IP Review Summer 2018

9 Looking at Figure 1a: you might own Patent 1 and a competitor might own Patent 2. Both are in the same market, but cover completely different territory. However, this is not always the case: Figure 1b shows the situation where an Improvement Patent is within the territory of an earlier Master Patent. This can happen if the Improvement Patent covers an inventive improvement on a generic invention covered by the Master Patent. So for example the Master Patent covers a mouse trap, and the Improvement Patent covers a better mouse trap. In this case, the owner of the Improvement Patent cannot sell the better mouse trap because it would infringe the Master Patent - i.e. it falls within the territory of the Master Patent. The opposite is also true: the owner of the Master Patent cannot sell the better mouse trap either since it falls within the territory of the Improvement Patent. Forward citations? When you read the word “citation” you may be thinking of a backward citation. This is when you are writing something and reference a previous work. Figure 2 illustrates this point. When a patent office examines your patent application, they will find previously published documents usually in the same technical field. These documents are called ‘prior art’. In order to get the patent application granted, you must persuade the patent office that your invention is new and clever, compared with the cited ‘prior art’. During this process the patent office focuses their searching on the claims of your patent application. The claims define the invention - i.e. they map out the territory shown in figures 1a and 1b. The “description” of your patent, on the other hand, gives a detailed example of your invention with all the bells and whistles. Figure 2 shows how prior art is being cited against the claims in your patent. This information is stored and publically accessible. Forward citations are the opposite of backward citations. So looking again at Figure 2: an Improvement Patent cites the description of your patent. This is a forward citation. It’s all a matter of perspective. From your perspective, the prior art is a backwards citation and the Improvement Patent is a forward citation. Feel the power of forward citations Competitors Citations can be used to understand the competitive landscape of the market sector the invention, and by extension your business, is in. Backwards citations tell a story of the past and how the innovation in that market sector has grown. Known competitors inhabit this space, so backward citations might not be very helpful if you are already aware of them. Sometimes prior art patent holders might have even gone out of business! Forward citations however, might tell you about a new (previously unknown) competitor; or new activity of a known competitor. Information about competitor activities might benefit your business strategy. The Improvement Patent from Figure 1b might be a new patent application which has cited your existing patent (which now has the exulted title of ‘Master Patent’). Knowledge of the Improvement Patent might lead you to licence, cross-licence, or even sell your Master Patent to the new competitor. Alternatively, you may put them on notice. Patent valuation Consider this scenario: a competitor has approached your business and wants a licence to your patent. Howmuch do you licence it for? As you can imagine there are lots of indicators you could use for this task; however, knowing if this competitor has cited your patent gives you an indication of whether they need your patent. The sheer number of forward citations can also be a strong indicator of value. If there are a lot of forward citations, there may well be a lot of demand for your invention from competitors. Consider another scenario: you own a large portfolio of patents and want to rank them in order of commercial value and abandon the bottom 10% to save money. Forward citations - normalised for age - can be a helpful metric to help with this daunting task. Search tools A number of free search tools are available to look for forward citations. However, they can generally only return citations linked to a single patent. Withers & Rogers can provide you with a search which returns all forward citations (fromwithin a limited period) which cite a patent in the name of your business. We can set up regular alerts which notify you immediately when one of your patents has been cited by a competitor. In the alert, you can receive extra information analysing the strength of the opportunity, or the legal status of the Improvement Patent. Forward citations can, if fully utilised, be incredibly useful for any business. Forward citations can clarify the competition and potential patent value. Finally, there are tools available that can easily help you or your business take advantage of your patent portfolio. Contact your Withers & Rogers Attorney for more information on how we can use forward citations to advance your business interests. Theo Worsley tworsley@withersrogers.com To find out more contact Jim Ribeiro jribeiro@withersrogers.com Figure 2 Time Prior Art Improvement Patent Your Patent Claims Description Forwards Citation Backwards Citation