Patent citations can be important as you prepare patent applications to protect your intellectual property or if you are conducting research and want to glean information from patents.
What is a Patent Citation?
A patent citation is any document cited by a patent applicant, patent examiner, or third party that relates to the content of a patent application. Truly any publicly available document can form the basis of a patent citation. Here are some typical types of patent citations:
- Existing patent applications
- Existing patents;
- Journal articles;
- Publications on the internet;
- Trade show disclosures;
- Conference abstracts.
Types of Patent Citations
There are two main types of patent citations:
- Backward citations; and
- Frontward citations.
Backward citations are documents that have been published and are publicly available prior to the filing date of the patent application that the citation is cited on. These can also be referred to as “prior art.” These backward citations are ideally all of the information that is available to the public before the date a patent is filed.
Backward citations can be helpful to learn about the background literature and patents that are related to an underlying patent. If you are looking to learn information about a topic or group of related patents, backward citations are a great supplemental resource once you have conducted some initial keyword and classification-based searches.
Patent examiners that review patents for approval or rejections also add their own backward citations to patent applications. Patent citations made by the patent examiner are classified according to the relevance to the patent application they are cited on.
This means the patent examiner’s backward citations can be very helpful in understanding what the Patent Office considers the most relevant prior art for any given patent.
It can be very helpful to review the backward citations for not just a specific patent that you are interested in, but also any related patent family member. This is because each patent application in a patent family may be reviewed by a different patent examiner. Depending on the patent examiner assigned to the patent application, he or she may have a different idea of which prior art is related to the underlying patent.
Forward citations, on the other hand, are documents that have been recently published that have cited the underlying patent application. Thus, once a patent application has been filed, it may then be cited by journals, new patent applications, and the like. These would be classified as forward citations.
Forward citations are often used by competitors or those in related industries to the underlying patent. They can provide insight and data into the current state of the field within the specific industry.
This includes understanding the direction that a particular market might be heading, keeping abreast of the current trends, and understanding what a competitor is focused on. Thus, forward citations are especially good for business intelligence purposes.
Forward citations can aid in understanding potential licensing opportunities in your field, areas where patent infringement might be taking place, or areas where a market could be expanding or closing.
Keep in mind that older patent applications and patents will have many more forward patent citations than newer patents and patent applications. This means it is important to explore a range of related patents when conducting searches and research.
Why Patents Are Cited
The underlying reasoning for why patents are cited as either backward citations or forward citations is because of their relationship to and similarity with the applicable patent application.
Patent applicants cite prior art, or backward citations, in their applications. This lets the patent examiner know they have considered the applicable patents and believe their patent is distinguishable.
Patent examiners conduct thorough patent searches on their own with every patent application. Therefore, there is no way to escape a similar patent that may stand in your way. By citing the similar patent as a backward citation, this signals to your patent examiner that you have seen the related patent and can demonstrate that your patent application is distinguishable. When a patent is cited, it also indicates that the examiner knew about this particular patent and still considered your invention patentable. Then your patent will be presumed to be valid over the cited patent. So if your patent is later involved in litigation, it would hard for the other side to claim that if the examiner only about this patent, they would not have granted the patent.
On the other side of the coin, patent examiners will often cite backward citations in a patent application as justification and support for their decision to reject a patent for approval. Patent examiners take their job seriously and will conduct very thorough prior art searches in reviewing a patent application. Moreover, different patent examiners will focus on different related patents. This underscores the importance of conducting a detailed and robust patent search as you draft a patent application.
Patent citations can be important. Patents that are often cited by other patents tend to have more economic value than patents that are not cited by others. Patents that are often cited by other patents gain more visibility in their respective fields, which can be helpful in presenting additional business opportunities and industry recognition.
Why Patent Citations Are Helpful
Patent citations can be very helpful from a business perspective. Specifically, patents can:
- Determine what competing companies are developing;
- Determine the direction of a specific technology or field;
- Offer comparisons to advances made by competing companies;
- Showcase popular technology of the time; and
- Alert you to similar patents and ideas you made have.
Patents are a form of intellectual property rights. They give the patent holder the right to exclude others from making, using, selling, or importing whatever is within the scope of the patent. The United States Patent and Trademark Office is the government agency that administers patents and makes patent determinations.
