Three Keys to Effective Freedom-to-Operate Management

Freedom-to-operate is a murky world where the quality of the investigation greatly depends on the skills and resourcefulness of the lawyer or analyst doing the work. Best practices and standards of care are not very well defined and, even when systems exist, they are rarely adaptable to changing needs.

It is our mission at ClearstoneIP to gather, implement, and standardize best practices in FTO and patent risk management. This article is a step in that process and sets forth three basic foundational concepts for effective FTO management.

  1. Well-defined product parameters. For an effective FTO investigation, it is important to define the product or project parameters at the outset. FTO is necessarily carried out with regard to a specific subject. Thus, the analyst should create or ascertain a detailed definition of the product, process, system, or future concept that is being cleared  in order to memorialize the current state of the product. This contrasts with the sort of “invention harvesting” that might be done as part of growing a patent portfolio, where the goal is to identify broad inventive concepts and build on them in creative, but not necessarily actualized, ways. In FTO, the more that is known about the actual product intended to be sold, the more effective the investigation will be. Also, as a product evolves over time, past FTO analysis on that product may change radically. We should document parameters and features at a specific point in time in order to establish a clear historical record.
  2. Patent analysis must focus on the claims. More critically than perhaps any other activity in patent law, an FTO investigation must be centered on patent claims. Prior art patents might include any number of embodiments, alternatives, and everything else under the sun in its specification, but the claims define the exclusive rights. If we can point to a single element of a claim that is not present in the product being investigated, then the claim is cleared and we can move on. There may be some exceptions to this when, for example, we’d want to monitor a cleared patent and its family when the subject matter is particularly close. But the point remains that infringement analysis is all about the claims. Losing sight of this, and using systems that make it difficult to access and act upon claims, can result in inefficiency and wasted time.
  3. A mechanism to tie products to claim determinations. Building on the first two keys, it follows that the investigation would fall apart if we don’t use an effective mechanism to track, memorialize, and manipulate our work product. If we only had one simple product that never changed, this part wouldn’t be too difficult. But as products become more complex, upgrades and modifications are implemented, and product lines grow larger, our need for a robust system to handle the different permutations of product-analysis combinations becomes critical.

There is, of course, much more to the process, such as how to locate relevant patents, how to properly interpret patent claims, when to dismiss patents or merely flag them for monitoring, how to strategically assess relative risk among critical sets of patents, and more. We will touch on specific nuances and more in-depth analysis techniques in future articles.

ClearstoneIP Announces New FTO Platform

ClearstoneIP is proud to announce the beta release of its next generation freedom-to-operate management platform, Clearstone FTO. With guidance and feedback from IP industry leaders, we’ve infused this new web-based application with the ideal combination of best practices, workflows, and collaboration features to bring much-needed efficiency to a critical process.

Some of the core features of the platform include:

  • Product-focused organization of FTO reviews – all reviews for a product easily locatable in one place.
  • Claim-by-claim FTO determinations with integrated patent review interface.
  • Team collaboration – messaging, workflow management, asset sharing, all easily handled between team members.
  • Patent history review – easily see what decisions were made on a patent, in any prior review and any other product.
  • Customizable reporting – user-configurable to report the most essential information.

With state-of-the-art security features, Clearstone FTO makes it simple and safe to access vital information from anywhere. It’s an intuitive and powerful approach to manage and interact with information that was previously relegated to hundreds of spreadsheets scattered throughout organizations.

Click here to learn more.

Know Your Portfolio

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“Which of our patents cover what the competitors are doing?”

“Where are the holes in our patent coverage?”

“Which of our patents cover our products?”

What the heck is in our patent portfolio?!?!”

 


A patent portfolio is both a sword and a shield; leverage

your analysis with Clearstone Elements to wield both with agility.

These are some of the most critical questions asked of in-house patent counsel, but they can also be the most dreaded. Experienced practitioners know there are no easy answers. Reliable results can be expensive and are often reached only after a significant investment in time.

ClearstoneIP is changing all of that.

In any strategic patent assessment, whether defensive or offensive, it is critical to know what technologies, products, or processes are actually covered by a particular portfolio. Patent metrics based on bibliographic and other surface data only go so far; these critical questions can only be answered with an in-depth analysis of patent claims.

For example, the cornerstone to any successful licensing program is “to have a detailed understanding of what you own and where the most value lies. It is also important to have an understanding of the technologies within your patent portfolio and how they are connected (a “taxonomy”).” In an effective defensive strategy, “good portfolio management requires monitoring of your competition’s patent holdings to identify opportunities and threats.” Key to these efforts is not just having a vague sense of generally protected subject matter, but identifying specific product-to-patent correlations with confidence and agility.

That’s why we’ve built the ideal platform for capturing and interacting with patent portfolio analysis. After a one-time effort to index a patent collection, Clearstone Elements leverages that analysis to yield powerful results, including the ability to:

  • Map competitor products to your patent portfolio in minutes to discover the patents that are most likely to be infringed. The process can be repeated for any number of products, with each mapping typically taking less than 30 minutes (even for large portfolios that include thousands of patents).
  • Map your products to your patent portfolio to determine whether your portfolio provides adequate protection for your product line and to discover gaps in coverage. This is also a convenient way to manage patent marking.
  • Mix and match product mappings to different portfolios or collections of patents to assess offensive and defensive strategies with respect to various alignments. In Elements, users perform a product mapping by interacting with a hierarchy of technical elements irrespective of the underlying patents. The user can map a product once and apply the mapping to different patent sets interchangeably, a truly unique capability that only ClearstoneIP can offer.
  • Quickly adapt product mappings to account for product changes over time to zero in on which patents become relevant due to the changes.
  • Apply saved product mappings to patents and portfolios indexed later in time. The unique nature of Elements offers a mechanism that instantly compares saved product mappings to any patents that are indexed at a later time. So when newly issued/acquired patents are indexed, Clearstone Elements will instantly inform the user which of these patents are likely to cover previously mapped products.

