Bridging the Divide Between Patent Analysts and Engineers

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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):

Patent Annotation: performed by patent analyst (services also available from ClearstoneIP)
Patent Annotation: Patent analyst annotates and categorizes claim elements (annotation services also available from ClearstoneIP)

 

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:

Product Mapping: Engineer selects technical features not embodied by product under development
Product Mapping: Engineer selects technical features not embodied by product under development

 

Step 3: Clearstone Elements eliminates irrelevant patents and leaves only the most critical patents for review by the patent analyst:

Patent Review: Patent analyst reviews the most relevant patents based on the engineer’s Product Record
Patent Review: Patent analyst reviews the most relevant patents based on the engineer’s Product Record

 

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:

Product Variation: Clearstone Elements automatically indicates which patents become of issue due to product changes
Product Variation: Clearstone Elements automatically indicates which patents become of issue due to product changes

 

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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…

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.

ClearstoneIP Announces Pilot Program in Arterial Stent Patents

ClearstoneIP announces the launch of a pilot testing program for its new web application, Clearstone Elements™. The pilot program is slated to begin in November 2014 and run until Spring 2015. Clearstone Elements™ will apply ClearstoneIP’s revolutionary claims-based patent analysis platform to the field of arterial stent technology. Approved pilot group testers will be granted unlimited, free access to the Clearstone Elements™ software for the duration of the program.

Pilot Group Applicants Requested

Pilot testers will be the first to experience this groundbreaking patent analysis tool, which enables users to conduct clearance, infringement, and other claim-coverage-based analyses against all patents existing in released patent collections. The first patent collection will contain the approximately 1,200 U.S. patents assigned to Boston Scientific SciMed, Inc. that are classified in USPC 623/1.1 through 1.54 (relating to “Arterial Prosthesis”). Owning more than 15% of the stent patent universe, Boston Scientific Scimed is the largest patent holder in the field. The program’s launch will immediately provide powerful insight into the patent landscape of the industry’s largest participant.

Additional patent collections will be released each week by assignee, including Abbott Cardiovascular, Endologix, Medtronic, Cook Medical, Advanced Cardiovascular, W.L. Gore, Bard, Medinol, Johnson & Johnson, and more. The complete pool of all patents classified in USPC 623/1.1 through 1.54 is expected to be available in Spring 2015.

To join the pilot test group, please apply at http://www.clearstoneip.com/apply or email ClearstoneIP at info@clearstoneip.com.

The ClearstoneIP Platform

ClearstoneIP’s platform has been recognized for delivering a truly unique approach to patent analysis. For the first time, patent professionals can access a hierarchically organized record of technical elements that reflect actual claim coverage (as opposed to general patent disclosure). When a user selects elements that are not embodied by a product undergoing analysis, the application will automatically eliminate patents that require the selected element for infringement. With each mouse click, patents are removed from the results, eventually resulting in a manageable list of highly relevant patents for further review by the user. Initial test results comparing Clearstone Elements™ to conventional search methods have been staggering – with ClearstoneIP’s software yielding vast improvements in precision, reliability and speed.

ClearstoneIP is determined to map and organize the entire universe of patents in this manner. It has begun the process by focusing on medical devices, but this just the beginning.

Clearstone Elements™ — Example of interactive element hierarchy and results
Clearstone Elements™ — Example of interactive element hierarchy and results

Why Stents?

Patent litigation in the medical device arena generates some of the largest damages and settlements of any industry. The number of patent infringement lawsuits in the field is also sky-high, with stent-related actions notoriously common. Companies are often unaware of the risks they face because conventional patent search methods are simply not tailored for claims-based searching.

Using Clearstone Elements™ with the forthcoming stent database, companies can mitigate the risk of litigation by quickly ascertaining problematic patents based on what the claims actually cover. Many other benefits may also be realized through the program’s unique product-to-patent mapping capability, including determining licensing opportunities, evaluating potential patent acquisitions, and improving patent marking processes.

About ClearstoneIP

ClearstoneIP is a California-based company built to provide industry leaders and innovators with a truly revolutionary platform for conducting product clearance, freedom to operate, and patent infringement searches. ClearstoneIP was founded by a team of forward-thinking patent attorneys and software developers who believe that barriers to innovation can be overcome with innovation itself.

ClearstoneIP Launches First Elimination-Based Patent Analysis Platform

Palo Alto, CA:  ClearstoneIP LLC announced today the release of its debut product and the first elimination-based patent search and management platform – Clearstone Innovator. The application is expected to disrupt existing industry standards and conventional wisdom about patent clearance and other patent management activities by creating an entirely new analytical paradigm.

ClearstoneIP rejects the traditional notion that clearance searches ought to be carried out using the same methods applicable to prior art or validity searches. Instead, the Innovator search platform uniquely ties patents to their required claim elements and presents the elements in an intuitive and functional hierarchy. Searchers narrow the set of relevant patents by selecting elements that are not embodied by a product undergoing search. The software employs a patented method to eliminate patents that require the selected elements for infringement, resulting in a manageable short list of potentially relevant patents. The program also enables users to uniquely memorialize patent infringement analysis so that repeated analysis is avoided in subsequent searches.

The company believes that much of the problem with patent clearance relates to the excessive amount of search results, or “hits,” commonly retrieved with traditional (prior art-focused) search methods, such as those based on keywords, synonyms, and concept-mapping. These traditional methods are adept at amassing a large set of resultant patents, but do not help zero in on the most relevant results. In addition, conventional methods fail to take account of fundamental differences between validity searching and clearance searching – which include the recognition that patent disclosures are almost always very different in scope from patent claims. These differences are at the core of the Clearstone Innovator logic.

By inverting the traditional logic paradigm so that the focus is on features not embodied by a product being cleared, ClearstoneIP’s software cuts to the chase and enables complete clearance searches to be performed in a fraction of the time and cost, generally within one day. Clearstone Innovator also simplifies and uniquely enables ongoing patent portfolio and marking management.