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Working with US Examiner Citations Trippe

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Patent documents from the United States have a number of different types of citations associated with them. The majority of the citations are communicated between the examiner and the applicant via forms 892 and SB08. Form SB08 is better known as the Information Disclosure Statement (IDS) and is used by the applicant to communicate the prior art references that they are aware of. Form 892, on the other hand, is referred to as the List of References cited by examiner. This is the list of references identified during the examination process and represents the prior art used for the various office actions that take place during prosecution. In all cases, citations on Form 892 are hand-picked by the examiner, based on their relevance to the application at hand, and can be considered to be highly likely to be on the same topic as the case.

During this presentation, various methods, by way of a case study, will be explored for identifying and analyzing examiner citations coming from US patent documents including blocking citations that have been used in an office action during the examination of a subsequent patent application.

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Working with US Examiner Citations Trippe

  1. 1. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Working with Examiner Citations from US Patent Documents Anthony Trippe Managing Director – Patinformatics, LLC PIUG NE Conference New Brunswick, NJ – 01 October2013
  2. 2. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Citations on US Patent Documents Come from Several Sources •  From the applicant – Form SB08 (aka an Information Disclosure Statement or IDS) •  From the examiner – Form 892 •  From third-party submissions – not common, yet, and the details are still being worked out on these
  3. 3. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services In the US, there is a Duty of Disclosure •  According to 37 C.F.R. 1.56, entitled Duty to disclose information material to patentability, applicants for US patents have a duty of disclosure, candor and good faith to notify the Office of these references •  The Manual of Patent Examining Procedures (MPEP) provides the following guidance in this regard: The Office encourages applicants to carefully examine: •  Prior art cited in search reports of a foreign patent office in a counterpart application •  The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office
  4. 4. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Analysts Need to Consider the Source when Applying Citations to their Analyses •  Office requires the applicants to provide the “closest information” •  But citations on an IDS can sometimes be quite lengthy •  Some commentators have questioned how relevant some of these citations are to the case at hand and whether the examiner really considers them during the case •  Considering all citations can still be a valuable exercise for exploring the development of a technology
  5. 5. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Examiner Citations, on US Patents, are Likely to be Closer to the Source Material •  Form 892, referred to as the List of References Identified by the Examiner, represent the prior art used for the various office actions that take place during prosecution •  These references can lead to rejections of various claims within an office action or they can simply be mentioned as being “made of record, but not considered” •  In all cases, citations on Form 892 are hand-picked by the examiner, based on their relevance to the application at hand, and can be considered to be highly likely to be on the same topic as the case •  All of the citation forms can be found by referring to the Display References tab when looking at a case in US Public PAIR
  6. 6. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Separating Types of Citations – a Case Study •  A search on Thomson Innovation for Allure Energy US patent documents generates ten granted patents and twenty-nine pre-grant applications for a total of 39 documents •  28 of these document have at least one forward patent citation associated with them according to the database.
  7. 7. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services But First the Grants and the Pre-grant Publications Need to be Reconciled •  In the case of the ten granted Allure Energy patents, all ten have pre-grant applications associated with them •  In only one of the cases both the granted patent, and the corresponding pre-grant application don’t have any forward citations •  Three of the granted patents have no citations themselves but their corresponding pre-grant applications do •  In the case of these nine granted patents the data associated with the pre-grant application needs to be added to the data associated with the grant so that it represents the accumulated citations for the full lifecycle of the document
  8. 8. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services The Following Table Demonstrates This
  9. 9. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Data Needs to be Exported from Innovation and Merged Before Analysis can be Conducted •  Export Citing References Details – Patents field •  Field for US8,082,065 looks like this: •  US20120029713A1,US, ,7 (Pre-search), 2010-08-02,GEN ELECTRIC | US20120116597A1,US, ,7 (Pre-search), 2010-11-09,GEN ELECTRIC | US8386087B2,US, ,0 (Examiner),2010-08-02,GEN ELECTRIC,SPICER LUCAS BRYANT,BESORE JOHN K,WORTHINGTON TIMOTHY DALE,FINCH MICHAEL FRANCIS
  10. 10. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services This single field contains a tremendous amount of information on the ‘065 document •  The ‘065 patent has three forward citations associated with it (so far) and, in this case, they are separated by a vertical bar (|) between each entry •  Within each entry we find six pieces of information associated with each of the three citations •  These are separated by a comma and represent the citing patent number, the citing patent country, the type of citation (examiner or applicant) for international reports (blank in this example) and for the US, the citing patent application date and the citing patent applicant
  11. 11. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Continue Processing the Exported Data and Send the CSV File to Open Refine •  If the application number is exported with the publication number and the Cited Reference Details – Patent it can be sorted on in MS Excel so that the pre- grant applications are in the row next to the corresponding granted patents •  Simply copy the data from the Cited Reference Details – Patent cell for the pre-grant application and paste it on to the end of the data associated with the corresponding granted patent •  Remember to include a horizontal bar after the data in the granted patent cell before pasting in the data from the pre-grant application
