Citations In Patent Data And Why They Need Your Attention

A friend of mine who is an avid blogger shared an interesting story of how he landed himself in a tight situation just last week.  He received an email over the weekend from the owner of a copyrighted image he used on his blog without his permission and was now threatened with being sued and facing a fine for violating the copyright laws mentioned on the owners website. This came as a big surprise since he found the image on popular photo sharing platform Flickr, contacted the owner to seek permission, confirmed the photo was published under the “creative commons license” and made sure he complied with every requirement including giving credit to the owner with a link to the original photo and yet now he finds himself in a soup. It turns out, although he sourced it from Flickr respecting every rule and following the right process, the photo was originally copyrighted on another website and another photographer had claims on the image. Despite all precautions and doing nothing wrong, there was practically no way knowing how many people had claims on that image or coming across their websites and tracing the path of the ownership sources.

Luckily for him, it was a clear case of him being lead to believe the image was free to use just because someone else had published it under that license but our discussion on the fiasco brought about an interesting point. He said to me “I contacted the person I thought was the owner and did everything right, how was I supposed to know who had claims on the image before he published it and perhaps who owned it even before that guy?”

Now that’s where we can draw a parallel between his situation and the thousands of us who work with intellectual property and patents. Patents, unlike copyrighted images, have citations and there are several situations where innovators and researchers need to take the time to research patent citation history just to make sure they do not infringe on existing patents. Yet, many a time they find themselves in a sticky situation much like that friend of mine where a competitor or (worse) a Non-practicing entity (NPE) / troll sues them for infringement.

Today, having a strong portfolio of patents behind a successful product is good but not enough since there still lies the threat of NPE’s and trolls whom you cannot counter-sue. Companies with a portfolio of patents in a technology area must look at backward citation mining in addition to regular search when conducting infringement/FTO analysis for their own patents in order to identify risks to their portfolios. Going one generation back ‘(G-1)P’ from your portfolio ‘P’ is not enough and you must go at least 2-3 generations back or (G-1)(G-1)(G-1)P and then go forward from there. A comprehensive backward citation research would perhaps include {(G-1)P,  (G-1)((G-1)P),  (G-1)((G-1)((G-1)P)),  (G+1)((G-1)P),  (G+1)((G-1)((G-1)((G-1)P)))}. The same technique also applies to Invalidation Research and can help locate critical invalidating prior art for a blocking patent owned by a competitor or someone else.

In citation research, patent volumes tends to quickly become unmanageable if you are working with a larger group of patents and looking through all the data for specific relationships. Citation analysis is one such area where these relationships need to be seen clearly so that nothing is overlooked and the researcher has a very clear picture of everyone who has patents and claims on anything that they are working closely with. Patent data analysis software such as Patent iNSIGHT Pro comes with citation analysis components which can create citation trees and clearly display those links in a graphical format which is easy to interpret. Using both forward and reverse citation graphs one can see clear relationships across a group of patents and the chances of missing important citations is greatly reduced. Multi-generation citation sets can be created from a starting point which itself can be a single patent or a whole portfolio. These citation sets can be compared easily via intuitive tables and charts to help both quantitative analysis and a more minute claims analysis.

Apart from infringement or invalidation research, getting an overview of the history of and invention across a time line and following its evolution and usage can provide valuable R&D insights that can help make better product and research strategy decisions while also making clear the pattern of ownership and inventors associated with the work.

Despite the clear differences in copyrights and patents, citation analysis which provides insights that can help minimize unpleasant surprises like my friend had. With the right tools, it is possible to look deeper into the data and see the broader picture with a group of patents. It can help avoid any oversights and potentially expensive mistakes which were not intentional but just happened. While one perhaps can never to enough homework on IP data, it definitely pays to be as careful, calculated and informed as possible.