Citations backward and forward: Insights into the patent examiner's role

Abstract

Examiners’ instructions and academic studies on patent validity determination focus on identification of “blocking” citations that invalidate claims in applications as non-novel or obvious, generally ignoring the non-blocking majority as irrelevant to validity. Recently available datasets allow us to identify, for the first time, “forward” citations received by applications before grant, as well as “backward” citations in those applications, and distinguish those identified by the examiner as blocking (submitted mainly by examiners), as well as non-blocking examiner and applicant citations. Categorical analysis confirms that blocking citations in an application strongly negatively predict its grant, but positively predict grant of the cited blocking applications. Non-blocking applicant and examiner citations in an application equally strongly predict its grant, but do not predict grant of cited applications. We test whether expected value – measured by applicant forward citations to the application prior to its grant – affects probability of grant, with negative results. These findings expand our understanding of the scope of examiners’ and applicants’ roles as mediators of validity-relevant information in applications.