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:
Identify patents whose use can be detected from the end product.
Find products, services, and technologies that may violate your patent(s).
Develop a set of priorities and a plan to address them.
Legally, carefully, and cost-effectively reverse engineer the products.
Relate product components to aspects of your selected patent claims.
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:
Teach your inventors how to create detectable inventions:
This may include formal inventor workshops about your reverse engineering
process and about how to incorporate elements in an invention that facilitate
detection and therefore increase quality and value.
Focus on creating the types of inventions that are easier to detect:
Include reverse engineering as a major input to your invention extraction
and directed brainstorming processes.
Add disclosure template questions to draw out detectable embodiments:
The basic invention disclosure template can be strengthened significantly
with the addition of specific sections that ask the inventor to consider other
ways in which components of the basic invention could be related physically
and in time. Often, inventors can be the best sources of specific tactics
for reverse engineering.
Include reverse engineering expertise in the IP review process:
With the addition of detectability as a formal criterion for invention assessment,
you can help ensure that patenting resources are focused on those inventions
that will generate the most business leverage.
Support Counsel to draft claims that are easier to detect:
Patent attorneys are highly-trained experts in writing claims, but additional
field-specific and technology-specific advice on how to draft claims for maximum
detectability can be helpful, especially coming directly from reverse engineering
Include reverse engineering expertise in your invent-around process:
Best-practice companies are proactive about analyzing their own patent applications
to strengthen them against competitive invent-around.
This process can be further enhanced with input from your reverse engineering
experts, who can suggest ways to strengthen patent applications for improved
detectability before they are filed.