Uncited Prior Art Enabled by New Citation Data

Previously, patent citations provided only basic information, such as reference numbers and an indication of whether patents were cited by examiners (in US cases only). Determining which citations represented prior art and which ones were only general references proved time-consuming and limited the value of the data.

 

Analysis of citations records was mostly focused on the forward citations which limited or impacted the full picture/understanding.  It's critical to analyze forward and backward (reverse) citation records and with AcclaimIP, now you can.

 

Recent Citation Enhancements

 

In recent years, citation data has undergone significant enhancements. The introduction of advanced citation data and the common citation document has opened new possibilities for citation analysis and evaluation that was formerly not possible.

 

Today it is possible to access valuable meta-data that enables us to unlock insights that were once unattainable—or at a minimum impractical. These data encompass elements obtained from various Patent and Trademark Offices (PTOs), including:

 

The Complexities of Managing International Patent Filings

 

• Category Codes: Indicate the relevance of the citation for obviousness, novelty, or general reference
• Phase Codes: Identify when and by whom the citation was made
• Claims Numbers: Signify which claims are impacted by the citation
• Paragraph Tags: Guide users efficiently to relevant sections of lengthy patent documents
• US Rejection Codes: Review office actions in the US file wrapper, similar to category codes

 

Anaqua’s objective is to help drive efficiency and provide insights for patent teams by integrating these new meta-data into the citation records of each patent.

 

The AcclaimIP team has discovered through extensive analysis of these meta-data an advancement in citation analytics and Uncited Prior Art.

 

Example of Uncited Prior Art

 

Uncited Prior Art is revealed by comparing multiple examinations of claims across different countries or jurisdictions. For example:

• Examiner 1 references consequential prior art using X, Y, 103, or 102 category codes
• Examiner 2 handles a related patent application within the same family and fails to consider that reference
• The revealed uncited prior art reference can narrow or even invalidate the first family member.

 

 

Fig. 1 Example of a consequential reference from one examiner not referenced by another examiner of a family counterpart

 

Why It’s Important to You

 

New AcclaimIP Advanced Citations and Uncited Prior Art capabilities enable you to:

• Stay ahead of competitors by bringing new products to market either through invalidating or narrowing competing patents
• Evaluate your own patent portfolio (annuities, licensing, acquisitions, etc.)
• Litigate and assert claims whether on the offense or defense
• Ensure your IDSs are complete and help strengthen your overall patent portfolio

 

Fig. 2 Uncited prior art scoring system for unreferenced citations

 

It's important to note that not all uncited prior art will necessarily narrow or invalidate a patent's claims. However, it often plays a significant role.

 

Uncited prior art references should be the first step in evaluating claim validity whether you are conducting freedom-to-operate (FTO) research, assessing patent portfolios, negotiating licensing agreements, or preparing an assertion defense.

 

How to Get Started

 

Advanced Citation and Uncited Prior Art capabilities are available today for Anaqua clients of AcclaimIP. They will gradually be integrated into the powerful HyperView dashboards in AQX®, AQX® Law Firm, and PATTSY WAVE®. Get ready to revolutionize your approach to patent analysis with this breakthrough in citation analytics.

 

Join the upcoming webinar: Turbo-Charge Patent Drafting and Prosecution Activities with Advanced Citation Data Insights

 

You can also watch these webinars on demand:

• Patent Citations Unpacked: How to Optimize Your IP Portfolio
• The Power of Uncited Prior Art: Harnessing Patent Intelligence for Competitive Advantage