Mapping of Patent Claims

Patent claims mapping is a legal and technical method which is used to support critical business decisions. It is about clearly linking a patent and one or more of the claims of that patent to a specific product or a specific component, part, feature or function within that product. Patent product mapping is frequently used to map your patents to your products, to evaluate the level of alignment here, and to help identify the most important patents in your portfolio and the protection they provide to the products in the product offering. Mapping also occurs during the patent prosecution phase to establish which claims should to be taken forward, and which claims not. This blog looks at the rationale for patent product mapping, the challenges trying to conduct it and some of the approaches and techniques one can employ in order to succeed.

Patent claims can be strategically mapped to various parameters to aid in critical business decision-making. As the term suggests, patent product mapping involves establishing a clear connection between a patent—specifically, one or more of its claims—and a defined product, or a specific component, part, feature, or function within that product. This process is a cornerstone for organizations looking to harness their intellectual property (IP) for maximum business value. By mapping patents to products, businesses can assess alignment, pinpoint the most valuable patents in their portfolio, and understand the extent of protection these patents offer to the company’s offerings.

Patent product mapping is vital during the patent prosecution phase to identify which claims should progress and which can be abandoned, streamlining efforts and avoiding unnecessary costs associated with maintaining overly broad or redundant claims. Beyond internal applications, this mapping process can also be applied externally—mapping one’s patents to third-party products or mapping third-party patents to one’s own products.

This blog explores the nuances of patent product mapping, including its rationale, inherent challenges, and practical techniques for success. At IPEG, we advocate for a pragmatic approach to patent product mapping, recognizing the constraints of resources—be it time, budget, or personnel. Businesses should prioritize activities that yield tangible benefits and align with strategic goals.

The Rationale for Mapping

In today’s knowledge-driven economy, intellectual property has emerged as a pivotal asset. Patents, in particular, have gained prominence due to their ability to create value in diverse ways for businesses and organizations. Effective patent product mapping can unlock numerous advantages, including:

  1. Freedom to Operate: Identifying overlaps and potential infringement issues.
  2. Product or Feature Differentiation: Establishing unique market propositions.
  3. Revenue Generation: Through licensing or outright sale of patents.
  4. Business Influence: Enhancing negotiating positions and market presence.
  5. Technology Enablement: Facilitating innovation and advancement.
  6. Technology Transfer: Supporting collaborative efforts and partnerships.
  7. Cost Advantage: Leveraging IP to reduce manufacturing or operational costs.
  8. Market Credibility: Fostering a positive image of innovation.
  9. Tax Benefits: For example, under initiatives like the UK’s Patent Box.
  10. Attracting Investment: Demonstrating a robust IP portfolio to stakeholders.

To realize these benefits, businesses often need to embark on a patent product mapping exercise.

Challenges in Patent Product Mapping

While the concept of mapping patents to products seems straightforward, execution often proves complex. Several factors contribute to these challenges:

  • Patent Language vs. Product Terminology: The precise and technical language used in patents often differs significantly from the terminology employed by engineers, product developers, or marketers, creating communication barriers.
  • Absence of Product Details in Patents: Patents are often drafted before products are fully conceptualized, designed, or commercialized. Consequently, product-specific information may not be included in the original invention documentation.
  • Data Integrity Issues: IP data management systems may suffer from incomplete or inconsistent product-related information. For example, while systems might have fields for product data, these fields may not have been systematically maintained.
  • Timing Discrepancies: The timelines for patent creation and product development are typically independent, leading to asynchronous progress between the two processes.
  • Portfolio Size and Complexity: Large organizations with extensive patent portfolios may struggle to prioritize mapping activities, particularly when resources are limited or when competing priorities dominate.
  • Product Complexity: Mapping becomes increasingly challenging for complex products containing hundreds or thousands of hardware, software, or mechanical components. Over time, these products may evolve, making the mapping exercise a moving target.
  • Legacy Issues: Patents acquired through mergers or acquisitions may lack comprehensive product mapping data, and historical documentation might be difficult to interpret.

Mapping techniques

There are a variety of techniques which may be applied to map a patent to a product. Some are easier to use than others. Not all techniques will apply to each mapping exercise. Some will only make sense if one is attempting to map a patent to one’s own product.

