Citations as indicators of prior art


Ron Kaminecki

A typical prior art search for non-patent literature often involves primary or secondary sources of literature, but in many cases, does not include citations that can be found in both the patent and non-patent literature.

If a patent is found in a prior art search, why not look at the backward citations, those found on the cover of this patent, to see if any could affect the patentability of the invention that is the focus of the search? In doing this, a searcher is using leverage to extract the benefit of the prior art patent’s searchers to at least suggest some other prior art that may not have been found otherwise.

A common problem with backward citations is that the patent applicant may have an ulterior motive for citing certain patents, such as self-citation, thus giving the cited patent more worth than it should have.

A check of the forward citations for a patent may be productive, keeping in mind that the dates of these patents could be after the priority date of the prior art search. But these forward citations do show other applications or uses that may not have been anticipated by the inventors. And the applicant does not have as much control over who is citing a particular patent.

Prior art, citations