II-SDV 2015, 20 - 21 April, in Nice

II-SDV Conference

20-21 April 2015, Nice

Olivier Huc

EXPLORING CITATIONS: BENEFITS AND CHALLENGES

Introduction

• Why this topic?• Citations are often underused and underestimated by

patent professionals

• This is often due to misunderstandings and the inherent

complexity of patent citation data

• Difficulty to grasp the full picture of patents being cited

• Difficulty to explore and navigate properly citation data

• However, despite many challenges, there are many benefits to the use of patent citations

Introduction

• Citations: the basics

• Citations: the source(s)

• Citations: why and what for?

• Citations: explore, investigate, analyse

1. Patent citationsWhat is a patent citation?

• A document “cited” because its content is related to a current patent application

Who assigns citations?

• An applicant - knows, or is made aware, of related prior art and cites it

• A patent office examiner – finds additional related documents during searches while checking the patentability of a patent application

What can be cited?

• Anything that is publically available:• An existing patent publication• Scientific literature, such as a journal article• Internet publications• Conference proceedings, Academic publications…

Searching citationsCitation coverage, search options and visualisation tools vary

BUT searchable patent resources always allow:

• Searching and identifying both forward (citing) and backward (cited) citations

A forward citation

A newer document (CITING the – or one of the - patent application(s) under consideration). Therefore, a more RECENTLY published document

A backward citation

An earlier published document (CITED by the – or one of the -patent application(s) under consideration). Therefore, an OLDER document.

Searching citationsThe Common Citation Document (CCD)

The CCD is a free citation search resource recently developed by the Trilateral Offices (EPO, USPTO and JPO + CN and KR) to provide single point access to these three collections of citation data: http://ccd.fiveipoffices.org/*

2. Citation sourcesWhere does citation data come from?

• Some national patent offices provide it BUT the largest source of raw citation data is REFI - Reference File Citation Database

What is REFI?

• Citation data collected by The European Patent Office from patent offices around the world.

• Previously an independent file,it is now incorporated into the EPO’s data feeds.

REFIREFI is a growing data set

Additions to REFI by The EPO in 2014*

• > 20 million cited references added to the database:

• 4 million for Japan

• 2 million for China

• 9.7 million for US grant (B1,B2)

• 3 million for US pre-grant (A1)

Latest REFI updates can be found at:

http://www.epo.org/searching/data/data/tables/regular.html

*Data courtesy of Florent Lina, EPO XML Raw Data Day presentation , 18 March 2015

Citation dataPatBase uses REFI as the backbone to its citation collection supplementing

that with national office collections, for example those from the USPTO

and the German Patent Office (DPMA)

We take multiple data sets to combat issues with collections such as:

• consistency in number formatting

• gaps or delays in data supplied

Citation relevancy indicators and citation origins bring their own problems:

• Interpretation

• Provision / consistency / only covers patents examined by EPO

At Minesoft, with the help of our partner RWS, we have initiated a complex task to re-index all citation data to provide better citation data

• Almost all countries provide at least the citations from the search reports

• BUT citations can be extracted from:• Applicant filings (IDS, fulltext…)

• 3rd Party Observations

• Examination (other than Public Search Report)

• Opponent filings (during oppositions or Appeals)

• Even though the data may exist many countries do not provide these other citations

Citation origins

Citation origins

Data holdings list of REFI

Inconsistency with provision of citation origins across countries

3. Why use citation searches?

• To benefit from the patent examiner experience and prior searching

• To discover other closely related patents and literature

• To expand or enhance a keyword search (particularly when the technology field is new and you are not certain of the terms or the classifications used)

Why use citation searches?

• To analyse your own patent portfolio:

Determine your most “important” patents

- what patents are most cited and by whom?

- which of your technologies are most frequently cited?

- is there new actors citing your patents?

If it is relatively easy to extract and review patent citations at a given point in time,it is however a complex task to identify the new patent citations

Why use citation searches?

• For Competitor intelligence and business information

To monitor who is citing your patents:

• Identify new citings of your patent(s)

• Discover new competitors entering your field of technology

• Find potential licensing opportunities

• Help identify white space within technologies

Minesoft’s new CiteTracker can assist you to do this.

How does CiteTracker work?

CiteTracker monitors citation activity, providing alert reports to inform clients of

any new patent citation, allowing to immediately identify:

- Who is citing their company’s / client’s patents?

- Which new competitors are entering their space?

- What licensing opportunities are emerging?

- Who is citing a particular technology?

Alerts run weekly, notification is emailed and incorporates a direct

access to the online report with the necessary tools to immediately

identify the citations (remove self-citations, easy filters, exports…)

4. Analysing citation dataHow?

• Use an intuitive platform

• Access statistics / graphs

• Use visual aids such as trees and timelines

• Use filtering; for example, to select one assignee you are interested in

• Compare claims, descriptions and images (side by side)

• Track citation pathways

• Save or flag documents of interest

• Make notes to share with colleagues

PatBase new Citation Module aims being a

single tool for reviewing, exploring and

investigating citation data

Side-by-side Citation display

Navigating citations

Citation Statistics

Benefits of citation searchesCitation searches are not only an excellent complement to other patent

searches, they are very useful in their own right.

• Find relevant patents not found during an initial patent classification or keyword search

• Trust in, and exploit, the expertise of the patentexaminers (they have identified documentsas pertinent)

• Gain new, and/or different, terminology to improve your searches and your understanding of technological sectors

• Identify licensing opportunities

• Evaluate the status of a patent

Citations – potential pitfalls

• Quality of data, i.e. consistency of number formatting

• Coverage of data set searched

• Number of citations:• The number of citations (sometimes over a hundred) applied to one

document => some platforms limit the number of available citations to 99

• Some patents receive no citations

• Difference of systems throughout the patent world

• Difference of interpretation by individuals

• Tenuous links to relationships between technologies

• Recent patents have far less forward citations than older patents -when carrying out analysis time lags should be taken into account

Getting the most out of citationsCitations are a valuable resource not only for capturing documents but for analysing and valuing patent portfolios

• Exploit the benefits

• Take into account potential pitfalls

• Find efficient resources to assist you in your searches

• Make use of available tools to aid interpretation and analysis

Thank you for your attentionOlivier Huc - [email protected]

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Special thanks to my colleagues Sophie Halliwell & Ian Perriman