How to retrieve prosecution history of a corresponding foreign patent application?

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.

Gather Information

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.

Espacenet

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.

Siddhant Sharma

Siddhant is currently enrolled in a six year law programme at one of India's premier private law schools, due to graduate in April, 2018. His journey as a techno-legal student started in year 2012 as a matter of fate than choice, but since then legal studies have embarked and impressed upon him the desire to pursue advocacy, in particular corporate and commercial litigation. Apart from academics, he has always been interested in, and still continue to be inclined towards, niche practice areas and entrepreneurial endeavours. He finds joy in writing about Patents.

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