Finding Forward Citations and Getting Claims Your Competitors Want Using Continuations
As previously noted, Proactive Patent Prosecution requires having a continuation on file at all times. With a pending continuation, a patent owner is able to monitor and act on forward citations that surface over time.
What are forward citations? Forward citations are instances where later filed patent applications cite back to your patent specification. This is similar to a journal article citing to prior noteworthy or famous journal articles.
Whether you are the author of a journal article, or the inventor of a patent, your work becomes more "valuable" each time a subsequent work cites back to yours. Many patent industry commentators have stated that the number of forward citations is an important indicator of the “value” or importance of a patent. In fact, this is not all too different than what Google determined to be the key to finding important webpages using its "PageRank" technology. Google determined that the importance of a webpage was a function of the number of other pages that link back to (or cite) the webpage as well as the "importance" of each of the other pages that links back to the page.
Different types of forward citations. Unlike journal articles and webpages, patents can be cited by different types of people and in different contexts. Therefore, in the case of patent citations, there are several different types of forward citations. Each has a different level of importance.
During the prosecution of a patent, a citation may be made of record by different parties—a patent may be “Cited by Applicant” (CBA), “Cited by Examiner” (CBE), or in rare cases ”Cited by a Third Party” (CBT). What do each of these mean exactly?
“Cited by Applicant” (CBA). A forward cite that is CBA is simply one that an applicant provided to the patent office during prosecution. It shows that the forward patent owner knows of the cited patent and that it may be relevant to the claims. However, beyond showing knowledge, it does not provide further opportunities to the patent owner unless it is also cited during an office action.
“Cited by Third Party” (CBT). A forward cite that is CBT is one that is provided by a third party on a third party submission form during prosecution. Some patent owners may proactively submit these forms in competitor’s patent filings. Like a CBA forward citation, it creates a record that the forward patent owner has actual knowledge of the cited patent, and further provides some mapping of the cited patent to the claims pending in the forward application.
“Cited by Examiner” (CBE). A forward cite that is CBE is one that is cited by the examiner along with an office action. The examiner may simply be providing the forward cite for informational purposes, or the examiner may be providing the forward cite because the patent or publication is used in a rejection of the pending claims in the forward citing application.
Why Forward Citations Important? To the extent a forward cite is "Cited by Examiner" CBE and used in a rejection it may be used in one of several ways:
35 USC 102 - anticipation.
35 USC 103 - single reference obviousness.
35 USC 103 - primary reference obviousness.
35 USC 103 - secondary reference obviousness.
If cited as a 102 reference (or a single reference 103) it means that the examiner has specifically determined that your patent is a "blocking patent" (or implicitly a "blocking patent" but for an obvious variation) to the claims sought by the later applicant. This is powerful and actionable information.
A patent owner that has its disclosure used to block later-filed claims by a competitor should consider substantially copying the competitor's later-filed rejected claims. To the extent that the patent owner is able to obtain their claims and need to assert these claims against the rejected company at a later time, this will put the rejected company in an awkward position when you assert the patent against them:
The rejected company knows of your patent because it was cited to them in a rejection by the patent examiner in one of their own patent applications.
The rejected company's patent examiner has made an argument that your specification is the closest/best art for this invention and also supports and anticipates claimed features of the invention later sought by the other company.
The rejected company's patent lawyers have reviewed your patent and have knowledge of it.
To the extent the rejected company's patent examiner is incorrect in stating that your patent does not disclose a feature with respect to some of the rejected claims, you have an opportunity to “correct the record” with your patent examiner (while also showing your patent examiner that your patent is being used as art against your competitors).
To the extent that your patent is allowed with the substantially copied claims, and to the extent the claims map on to a product of the rejected company, there is a compelling argument that they infringe because they presumably wrote the claims to cover their product.
The rejected company should be reluctant to argue invalidity due to new art, because anything they cite against you will be relevant to and need to be cited in their later patents as well and will potentially also invalidate their patents.
Not every patent portfolio will have these types of forward cations. However, where they are available, a patent owner can obtain the claims sought by their rejected competitor. If you would like to know if your patents have forward citations that are actionable, contact JDB IP.