The Elements platform provides a degree of patent omniscience that some of our users have likened to “seeing the matrix.”

Sign up for a Clearstone Elements trial account today to start leveraging your patent portfolio analysis for insight and efficiency.

Five Reasons to Memorialize Patent Claim Analysis

For decades, a real problem area facing patent professionals has been the inefficiency of searching and analyzing patents for purposes of infringement. Sure, there are many ways to search and retrieve information for prior art or validity purposes based on patent disclosure, from basic keyword searching to advanced semantics-based algorithms, but these methods routinely fall short when the task is to determine a set of patents that might be infringed by a particular product. In other words, conventional searching doesn’t work when the focus is on claim scope, not disclosure.

This is because it is impossible for patent searchers to conceive of every possible manner of describing a particular system. Patents that use different terminology from that used in the search and patents that are broader in concept (but still relevant) are often missed using conventional search methods. Even when highly relevant references are retrieved, it still takes considerable time for an analyst to work through the “noise” of claims that can easily be dismissed because the target product clearly lacks at least one claim element.

ClearstoneIP’s mission is to provide a platform for effectively memorializing and interacting with patent claim analysis. It is the first tool to reliably capture the key information necessary to conduct rigorous, reliable, and efficient infringement-based analyses.

Here is a short list of five of the most powerful benefits of memorializing patent claim analysis:

1. Fast and Efficient Infringement Analysis

The most effective way to memorialize claim analysis is to create a hierarchical index of technical elements that represent features recited in claims. With this index, patents that claim similar features can be grouped together according to their technical elements. To conduct an infringement analysis, such as identifying potentially infringing products, performing freedom-to-operate, or other portfolio management activities, you can simply navigate the index of elements and select the ones that are not present in the target product. The software will automatically eliminate patents that require the selected elements for infringement. You are left with a resulting set that includes highly relevant patents that couldn’t be eliminated.

The process of selecting elements from the index that are not embodied by the target product is fast (typically less than an hour even for patent sets including thousands of patents) and can be done without looking at a single patent. You will have confidence that the remaining set of patents will be highly relevant because it represents the references that could not be cleared based on conscious and deliberate decisions with respect to actual claim elements.

2. Enhanced Reliability and Accuracy

When conducting infringement analyses, we instinctively want to jump to the most obvious question: “which patents cover the target system?” This question leads us to seek out references that disclose or claim aspects that are similar to the target system, which results in mountains of patent documents. This approach is fine for prior art or invalidity searches, but for infringement analysis it is fraught with unneeded expense of effort while failing to retrieve the unknowably relevant documents (e.g., patents with claims that are broad, use different terminology, or otherwise describe subject matter differently from that which the searcher/analyst can anticipate). The effort is overly burdensome because, while this mountain of documents may be highly relevant from a technological similarity perspective, the large majority of results will include at least one claim element that is clearly not present in the target system.

ClearstoneIP posits a complete reframing of infringement analysis. Before getting to the ultimate question above, the first and most relevant question should be: Which patents can I eliminate from consideration because they clearly claim something that is not in the target product?

In other words, the focus should be on finding reasons to eliminate or clear a patent reference, not on trying to find the most similar references. This can be achieved effectively by using an index of technical claim elements that represent subject matter drawn directly from a memorialized claim analysis. This process is highly reliable and accurate because references are only eliminated based on a conscious and deliberate decision to do so. It automatically takes account of claims that are very broad and describe subject matter in different ways, and will yield these hard-to-find but highly relevant documents in the result sets.

3. Real-Time Product/Portfolio Monitoring

With an index of technical elements drawn directly from actual patent claims, you can save a record of selected elements in connection with a particular product. This saved record can be applied to previously-analyzed patent sets as well as patents added after the Product Record is created. This means that patents that issued after the product record was created can be instantly associated with the previously analyzed product.

Example: In January 2015, you analyze a product against a memorialized claim element index and save the record. In June 2015, you wish to update the analysis. Let’s assume 150 new patents have issued between January and June in the relevant field of art and have been annotated. As soon as you open up the previously-saved product record, the system will inform you which of the 150 new patents are “cleared” and which are relevant to the product, without having to do any additional work.

4. Tracking Product Modifications

Another powerful use of the Product Records just described is the ability to quickly locate patents that become of issue due to product or system modifications.

With conventional methods, changes to products require a near-complete reworking of an infringement analysis because added features may not have been considered the first time around, or patents that were previously considered are now moot because certain considered features have since been removed. In each case, there is no easy way to adapt the previous work product without starting the search from the ground up again.

Starting with a Product Record that represents features of an originally-designed product in relation to an index of technical elements, a user can easily make the necessary adjustments so that the Product Record represents the modified product. Based on the differences between the resulting patent sets of the original Product Record and the modified Product Record, the Clearstone Elements software will immediately inform the user which patents have become of issue due solely to the product modifications.

5. Databases Don’t Have Sick Days

All too often, the depth and wealth of institutional patent knowledge resides in a secure location accessible by only one individual: in the mind of the resident technical expert. If that person is not available or eventually decides to leave the company, he or she takes the information with them, resulting in a knowledge vacuum.

Memorializing claim analysis with Clearstone Elements is a great way to preserve institutional knowledge and make it accessible by anyone. Analyses and records can easily be shared between and acted upon by many users within the organization.