The communication divide between a company’s legal department and its engineering corps is an ongoing source of contention, confusion, and consternation for many companies. This divide is especially problematic in the patent context where legal matters are ever-intertwined with technical complexity. For example, successful drafting and prosecution of patent applications requires in-depth technical knowledge. Effective freedom-to-operate similarly necessitates an intimate understanding of a company’s products, development strategy and ability to anticipate product revision. Patent litigation and licensing nearly always involves technical expertise and a thorough understanding of the relevant art.
Because information needed to carry out these critical tasks is often “siloed” in different departments, tension and inefficiency often results. The technical team often perceives the legal team as overly reliant and thus deserving of “Class-A Inhibitor” status. We’ve worked with some companies that have even gone so far as to locate their legal department in a completely separate building from the engineers for fear of contaminating the creative process. Yet the technical team’s efforts to involve themselves in patent matters or to “take matters into their own hands” draw ire from the legal team.
This divide has been difficult to bridge. Solutions are less than optimal, and typically involve extensive back and forth communication between the departments and murky work product boundaries. The legal team must go to great lengths to sufficiently inform the engineering side about how patents should be read and understood to ensure that they are not dismissed inappropriately. For example, a common tendency is for engineers to read teachings from the specification into the claims, which can result in construing a critical patent too narrowly and an overlooked issue. At the other end, engineers must spend significant time preparing product specifications and informing the legal team about technical aspects that are not readily available from generally-accessible company documents. A frequent difficulty here is when certain aspects of a product or process of manufacture are simply not documented (e.g., aspects that are kept under tight security measures or even those that are common knowledge to the designers but are simply not readily known to others).
There is hope.
Clearstone Elements is a software tool developed primarily to carry out infringement-based analysis, such as FTO investigations, with great efficiency and accuracy. A remarkable and somewhat surprising aspect of the platform is that it naturally provides the ideal interface between the engineering corps and the legal department. The engineering side of the interface presents an interactive technical element hierarchy while the legal side of the interface allows the legal team to conduct the necessary patent analysis based on the engineers’ technical input. The engineers can use their interface to define the technical characteristics of a particular product or process under development without actually placing eyes on a single patent. Using pre-recorded mappings of technical concepts to claim language, significant numbers of “noisy” patents are eliminated from an initial patent set. Thus, the legal team is left only with the most relevant patents that may be implicated by the specified characteristics.
Here’s how it works:
Step 1: The patent analyst reviews the claims of a collection of patents and categorizes the claim elements into a technical element hierarchy (click to enlarge):
Step 2: A member of the engineering team reviews the technical element hierarchy and creates a Product Record based on features not present in the product or process under development:
Step 3: Clearstone Elements eliminates irrelevant patents and leaves only the most critical patents for review by the patent analyst:
Step 4 (if needed): If the product later undergoes modifications, the engineer returns to the previously saved Product Record and makes the necessary changes to reflect the new technical characteristics. Clearstone Elements automatically identifies which patents become of issue due to the product changes:
Clearstone Elements supplies the perfect interface between the legal team and the technical team. Technical information is efficiently received from engineers in a manner that maintains the proper legal framework applicable to freedom-to-operate studies (and other infringement-based analysis). Patent analysts and engineers can now work together seamlessly and frequently throughout the entire product development cycle to realize tremendous gains in freedom-to-operate efficiency. Now if only we could do something about Marketing…