To manage large patent portfolios effectively, all patents must be included in the monetization program to ensure active discovery of new product use and detect possible incidences of infringement. Semiconductor companies are specifically at risk of omitting significant portions of their valuable assets, assuming a high cost associated with Reverse Engineering (RE) for circuit extraction. However, RE techniques, when carried out strategically and efficiently, can help companies unearth hidden assets, increasing the overall profitability and licensing value of patents.
There are various ways to monetize a patent portfolio through RE. Patent holders can perform a study of public domain information and relevant literature to identify features of the product(s) of interest. This can be followed by identifying multiple patents related to each feature and then RE the product(s) to unearth the implementation of those features in the product(s). The above process is useful, especially where enough functional and/or structural information is available in the public domain.
It is increasingly common that sufficient information is not available in the public domain. This is because companies are becoming more adept at hiding their use of other’s inventions. In this instance, the patent holder can perform preliminary RE of the product(s) to identify features. From here, they can mine the patent portfolio to extract patents relevant to the features. This is followed by specific and detailed RE of the product(s) with respect to the potentially identified patents.
These strategies help to maximize the ROI in several ways:
Identifying multiple patents for each feature before RE is performed helps to increase the chances of finding patent hits.
Certain RE steps can be overlapped for multiple patents to reduce the cost of evidence per patent.
RE for a certain feature/patent could reveal implementation details of the same feature, or another feature not previously identified, helping to unearth more potential patents.
In addition to their usefulness to granted patents, RE techniques can be used to strategically amend the claims of a pending application or to take a decision on whether to extend a patent family.
Discover more about measuring and optimizing the value of patents through RE techniques in our whitepaper: Semiconductor Patent Portfolio Profitability through Reverse Engineering.
Patent valuation and monetization require technical expertise and smart strategy to maximize portfolio value. UnitedLex helps patent owners and corporates identify their most valuable patents and prepare the most compelling monetization packages. Visit Intellectual Property Services to find out more.
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