Patent management: put it in reverse to go forward

16-12-2015

Chris Murphy

Patent management: put it in reverse to go forward

EVERETT COLLECTION / SHUTTERSTOCK.COM

Many elements contribute to effective portfolio management, but a well-executed corporate reverse-engineering strategy should be built into the overall IP plan, says Chris Murphy of TechInsights.

Portfolio managers are under constant pressure to maximise monetisation efforts while minimising costs. Corporations place high expectations on their intellectual property teams to develop a high quality portfolio that can help provide protection, competitive leverage, increased revenue and freedom to operate. There is a need for a sophisticated approach to portfolio management that can aid making important investment decisions for the development, maintenance and monetisation of a portfolio.

While many elements contribute to effective portfolio management, a well-executed corporate reverse-engineering (RE) strategy can be integral to this process and should be built into an overall IP policy.

The truth of the matter is that there are many reasons to be interested in completing and leveraging RE. A definition of RE for our purposes is the detailed analysis of a product’s composition, construction or operation: how it is made, what it is made of and how it works. The key is to make sure that the RE that is completed is then fully used to the advantage of the whole corporation. To that end, it must be understood that the intent and use of RE may vary widely from stakeholder to stakeholder. It takes a unified RE strategy to ensure that a company’s RE investment is maximised.

The first step in building a unified RE strategy is to identify all the potential stakeholders. This requires putting some significant thought into what parts of the organisation either sponsor or have an interest in the resulting data from RE that may be completed. Not all RE will necessarily be of interest to all parties, so if possible it is important to categorise the type of RE your organisation is likely to be interested in and identify the potential stakeholders for each. You may find that a small modification or incremental change in scope may have a significant impact on the end benefit the RE has for the organisation.

When considering RE, the next step is to assess the primary reason for pursuing the RE and create a programme that supports that primary reason. For example, a common approach to licensing is to first analyse a competitor’s product in an effort to demonstrate possible evidence of use. In this case, the primary reason for completing RE is to identify potential patent infringement in the target product in order to show the value a licence may bring to a potential licensee.

In the end, the goal of the activity is to leverage the RE to successfully conclude licensing negotiations. However, without a corporate RE strategy the use of the RE may not be fully leveraged.

In order to maximise the impact of the RE, further consideration should be given to how you can effectively leverage the analysis beyond the originally intended purpose. How might other potential stakeholders in the organisation benefit from the information gleaned from the analysis? How might the patent prosecution team use the data? What, if any, aspect of the RE might affect design choices for the research and development (R&D) team? Could this have an impact on R&D investment and subsequent patent filings? Would incremental work at minimal cost bring significant value?

A unified RE strategy helps ensure there are no gaps or redundancies related to RE investments. If, for example, the corporate procurement team invests in product teardowns to get a breakdown of the bill of materials for competitor products, a unified RE strategy makes sure that the licensing team fully uses the information without potentially repeating the similar work in its efforts to understand the architecture of a product that was included in the product teardowns.

The most sophisticated technology companies go beyond RE for evidence of use and integrate RE into their portfolio management activities. They understand that their competitive intelligence activities help lead to better decisions and improved market positioning. Comprehensive use of RE analysis leads to design improvements, refined processes for selecting inventions, patent improvements, and increased opportunities for patent monetisation.

Chris Murphy is a principal in the IP services department of TechInsights. A specialist in patent portfolio management and licensing support, he provides custom solutions, and technical and strategic advice to patent owners across North America. He can be contacted at: cmurphy@techinsights.com

Chris Murphy, TechInsights, R&D investment, patent filings, RE, portfolio management, licensing, strategy, reverse-engineering,

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