Blending Reverse Engineering Techniques and Technology to Track Patents
Maintaining a large patent portfolio can be ineffective if patents are missed from monetization program because of uncertainty related to identifying relevant products and detecting infringement. This is especially true for semiconductor patents and could result in significant number of valuable assets being omitted from monetization plans, owing to assumed high cost associated with Reverse Engineering (RE) especially circuit extraction RE. The irony is that reverse engineering techniques can help companies unearth hidden assets and increase the overall monetization/licensing value of patents. However, if not used effectively and strategically, these techniques could result in decreased Return on Investment (ROI). Therefore, it is essential to understand reverse engineering techniques and the different ways in which they can be used to benefit the monetization program.
Not all patents require expensive reverse engineering. For example, the cost of evidence for patents related to transistor circuits in integrated circuits can be more than the cost of evidence for patents related to package structure. In addition, reverse engineering the product(s) of interest may reveal that they do not employ the technique taught by the patents being analyzed and evaluated. Thus, to maximize the ROI, the first step in monetization of such patents is an understanding of reverse engineering techniques and then, planning ahead to utilize the techniques to its fullest to reinforce the monetization strategy.
There are various ways to monetize a patent portfolio through reverse engineering. One option is to 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 reverse engineering the product(s) to unearth the implementation of those features in the product(s). The above process is useful especially when enough functional and/or structural information is available in public domain.
Where sufficient information is not available in the public domain (which is becoming the norm as companies are becoming more adept at hiding their use of other’s inventions), a second approach is to perform preliminary reverse engineering of the product(s) to identify certain features of the product(s), and then mine the patent portfolio to extract patents relevant to the features. This is followed by specific and detailed reverse engineering of the product(s) in light of the identified patents.
The above strategies are just two of the many strategies available. These helps to maximize the ROI in several ways:
a) Identifying multiple patents for each feature before reverse engineering is performed helps to increase the chances of finding patent hits.
b) Certain reverse engineering steps can be overlapped for multiple patents to reduce the cost of evidence per patent.
c) Reverse engineering for a certain feature/patent could reveal implementation details of the same feature, or another feature not previously identified, helping in unearthing more potential patents.
In addition to their usefulness to granted patents, reverse engineering techniques can be used to strategically amend the claims of a pending application or to take decision on whether to extend a patent family.
Discover more about measuring and optimizing the value of patents through reverse engineering 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.