  12. 12. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services The Data Associated with the ‘605 Patent Now Looks Like This: •  US20120029713A1,US, ,7 (Pre-search),2010-08-02,GEN ELECTRIC | US20120116597A1,US, ,7 (Pre-search),2010-11-09,GEN ELECTRIC | US8386087B2,US, ,0 (Examiner),2010-08-02,GEN ELECTRIC,SPICER LUCAS BRYANT,BESORE JOHN K,WORTHINGTON TIMOTHY DALE,FINCH MICHAEL FRANCIS | US20110122798A1,US, ,7 (Pre- search),2009-11-24,SILVER SPRING NETWORKS INC | US20110257804A1,US, ,7 (Pre-search),2010-04-14,RAYTHEON CO | US20120023225A1,US, ,7 (Pre-search),2009-07-20, | US20120130513A1,US, ,7 (Pre-search),2010-11-18,VERIZON PATENT & LICENSING INC | US20120198083A1,US, ,7 (Pre-search), 2011-01-27,OPENPEAK INC | US8375118B2,US, ,0 (Examiner), 2010-11-18,VERIZON PATENT & LICENSING INC | US8396602B2,US, ,11 (Examiner),2009-07-20,ALLURE ENERGY INC,IMES KEVIN R,HOLLISTER JAMES | WO2012163901A1,WO,X, , 2011-06-02,NOKIA SIEMENS NETWORKS GMBH,DE LA RUE MICHAEL,SINGH ABHINAV,GULAK MACIEJ,NAKAMURAKARE MANUEL,SOEIMA MARCO AURELIO,KJ BOBY
  13. 13. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services PROCESSING DATA WITH OPEN REFINE
  14. 14. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Create and Choose File in Open Refine
  15. 15. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Choose the Parsing Options
  16. 16. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Created Project
  17. 17. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Splitting multi-value cells using Open Refine
  18. 18. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Fill down operation in Open Refine
  19. 19. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Splitting multi-value cell into several columns
  20. 20. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Let’s Clean up a Few Items Before Exporting Out of Open Refine and Into Excel •  Rename column Citing References Details – Patents 1 to Citing References Details – PN •  Rename column Citing References Details – Patents 2 to Citing References Details – Patents PC •  Rename column Citing References Details – Patents 4 to Citing References Details – Patents Citation Type •  Rename column Citing References Details – Patents 5 to Citing References Details – Patents AD •  Rename column Citing References Details – Patents 6 to Citing References Details – Patents Citing Assignee
  21. 21. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services How Does the Allure Energy Portfolio Look with Regards to Examiner Citations? •  Citation type 7 refers to citations on Form 892 for pre-grant applications that have not issued yet •  Looking at the totals for examiner vs. Applicant it can be seen that 144 of the 147 citations are coming from the examiner •  90 of these are associated with pre-grant applications and 30 are associated with US granted patents •  The A, Y, X and XP types are coming from a handful of cases where the Allure Energy documents were used in an International Search Report from WO documents
  22. 22. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Which Companies are Having Allure Energy Documents Cited Against them by Examiners •  Allure Energy has their own art cited against them most frequently •  Coming in a close second is Verizon •  GE, Sony, Aruba and IBM are also seeing Allure Energy documents being cited against them •  Nest, who is the object of the Allure Energy patent infringement suit also makes an appearance
  23. 23. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services While US Doesn’t Have X & Y Documents There are Different Types of Rejections •  Category “X” is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or cannot be considered to involve an inventive step •  Category “Y” is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art
  24. 24. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services While US Doesn’t Have X & Y Documents There are Different Types of Rejections •  Claim Rejections – 35 USC §102 •  The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless - (e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language
  25. 25. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services While US Doesn’t Have X & Y Documents There are Different Types of Rejections •  Claim Rejections – 35 USC § 103 •  The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made
  26. 26. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services 102 and 103 Rejections are not Listed on Form 892 and are not in Online Databases •  Rejections previously had to be looked up by downloading non-final and final Office Actions from Public PAIR •  Recently, a service called Patent River, has launched that provides information on blocking citations, or Forward Rejections, for US patent documents •  Company accomplishes this by collecting data from a variety of public sources and compiling reports on the 102 and 103 rejections associated with a patent or portfolio of interest
  27. 27. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Forward Rejections Report from Patent River Provides the Details on Examiner Citations •  The report provides the Allure Energy document that led to the rejection, the assignee of the application at issue, the application number at issue and the current status of the document •  Also provides the type of rejection, when the rejection was generated, whether it was a final or non-final rejection, whether the claims were amended in the response and if the rejection led to an abandonment •  Finally, and perhaps most importantly, the report contains a link for downloading the specific Office Action •  Applicant response and amended claims are also available for download
  28. 28. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Example of Patent River Report
  29. 29. © All rights reserved. Not for reproduction, distribution or sale. Patinformatics, LLC® Data Driven Decisions Patent Strategy and Analytics Services Conclusions •  Over the past decade the US has moved from a point where there were no asterisks and no electronic file wrappers so citations from the examiner or the applicant could not be distinguished from one another without looking at the file wrapper by hand •  Trying to distinguish examiner from applicant citations under those circumstances was nearly impossible and so it simply wasn’t done unless it was absolutely imperative to do so, say for litigation •  The situation is much better today, where citations can be filtered or searched for, by whether they came from the examiner or the applicant and the source of the citation can be seen in most database records showing the citation data
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