What is a patent citation and why is it useful to research?
Recently, Minesoft had the pleasure of hosting a panel of esteemed guests in a webinar co-hosted by WIPR, entitled “Would a citation by any other name smell as sweet?” covering the topic of patent citation research. You can watch the webinar recording here!
Our panellists, Anna Maria Villa (Patent Expert, IGE/IPI), Chris Mason (Patent Attorney and Senior Associate, Appleyard Lees), Jennifer Cessna (Senior Research Scientist, The Hershey Company), Tony Trippe (Managing Director, PatInformatics) and our very own Tim Campbell (VP North America, Minesoft), provided a detailed overview of what patent citations are and why they are useful for patent examination, patent portfolio pruning, and patent landscape analysis for R&D. Here are some key learnings from the session.
On Citations as a Search Tool:
Tony: “Based on your particular experience as a patent examiner, is an examiner citation comprehensive? In the sense that, is every single piece of prior art that’s associated with that patent document actually included in a search report?”
Anna Maria: “Certainly not. There is no 100 per cent complete search report and the reason is very simple. When you are a patent examiner, you are doing a patentability search, so if you stumble immediately on a couple of good documents that might be prejudicial to the current set of claims -you cite them and you stop. Or, […] of course you search the examples, several possible fall back positions, but fundamentally you are judging the current claims set and so at a certain point you stop.
It’s also a matter of time. So you have a given time wherein you need to complete your search. This is the honest answer.”
Tony: “Oh absolutely, and I think that’s to be expected! The reason I ask the question is that some people who are new to that area sometimes don’t recognize that the examiner’s job is to basically gauge if 1, 2, 12 pieces of prior art do a sufficient job to demonstrate that this is not a novel concept, that’s all that the examiner’s being asked to do. […] and so examiner citations are always spot on and absolutely reliable but they don’t necessarily mean that’s all there is, and so when people are using these, they have to keep that in mind.”
Tim: “When you’re actually doing your patent searching, how do you incorporate citations into those searches?”
Anna Maria: “Oh that’s my favourite question because it’s practical in real life! It depends on which kind of search you are doing. If you’re doing a validity or patentability search, […] you have a reference patent so the first thing you do is you take this patent and do a citation analysis.
Who is citing this patent? What has already been cited against this patent already? We call it a “citation cloud” around this patent. This helps you immediately focus on the technology surrounding this particular patent.
Then, if you progress during the search and you find some good hits, some relevant citations, you perform a citation analysis around those as well. I remember my instructor who taught me how to search for patents at the European Patent Office, he called that “reference hunting”. I’m not sure that this is general terminology but it illustrates very well how you use that when you are doing a patentability or validity search. Of course, you can also do this in an FTO search, and an absolutely useful application of citation analysis when you search is when you are building up a technology field for a patent analytics landscaping.”
On Citations for Patent Pruning:
Chris: “Does the patent actually matter to anyone? […] It’s easy to overlook what is often one of the main benefits, the deterrent effect. The ability of your product to keep competitors out of the market. The problem, of course -as I’m sure a lot of us are familiar with, is that this effect is often silent. It’s very difficult to quantify in terms of the value with any real level of certainty. The competitor carries out a freedom to operate search in their office privately and finds that your patent is going to cause them problems with their intended product, they’re not going to write you a nice letter to let you know. They will just change the direction of their development or maybe even stop it altogether, but this is a silent course change that has been caused by your patent that you’ll probably never know about. […] This is where forward citations come in most useful during pruning. […] When wondering about the key question “does anyone care about this patent?” I find that forward citations can provide a helpful indicator of potential importance of the patent in the technology area and to competitors.”
On Citations for Benchmarking and Competitive Intelligence:
Jennifer: “If we are trying to get into a new space or a new focus area, we don’t normally just leap in without doing some initial research. So, state of the art is what we do. If it’s something we know a little bit about, obviously we can just jump right in, but if it’s an area that’s a little new to us, we may do a little bit of digging. Find a couple competitors in that area or some leading technologies and then we do some citation searching and analysis in that space to find out who are the key players?, Is there anything that we should know about them?, and what’s already fenced off in an area?
[…] When we’re looking at those citations, sometimes we just put them in with the bigger search and do a lot of refining around that search as well to give us the big picture.
Another time we do some state of the art research and use citations is if we’re checking in on a space that we’re active in. We want to know “have our competitors changed their focus at all?” and we use their forward citations to take a look at what are they citing? What is it that’s important to them? and are they fencing anything off that should worry us? Should we look at more of the space and determine if we should get more active? Or is it a space we should pull back from a little bit?”
We highly recommend watching the whole recording of this webinar here! A huge thanks to our panellists for the insightful discussion.
Our panellists all use PatBase for patent research. PatBase is a leading global patent database created by Minesoft in association with RWS. The embedded Citation Explorer tool simplifies reviewing backwards and forwards citations, offering game-changing features such as side-by-side comparison panels and interactive citation trees which open multiple generations of citations from a root patent.
To try PatBase for yourself and utilise the Citation Explorer tool alongside many more convenient patent analysis solutions, visit the PatBase page to register for a two-week free trial!