  • Examining the patent and the claims.
  • Patent to technology mapping.
  • Semantic mapping between trademarks and patents.
  • Reviewing data from the invention handling and patent board decision making stages.
  • Examining the patent data management system in use.
  • Examining engineering and product data management systems in use.
  • Looking at special attributes of the patent if they apply.
  • Gathering insights from inventor rewards.
  • Reviewing the annuity process.

Examining the patent claims:

This is the most obvious approach. However, it can be slow and labour intensive. The claims have to be examined to try to identify ways and means in which the patent maps to the product. Basically the claims are examined to see if there is any product mentioned. Of course some software tools may be utilised here to make this examination more efficient and effective.

Patent to technology mapping:

This technique is as such a two stage process. Firstly, a patent to technology mapping exercise is conducted and then secondly a technology to product mapping exercise is carried out. The claims are examined to see what technology is referenced and then the product is analysed to see if that particular technology is embedded within the product.

Semantic mapping between trademarks & patents

This technique uses semantic mapping between trademark descriptions and the language used on patents. The name of the product may be trademarked, and this trademark documentation is examined. Semantic maps are maps or webs of words. The purpose of creating a map is to visually display the meaning-based connections between a word or phrase and a set of related words or concepts, in this case words or phrases in the trademark documentation and hopefully a set of related words or concepts in the patent.

Looking at the invention handling process

This technique involves examining key steps in the patent creation process prior to the patent being drafted to hopefully find and capture some product related information. Key stages worth examining may be …

  • invention disclosure
  • prior art search results
  • patent board meeting and the review and decision making process conducted there

Many innovative and creative companies have invention capture processes and tools. One simple yet effective way to build a level of discipline into the invention handling process is to define a standard template for invention reports coming from the inventor community. If the idea is of potential value and is patentable, then the inventor should complete an invention report.

Such a template may consist of the following:

  • The title of the invention
  • Inventors details
  • Additional contributors to the invention
  • Is the invention related to a specific project or program?
  • Technology area of the invention
  • Does the invention relate to a Standard?
  • A summary of the invention
  • A more detailed description of the invention, together with any figures or drawings
  • Description of all known, related prior art
  • Will the invention be disclosed publicly?
  • Reference material

They may or may not have a field containing product information.

It may be worth reviewing the results of any prior art searches conducted to see if any product information was captured. Additional it may be worth checking what discussions were recorded at the patent board or committee meeting.

Examining IP data management systems

This technique relates to accessing the data stored in the IP data management system of the product company or its outside IP Firms. These systems are oftentimes complex sophisticated IT system containing large amount of data.

Examining R&D data management systems

Mature and sophisticated research and development groups will have various systems and tools in use to capture information as the product moves from initial idea through specification to early prototype stage, and then onto commercial release. Mention of inventive ideas and IP reviews may be captured in these R&D systems, especially if they follow a gated review process. Another approach is to review the product user manuals, including early drafts as there may have been a discussion about including patent details there.

Focusing on special attributes of the patent

Does the patent have any special attributes. A Supplementary Protection Certificate (SPC) in essence extends the term of a patent. Is the Patent a Standard Essential Patent (SEP) and relate to some interoperability standard? If the patent has any such special attributes, then it may be possible to utilise this fact to map the patent to a product.

Inventor reward & recognition programs:

Most innovative businesses provide rewards and some form of recognition to inventors and yes, there are legal requirements in certain jurisdictions to take into consideration. More than 80% of inventions are made by employees and it is therefore important that the company knows its own rights with regard to an invention, as well as the rights of his employees. The general rule is that where an employee creates an invention in the course of his employment, this invention and any patent will belong to his employer.

However, there are statutory provisions in place to ensure that the employee does not go unrewarded. Japan and Germany are two examples of jurisdictions where employee compensation is common, but there are others. This technique is therefore based on first checking the inventor was paid a reward, and if so, how was the payment calculated. It may be the calculation included product data as this is actually required in certain jurisdictions.

Checking the annuity renewal process

This technique involves reviewing the annuity / renewals process and how decisions were taken on maintaining the patent in question. Oftentimes key patents are maintained because they protect important products. As a final thought: as companies strive to better leverage and exploit their patent portfolios, the requirement to master patent product mapping will significantly increase in importance.

Donal O’Connell,

IPEG Consultant
Managing Director, Chawton Innovation Services Limited
Chawton Innovation Services Limited The Stables, Gosport Road, Chawton Alton Hampshire GU34 1SH, United Kingdom

photography: Alvaro Reyes (Unsplash) and David Martin (Unsplash)

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