Any company that files patents as part of its intellectual property strategy should be actively thinking about the end use of those assets. For business leverage, a patent holder must be able to demonstrate that a third party is using or has a desire to use the claimed technology. Therefore, any effort to maximize patent quality and value must consider the detection of third-party use of the patented technology.
A company that suspects a patent violation will often attempt to reverse engineer the product, service or technology of interest to confirm its suspicion. Though reverse engineering usually takes place after a patent has been issued, the process and capability can inform the patent development process at several early stages to help grow patent quality and value. By starting with the end--reverse engineering--in mind, you can enhance the patent development process to generate higher-quality patents that are easier to enforce. Here, we outline a best-practice reverse engineering process to provide the "end in mind" context for patent process enhancements.
1) Identify patents that are likely to be used by third parties and that are easily detectable when deployed in a product. Identifying patents for analysis requires individuals with knowledge of the technical innovations that are making it into end products in a given field, as well as an effective triage process to focus the list of patents for analysis by subject matter experts. The result is a list of strong patents whose claims will be the focus of the reverse engineering activity.
Click on image to enlarge. |
2) Find products, services and technologies that might violate your patents. In some fields, data exists that details the functions and features of particular products and technologies. This data can be related to the functions and features of your patented inventions to pinpoint suspect products.
3)Develop a set of priorities and a plan to address them. Use the product data you've gathered to create a matrix of products, services, technologies and companies vs. your patents. You can use the matrix to summarize for management the level of potential violation at each intersection. Based on the high-level business strategy that defines the markets, companies or products that are priorities for your organization, you can develop a plan to gather additional evidence.
4) Legally and cost-effectively reverse engineer the products. The reverse engineering results will act as evidence of use. Therefore, it is important to maintain proper evidence-handling procedures in terms of the chain of custody of the products under investigation and the ability to trace the reverse engineering analysis to the specific product. Some reverse engineering investigations are destructive in nature. Take care to minimize such destruction and to ensure that a sufficient supply of the product is on hand to complete the analysis.
The more complex the product or technology, the more difficult and costly it will be to reverse engineer, so focus reverse engineering on the patent claims identified in stage one, rather than pursue a broader investigation.
5) Relate product components to aspects of your selected patent claims. Here, the way you wrote the claim language in the first place becomes important. For example, if you are relating a third-party product to a structure claim, and the product locates Material A next to Material B, the potential degree of violation may hinge on how you specified the location of Material A in relation to Material B in your claim (e.g., "on top of," "beneath," "next to," "adjacent to").
6) Conclude on the potential violators and violation. After completing the reverse engineering analysis, you can revisit the matrix from step 3 to determine the strength of your position and whether further action or research is needed before pursuing claims against violators.
The conclusions drawn in the reverse engineering process not only inform possible plans for enforcement, but also suggest opportunities for strengthening your upstream patent development processes to produce higher-quality patents that are easier to detect and enforce.
