My nature is to study details, and that’s one reason I enjoy patent analysis work so much. Being a detective is exciting, and it’s fun to delve deeply into a patent under review. There are numerous considerations to be made for a patent under review, and each subsequent phase of review entails analyzing additional aspects. Because of this, there is often a lot to say about how one reaches a conclusion and a recommendation for a given patent. Clients often provide a numeric rating system for assets so that they can more easily determine the best patents, filtering out those without as much potential. But even when they don’t use a rating system, clients appreciate a high-level summary of the conclusion and recommendation, and sometimes they do not wish to delve into the details as to why an analyst made the conclusion. So I recommend for verbal feedback to first provide a very short bottom-lined summary, and only go into the associated background details upon request. Additionally, for written communication, give the overarching bottom line up front (e.g., at the top of an email or on the far left of a table), and then subsequently provide supporting details.
For a given patent (or patent application), a forward citation is another patent document’s citation back to that given earlier patent (from the perspective of the given patent). For a patent application, the associated patent applicant(s) and patent examiner(s) must disclose and cite existing references that may be material to the pending patent application, including patent document references. A citation can imply that the cited reference anticipates or renders obvious one or more claims of the pending application, or it may just denote that the cited reference discloses aspects related to a technology area associated with the pending application.
I have often heard from patent professionals that the number of forward citations that a given patent has is a strong indication of its relevance. In my experience, the number of forward citations metric often indicates something other than the relevance of associated claims within that patent document. First, one must consider that more-recently-issued patents will not have had much opportunity to be cited yet, which means that comparisons of forward citation metrics need to be limited to patents issued within a relatively narrow time frame. Second, with a duty to disclose, some patent applicants and practitioners cite many more references than might be needed or expected, and as such will include several patent references where the cited patent is not of particular relevance to the pending patent application. Next, in my experience, patent examiners will find “favorite” patent documents that have a large omnibus specification and describe well the state of the art at the time of application filing, but citations of these patent references indicate nothing about allowed/issued claims of these references. In fact, patent examiners do not normally specifically point to claims themselves, but to patent specifications and drawings, which means that there is no qualitative assessment of the claims themselves for a citation. Because the claims define the scope and value of an associated patent, and since the examiner is not referring to the claims in citations, one cannot read much of an indication of relevance into such a citation. Last, some large corporate patent filers have large collections of their own references in various technology areas to include in Information Disclosure Statements (IDS), thereby citing many of their own patent documents without specific regard to the actual relevance of these citations.
For these reasons, I always take the metric of the number of forward citations with a healthy pinch of skepticism — there is no substitute for actual claim analysis by an expert in the associated technology area. One numeric metric I find much more often indicative of relative patent quality (within a technology area and particularly within a patent family) is the number of words in independent claims — I’ll leave this discussion for another day.
When performing patent-related searches and/or analyses, I often leverage Google search tools to facilitate my work. A few examples are provided below, and I welcome others’ insight into other helpful search utilities. I should note that I sometimes also use Microsoft’s Bing search application, particularly because I earn Bing Rewards, but Google does have some specific patent-related utilities that Bing and other publicly-available and free search applications lack.
When analyzing a patent and searching for either utilization or related art for inventive embodiments that include aspects that can be seen, such as mechanical designs or computer user interfaces, Google’s Images search results often are handy. A picture truly can be worth a thousand words, if not more. For example, I recently filed a patent application for an invention that my wife and I created for a unique drinking vessel. As part of my patentability assessment, I used Google Images to search for existing beer stein designs that might already disclose what we believed likely to be novel. So I searched using Google with the phrase “beer stein” (among many others of course), then I selected the “Images” link in the results — an example screen shot is shown below (from google.com).
Additionally, when performing patent searches, normally there is a date range of interest. For example, for validity or patentability searches, a priority date is used to limit resulting references to those that precede the priority date of relevance. Google provides for date range selection in various different places, such as through selection of a “Search tools” button in a results banner. From there, a searcher may select a date or time range such as “Past hour”, “Past 24 hours”, “Past week”, etc. Normally the choice of interest is “Custom range…” (highlighted in the screen shot below from google.com). So for example, for a priority date of February 3, 2003, the “From” date field may be left blank, and “2/3/2003” may be entered for the “To” date field. This causes Google to only display results for references published before February 3, 2003.