PATENT PROSECUTION HISTORY ANALYSIS
The issued patent is the end of the story, not the whole story.
We read the complete file history, including office actions, amendments, arguments, interviews, continuations, reexaminations, and prior PTAB proceedings, and tell you what it means for claim scope, infringement, validity, and value.
The patent you see is the result of a negotiation
A patent application rarely moves from its original claims straight to an issued patent. The applicant and the examiner may exchange several office actions and responses. Claims are amended, narrowed, canceled, or rewritten. The applicant explains why the invention differs from the cited prior art, and related applications may pursue different claims.
The issued claim can be much narrower than the claim that was filed. If you read only the final claim, you miss the reasons it took that form. The prosecution history supplies them.
What the file history can reveal
A careful review identifies claim amendments, examiner rejections, the prior art cited, applicant arguments, examiner interviews, canceled and newly added claims, changes in claim terms, continuation and divisional strategy, and terminal disclaimers. The goal is not a chronology. It is finding the events that affect what the patent is worth.
Those events carry legal weight. Courts read the prosecution history when they construe claims. A clear statement that distinguishes prior art can narrow a claim through prosecution disclaimer, and a narrowing amendment made to get a patent can limit the doctrine of equivalents through prosecution history estoppel.
Prosecution history and prior art
The record shows the prior art the examiner considered, which is not the same as all of the relevant prior art. An examiner may never have seen the reference that matters most. That is why we pair file history review with independent prior art research: the record tells you what happened during examination, and the search tells you what the examiner missed.
Who we help
Investors and acquirers
Find out whether the patents behind a company's story actually cover its products, and how their claims got that way.
Patent owners
Before you assert a patent, learn which claims are strongest, which limitations will be disputed, and what your own record says.
Accused infringers
Identify the amendments and arguments that narrow the asserted claims, and focus the defense where the record supports it.
Where it fits in patent diligence
The goal is not a longer patent report. It is finding the facts that could change the decision.
Instead of asking how many patents a company has, ask which patents are economically important, how their claims evolved, what challenges they faced during prosecution, and what that history means for their value and risk today.
What you receive
- A written analysis of the prosecution events that matter, not a docket summary
- Claim-by-claim notes on amendments, arguments, and statements that affect scope
- A map of the patent family, including continuations, divisionals, and terminal disclaimers
- The prior art of record, and where an independent search should look next
- Clear conclusions you can act on, and, where you need one, a formal patent opinion
Read more about prosecution history analysis
Prosecution History vs. Claim Charts
7 Prosecution History Red Flags for Investors
Prosecution History and Infringement Risk
What each one reveals about a patent, and why the best diligence uses both.
The issues in the file history that deserve a closer look before you invest.
How the file history can change an infringement assessment.