The patent application process is extensive and complicated. Patent applications can be rejected if a patent examiner determines a patent is too similar to a prior invention. This is why patent searches are so important to conduct up front, even before you take steps to submit your patent application to the Patent Office.
Patent citations can be helpful tools as you conduct your patent searches during the applications process.
Patents as Business Tools
Even if you are not submitting a patent application yourself for a specific invention, patents and patent applications can contain very helpful data from a business perspective. Patents can contain important insight into the business direction of a company, including the inventions they consider valuable, the specific technology or product they will be pursuing, and other important business details.
Problems with Using Patent Citations
Patent searches using patent citations can lead to incredibly helpful data. However, it is important to keep in mind that a patent application or resulting patent may not list every applicable or related patent.
The patent citation list for any given patent may leave off some very important related patents by virtue of the type of technology or product the underlying patent is as well as the specific patent examiner assigned to the patent.
Some patent examiners can fixate on a specific string of prior art while ignoring a different area or field that is still highly relevant. This is why even though patent citations are helpful resources, they are not the only resources when looking to exhaust a specific area, technology, or field of interest.
Patent Citation Searches
Patent citation searching can be a complicated process. However, to gain valuable business insight, it can be very helpful in the long run to learn tips and tricks to best pinpoint the types of patents you want to find.
You can conduct your patent search within the United States Patent and Trademark Office’s various patent databases. Conducting this patent search before you submit your application will save you substantial time and money in case your idea has already been developed.
The United States Patent and Trademark Office has a great video that walks through a step-by-step strategy for conducting a patent search. Here are some of our own tips.
Patent Citation Searches
If you want to conduct your own patent citation search, you will want to make sure to cover a range of databases. This will allow you to make sure you have covered all ground and have found all the potentially relevant hits. Patent searches can take some time but can provide powerful business intelligence and resources as you prepare your own patent application.
Searching the USPTO Database
The United States Patent and Trademark Office, also called the USPTO, has specific patent databases. Here are a few pointers for searching them for patent citations:
- Learn boolean search operators, i.e., you can combine search terms using AND, NOT, and OR;
- Understand abbreviations used by the USPTO and incorporate them into your search;
- Keep detailed notes about the search terms you used and the dates you conducted your search;
- Search within a patent citation’s family and view the citations made within the related patents.
How to Draft Patent Citations
Patent citations can be tricky. If you are looking to draft a patent application and need to cite other patents, here are some tips and tricks to write the best patent citations that will be accepted by the United State Patent and Trademark Office.
Patent citations are short and follow a specific format. There is no specifically applicable style guide to follow in drafting your patent citations. This means you can pick which citation format is most familiar to you. From there, you just need to make sure each and everyone of your citations follows the same format.
Here are some examples:
- APA, i.e., American Psychological Association Style
- Format: Name of 1st Inventor, Name of 2nd Inventor; Add more as needed. (Year Patent Issued). Patent number. Source for Patent.
- Example: Smith, Robert, Schull, Nancy. (2010) U.S. Patent No. 8,442,278. Washington, DC: U.S. Patent and Trademark Office.
- Chicago Manual of Style
- Format: name of 1st Inventor, Name of 2nd Inventor; Add more as needed; Patent title. Patent number, date of patent filing, and issue.
- Example: Robert D. Smith, Patent for Important Technology. U.S. Patent D656,012, filed August 18, 2012, and issued January 07, 2014.
- National Library of Medicine (NLM) Style
- Format: name of 1st Inventor, Name of 2nd Inventor; Add more as needed, Patent title. Country Patent document type (simply type patent for U.S. other countries may list different types) ISO country code Patent number. Issue date. Pagination by p (optional). Physical description (optional). Int. Cl. International Classification Code (optional) ISO Country Classification Code Cl. (optional) Appl. No. Application number (optional); Application filing date (optional). Language (if not English). International Company, LLC, assignee (Central, CH), Weight loss device, and method. United States patent U.S. 2,381,521. 1977 Nov 10. Int. Cl. A42F 5/00 (20030204); A61B 19/00 (20030204); A32C 016278 (). Appl. No. 05/224,047; 1979 Nov 10.