An IP Thought Leader Shares Her Experiences with Clearstone FTO

Jackie Hutter thinks differently about IP protection and business value creation, and has built her practice around maximizing businesses’ return on innovation investment. She has a unique ability to recognize and seize opportunity for her clients, rather than put up fences.

In a recent article, Jackie shared her experiences using Clearstone FTO for patent search and analysis. While the project wasn’t specifically focused on freedom-to-operate, Jackie quickly realized that the platform simply makes a number of different types of patent analysis much more efficient and actionable, including complex prior art searching:

Quite simply, because of the functional and elegant dashboard in the Clearstone FTO product, I was able to look at the relevant aspects of each patent document and make substantive notations of the relevance (or lack thereof) at a speed I never before thought possible.

Click here to read Jackie’s article.

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.

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.