Grow Patent Quality with Reverse Engineering in Mind  

POSTED BY Jed Cahill AT 3:35 P.M. JULY 7, 2009

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Any company that files patents as part of its intellectual property (IP) strategy should be actively thinking about the end use of these assets. In order to maximize business leverage, a patent holder must be able to demonstrate that a third party is using or may have a desire to use the patented invention. Therefore, any effort to maximize patent value must consider the detection of third-party use as a key part of the process.

A company that suspects a possible violation of one or more of its patents will often attempt to formally reverse engineer the product, service, or technology of interest to confirm or disconfirm its suspicion. Though reverse engineering usually takes place after a patent has issued, the process and capability can actually inform the patent development process at several early stages to help grow patent quality and value. The six basic process steps for reverse engineering third-party products are outlined below:

  1. Identify patents whose use can be detected from the end product.
  2. Find products, services, and technologies that may violate your patent(s).
  3. Develop a set of priorities and a plan to address them.
  4. Legally, carefully, and cost-effectively reverse engineer the products.
  5. Relate product components to aspects of your selected patent claims.
  6. Conclude on the potential violators and levels of violation.

The conclusions drawn in the reverse engineering process above not only inform possible plans for enforcement moving forward, but also opportunities to strengthen your upstream patent development processes to produce higher-quality patents that are easier to detect and enforce - for example:

To obtain more information or discuss your unique challenges, please contact ipCapital Group or Semiconductor Insights.

TAGS: IAM | Jed Cahill | Process | Strategy
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