By Matt Benavides ‑ October 15, 2019
When Apple Inc. decided to sue Samsung Electronics for copying patented smartphone functions and features, it wasn’t just to make a point. After all, with patent infringement litigation typically costing plaintiffs millions of dollars, most companies don’t have the luxury of suing on principle. They do so because they need to protect the patent portfolio they’ve worked so hard to obtain, and to realize a monetary return on their investment.
Companies spend millions of dollars developing and patenting their intellectual property with the expectation that those millions will be returned—and then some. It’s no surprise, then, that they want to guard their IP portfolio from potential infringement.
Of course, effectively protecting your patent portfolio first requires that you understand what it contains. But how should you go about accomplishing that, and what steps should you take to fully understand the marketplace and how to best determine whether someone is actually infringing a patent within your portfolio? Here are six tactics to better understand and maximize the value of your portfolio, while also protecting against possible patent infringement.
1. Carry out patent taxonomy and claim charting across your portfolio to better identify which patents potentially relate to competitor products. Review, analyze, and break down your portfolio by technology areas, key words, or other parameters. While the level of granularity depends on multiple factors, the result is essentially an index of patents, thus allowing companies to identify products that are potentially infringing their claims.
2. Use citation analysis and patent landscaping studies to identify all competitors and potential infringers using the same taxonomy created for your own portfolio. Once you understand what you have, you need to understand what others are doing. A patent landscape search allows you to get a sense of what others are doing, who’s in the market, and who are the competitors. Don’t stop there, though: Looking for patent literature alone isn’t enough. You should also search non-patent literature (NPL) such as journal articles, technical manuals, and press releases, to name a few. NPL can sometimes be helpful because it can provide indicators as to what somebody is doing in the market at a given time.
3. Conduct an evidence of use (EOU) study to identify specific products that are infringing your patents. An EOU study is used to identify products that are potentially infringing claims within your patent portfolio. Once you identify your competitors’ products in the marketplace, you can begin cross-referencing their product features to your own claims to identify potential infringers. Understanding potential infringement through an EOU study can also be useful during licensing negotiations and with other business transactions.
4. Don’t limit your searching solely to direct competitors. Search across adjacent industries as well. Just because you’ve patented a device for a specific purpose doesn’t mean other companies in other industries might not also find a use for it. For instance, when Nikola Tesla invented the first remote control—intended to power a boat—he likely never imagined it would one day be used to open garage doors and turn on televisions. When looking for possible incidents of infringement, consider expanding your search to include other, seemingly unrelated industries. Even if the use or outcome differs, if the invention in question remains structurally the same, you may still have a relevant infringement claim.
5. Track competitor manufacturing activity, including which jurisdictions it occurs in—not just where their products are sold. A single occasional search is not going to be enough to keep your organization fully informed and aware of would-be patent infringers. Many companies will conduct infringement studies quarterly or twice a year. After all, maybe there’s a product that doesn’t exist today, but that might emerge a week from now. You need ongoing tracking and monitoring. Your research needs to be fluid and ongoing, much like technology development itself.
Patent infringement is costly—as is the process of litigating it. Don’t tackle it blind. If you’re going to effectively pursue infringement, it’s critical that you develop the best possible understanding of your own portfolio and the overall competitive landscape.