Patent Infringement Analysis
Infringement Probability
Each patent is assessed and tentatively rated with respect to its suitability for assertion against products of the opposing party. The rationale for each patent selected and the claims argument is articulated in a written summary. The object of these exercises is to assign to each inventor's patent a value, in terms of degree of confidence of the likelihood that the target company's products infringe that patent according to the following criteria:
1. Super-high infringement category includes those patents whose claims appear clearly and unambiguously to apply directly to one or more products of the target company. Patent claims in this category force the target company to capitulate to the inventor's patent license negotiation demands, or defend itself by redesigning the product, or attempt to invalidate the patent through prior art research.
2. High infringement value patents are those where paper-level and applications analysis indicate some aspect of the invention's claims can be asserted against the target company's product. Elevation of a high infringement value patent to the super-high infringement category may entail procurement of schematics, technical manuals, or purchase of product or reverse engineering analysis.
3. Medium infringement value patents are those that may have negligible probability of infringement today, but a high probability of infringement or value to the target company in the future. Patents will fall into this category primarily because of the consultant's experience and intuition with regard to the target company's evolving use of technology in some class of products. It would probably not make good business sense to pursue patents whose claims fall into the category unless there is a very large market value associated with the targeted products.
4. Zero infringement value patents are those whose claims do not read on any of the targeted company's products or future products, or whose claims read on products with little market value.
5. Unknown infringement/high value patents are those with claims that may read on probable future products of the target company which are estimated to have a high market value.
6. Unknown infringement/unknown or medium to low value patents are those where no claim product match can be determined.
Infringement Analysis Process
While the engineers who make the initial portfolio review above may know which product or type of product may incorporate the claims of a patent, it is typically the purview of a product marketing expert to complete the next steps. This process includes:
The Infringement Survey
1. Becoming technically conversant with the claims of the patent, typically in collaboration with the client's engineering personnel.
2. Examining target company literature to identify the likelihood of claims infringement.
3. Analyzing target company technical publications and actual product samples.
4. Creating claims charts and written infringement arguments.
5. Developing patent analyses including the technology subject-matter expert's interpretation of the patent's claims and structure of the invention and how the patent's claim should be asserted, vis-a-vis the target company's products.
6. Company profiles are analyzed to identify present negotiation opportunities, especially in the context of the client's marketing and development strategy. The company's strengths are assessed with regard to product technology, component technology, design tools and manufacturing technology and quality and reliability. The target's weaknesses are also appraised relative to competition, R&D and distribution channels.
Product profiles provide data regarding a target product's specifications, market potential and trends, i.e., an increase or decrease in market share, and other key business indicators.
Each patent is assessed and tentatively rated with respect to its suitability for assertion against products of the opposing party. The rationale for each patent selected and the claims argument is articulated in a written summary. The object of these exercises is to assign to each inventor's patent a value, in terms of degree of confidence of the likelihood that the target company's products infringe that patent according to the following criteria:
1. Super-high infringement category includes those patents whose claims appear clearly and unambiguously to apply directly to one or more products of the target company. Patent claims in this category force the target company to capitulate to the inventor's patent license negotiation demands, or defend itself by redesigning the product, or attempt to invalidate the patent through prior art research.
2. High infringement value patents are those where paper-level and applications analysis indicate some aspect of the invention's claims can be asserted against the target company's product. Elevation of a high infringement value patent to the super-high infringement category may entail procurement of schematics, technical manuals, or purchase of product or reverse engineering analysis.
3. Medium infringement value patents are those that may have negligible probability of infringement today, but a high probability of infringement or value to the target company in the future. Patents will fall into this category primarily because of the consultant's experience and intuition with regard to the target company's evolving use of technology in some class of products. It would probably not make good business sense to pursue patents whose claims fall into the category unless there is a very large market value associated with the targeted products.
4. Zero infringement value patents are those whose claims do not read on any of the targeted company's products or future products, or whose claims read on products with little market value.
5. Unknown infringement/high value patents are those with claims that may read on probable future products of the target company which are estimated to have a high market value.
6. Unknown infringement/unknown or medium to low value patents are those where no claim product match can be determined.
Infringement Analysis Process
While the engineers who make the initial portfolio review above may know which product or type of product may incorporate the claims of a patent, it is typically the purview of a product marketing expert to complete the next steps. This process includes:
The Infringement Survey
1. Becoming technically conversant with the claims of the patent, typically in collaboration with the client's engineering personnel.
2. Examining target company literature to identify the likelihood of claims infringement.
3. Analyzing target company technical publications and actual product samples.
4. Creating claims charts and written infringement arguments.
5. Developing patent analyses including the technology subject-matter expert's interpretation of the patent's claims and structure of the invention and how the patent's claim should be asserted, vis-a-vis the target company's products.
6. Company profiles are analyzed to identify present negotiation opportunities, especially in the context of the client's marketing and development strategy. The company's strengths are assessed with regard to product technology, component technology, design tools and manufacturing technology and quality and reliability. The target's weaknesses are also appraised relative to competition, R&D and distribution channels.
Product profiles provide data regarding a target product's specifications, market potential and trends, i.e., an increase or decrease in market share, and other key business indicators.
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