or patent number (or any other relevant detail) of the desired foreign application, you may choose to retrieve it via Espacenet or USPTO Public Pair. You may also choose to retrieve it via USPTO Global Dossier itself, by clicking on the “view dossier” link.
Step 1: Visit https://worldwide.espacenet.com/
Step 2: Go to Advanced Search
Step 3: Type in the application number (or whatever information you may have)
Step 4: Click on your application to view the entire prosecution details
Step 5: Click on “EP register” link
Step 6: A new tab will open. Click on “All documents”.
Step 7: Mark all documents and click on “Selected documents” to download them.
All selected documents will be available in a PDF file.
Image from here.