Xcitation – the mystery of patent citations. Solved
Did you know that before you have granted and enforceable patent rights, you have to apply for a patent?
While the patent application is examined, you can state that you have a “patent pending”, which sounds ominous and can, under some circumstances, be an effective commercial deterrent. If you have been through the patent system, you will be familiar with the patent examination process. During the examination process, a Patent Examiner (think Albert Einstein) will review the claims for your invention in the patent application, and they will provide their opinion on whether the subject matter is the proposer subject for a patent monopoly. Amongst other things, the Patent Examiner will check to see whether the invention is new (hasn’t been published or used before) and whether it is inventive (not obvious) over what is commonly known. Typically, at the examination stage of the patenting process, if the Examiner finds that the invention is not new, he will cite a number of earlier publications that arguably disclose your invention. These “citations” are intended evidence that your invention is already owned by someone else. In order for a patent to validly grant on your application, you will need to overcome these citation obstacles either by amending your claims to the invention (to circumnavigate their scope) and/or arguing around them (patent attorneys can help you do this). As the patent applicant, you will be very aware of which earlier patent publications are your “obstacles”. However, here is the interesting part… no one tells you if your patent right then goes on to pose an obstacle for others. Your invention might be a brick wall blocking others from securing a patent positon. You might be holding the winning ticket in some technology white space, and you don’t even know it. So why is this interesting? Well, firstly, you might be quite famous in the boardrooms of big companies like 3M, Panasonic or Virgin Galactic. These guys might be discussing your technology and its relevance to their own. Notwithstanding that this makes for great dinner party conversation, it also puts you in an interesting negotiating position. Are those companies interested in your IP? Are they interested in acquiring or collaborating with your business? Are they interested in hiring you? If you do hold patent rights in a space in which others are seeking their own patent protection, are those other entities infringing your claims? If yes, is there a juicy licence deal on the table? Even in the absence of actual infringement, a patently active technology area may allow you to now justify keeping that patent right alive when previously the whole thing seemed fruitless. You may now be able to bolster a business case (formally to the board, or simply to your spouse) that this patent is worth maintaining for another few years.
At IP Solved, we have developed a process for quickly informing you if your patent right has ever posed an obstacle for another patenting entity in your technology area. Simply email the patent number or numbers to Xcitation@ipsolved.com.au and we might make your day.