In the spotlight: the Eagle has landed

“Do applicant patent citations matter?” was the question. “We find that patent examiners rarely use applicant-submitted art in their rejections to narrow patents, relying almost exclusively on prior art they find themselves,” came the answer.

In a 2013 paper, three law professors in the US analysed more than 1,000 cases and argued that patent citations—which are made by applicants and examiners—don’t carry as much weight as had been assumed, at least where the first group is concerned.

Others would argue that citation by an applicant, or more likely its attorney, and then an examiner helps to provide a step-by-step paper trail of innovation—to show how a supposedly new invention has drawn on earlier discoveries but gone on to improve them. However, while patent owners might be grateful that newcomers have read and cited their inventions, they also need to track and manage these citations for legal and commercial reasons.

This is where Citation Eagle, created by IP data analytics software company Practice Insight, comes in.

Aimed at patent attorneys and patent owners Citation Eagle is the world’s first fully automated patent citation monitoring software, scanning more than 90 IP offices daily and including more than 1.5 billion data entries.

Watching a video explaining how the software works, it’s clear that much thought has gone into its creation. Indeed, you might be hard-pressed to argue with the voice running over the video when it says: “Citation Eagle is the most efficient and effortless citation monitoring software available. I use it to offer additional services to my clients and to distinguish myself from competitors.”

The video walks you through the key functions, showing how you can search either by the proprietor of the prior art or the law firm responsible. When searching for patent owners, you can select multiple proprietors and even pick citations covering the past five years, and refine searches with a number of filters including whether the cited prior art is “alive”. As one example, you can see full case details on Espacenet (the European Patent Office’s patent searching database) if you click on the patent, before downloading a report and sending it to your client.

According to Practice Insight’s website, because not all citations are equal, the product classifies and distinguishes between the following classes and types: Highly Relevant (X); Relevant if Combined (Y with O or P or R); Cited in Application (D, L); Technology Background (A, E); Theory (T); and Unclassified (I, and US citations). It adds a note that all US citations (examiner or applicant) are currently captured in the Unclassified basket. “Hence it may be worthwhile to not exclude ‘Unclassified’ citations in your search or alerts.” However, in the near future, Citation Eagle will be able to distinguish between examiner and applicant citations.

When the product was launched in March 2017, Practice Insight said the software will transform the way patents are managed and monetised: “Citation Eagle gives control back to the patent owners and attorneys, who can access and easily manage their patent alerts at any time, eliminating their reliance on third parties to manually monitor their portfolio.”

Thomas Haines, founder and managing director of the company, which has offices in the US, Germany and Australia, said Citation Eagle’s customised alert functionality considers the opportunity and timeline for opposition or infringement procedures, enabling law firms to generate in-house business and licensing opportunities for their clients.

“Additionally, patent owners can save thousands of dollars in possible litigation costs by being informed of possible patent infringements well ahead of key patent deadline dates,” he said.

Power for attorneys

Expanding on these benefits, Doris Spielthenner, general manager at Practice Insight, says the patent citation tracking system puts power in the hands of patent attorneys.

“It’s an efficient means to grow their practice, as it helps to identify licensing or opposition opportunities more quickly and accurately than others. Attorneys can provide greater value to their clients—and grow the value of services they provide and help clients generate new streams of revenue,” she says.

The software can assist with identifying potential infringers and threats and even potential takeovers, she says, adding that “we do all the searching and try to predict what things will be relevant to the attorney”.

At this point you might be wondering why it is so important to monitor citations.

Spielthenner says citations suggest a similarity or overlap between prior art, with an examiner noting that one patent is similar to another but not so similar that the newer patent would not be granted. With knowledge gained from using Citation Eagle, an attorney could seek to oppose a later patent that has cited his client’s prior art, or alternatively seek to extract licensing revenue from it. If this option doesn’t work, “then maybe you take the step of threatening litigation; that possibility might drive people back to licensing”.

Citation Eagle does not benefit just attorneys, but business development, licensing managers, and research organisations too. Spielthenner says these institutions “often have certain KPIs to file patents but don’t know their relevance to the outside world, they don’t have an understanding of which ones need to be renewed”.

A catchy name and an established owner go a long way to setting Citation Eagle apart from its rivals, but there are other factors that make it stand out from the crowd. The main one is Practice Insight’s knowledge of the prior art, according to Spielthenner—“we know who owns, and which IP firm looks after, what portfolio, saving you the time to submit individual patents to tracking”.

The filters are important too. “You might be interested only in citations pertaining to patents that are still alive, so we look at the legal status. Another filter tells you whether the newer case patents are still being examined or have been granted, helping you to pick the best time for opposition. We also have filters on strength of citations. So every user can home in on what factors drive their personal opposition, renewal or licensing decisions. As a consequence, everything you see is tailored to your needs, and you don’t have to waste time reviewing cases that are likely irrelevant,” she explains.

While Spielthenner cannot disclose specific case studies on the successful uses of Citation Eagle, she puts the importance of the product into context by claiming that many institutions have spent millions on their IP portfolios but have had little tangible return, “so we’re working with some of those to help uncover the hidden value of these IP treasures”.

Practice Insight is a data insights specialist, but more specifically, a big data specialist. Its software collects billions of data points every year, and there are four people working just on the data for both Citation Eagle and the company’s other major tool, Filing Analytics. Spielthenner says there are three others working on the Citation Eagle product, back end and user interface, with a further team of customer service and business development employees.

The Citation Eagle team is currently working on adding countries—one of them India—to the software, as well as a “data insights dashboard, making it possible to display the data in interactive graphics and charts which are easier to digest and can be used for a company or client presentation”, Spielthenner adds.

In a wider context, she explains that large patent offices are still opening up their databases and much of this data needs to be cleaned and processed accurately.

In addition, developments in the big data space are aiding IP data and citations. “Within the market, organisations are becoming more aware of the importance of citations. Citations tell you about similarity.

“Another way to tell similarity is to compare text, but as you can imagine, comparing a Chinese patent with an Italian patent, there are lots of issues, whereas with patent citations, rather than relying on machine translations and text matching, a human subject matter expert has already made that connection,” Spielthenner concludes. Do patent citations matter? Practice Insight certainly thinks so.