May 16, 2017

Simplifying Identification & Tracking of Patent Citations > Licencing, Infringement, & Opposition - Citation Eagle by Practice Insight

Importance and uses of analysing patent citations

Over the years, many patent researchers have stressed the importance of analysing patent citations in  any technology or market research analysis where the focus is on assessing the following aspects:
  1. Is the technology area profitable?
  2. Is there market interest in the technology area?
  3. Is the technology area capable of influencing knowledge spillovers and further innovation
That being said, citations are also great indicators for a portfolio of patents to see which patents have a possibility of being licensed. This is a known fact and almost all patent owners as well as attorneys with an aim of finding potential licensees for a patent generally conduct forward citation analysis.

Identifying potential patent licensing opportunities using citation analysis - the usual way

The usual steps followed in this analysis are:
  1. List out all family members of key families in the portfolio (It is always important to use all family members for citation analysis because citations are specific to the jurisdiction and individual members)
  2. Search for citing patents for each member (in most cases excluding the lapsed/withdrawn/expired members)
  3. Segregate the citing patents by examiner citations vs. other citations and further into X, Y, A categories
  4. For each member list out the assignee/applicant (s) for each category of citations - These assignee / applicant (s) can be the leads for further due diligence to ascertain if they would be interested in taking a license of the key patent families, which they are citing.
An important aspect to mention here is that in most cases all these steps need to be repeated after a certain time period to make sure new citations are being accounted for.

There are many tools using which this analysis can be conducted - both commercial as well as Free. Google Patents, for example, offers a free alternative for citation analysis. (simple steps - watch video below). However, Google Patents does lack the details of citation (category), and there isn't a easy way of filtering and segregating the results, as of now.

Citation Eagle helps in making patent citation analysis easier

One other tool, Citation Eagle, was recently launched by Practice Insight which focuses on this aspect of finding citing patents.

Citation Eagle makes identification and tracking of patent citations very easy for patent owners and attorneys.

Search filters - Citation Eagle
It offers search filters using which you can set intelligent rules for identification of citations (using law firms and company names / setting exclusions / setting legal status rule)

    • You don't have to manually list the patent families or members for searching
    • You don't have to filter out expired / withdrawn / lapsed members to avoid searching for their citations (because you cannot actually license them)
    • You don't have to manually filter out some law firms or companies you may wish to exclude from the searches

The best thing is you can set alerts for your filtered searches - the whole 'repeat the searches' business is not needed, and the alerts you get can be customized for reporting using even the citation category.

Setting Search Alerts - Citation Eagle

Alerts - Citation Eagle

To signup for Citation Eagle - click here.


For further information on Citation Eagle and Practice Insight, please contact 
Erika DaunerMarketing Officer, Global Business Development & Customer Care, Practice Insight GmbH.