Mapping of Patent Claims

Patent claims can be mapped to a variety of parameters to support critical business decisions. As the name suggests, patent product mapping 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 your product offering. Mapping is important during the patent prosecution phase as one needs to know which claims ought to be taken forward, and which claims should be abandoned. It is not cost effective to proceed with a large number of claims. Of course patent product mapping may also refer to mapping ones own patents to the products of a 3^rd party or mapping the patents of a 3^rd party to one’s own products.

This blog looks at the issue of patent product mapping, the rationale for doing so, the challenges with trying to conduct such mapping and last but not least some of the approaches and techniques one may employ in order to succeed. IPEG fully understands that one should be quite pragmatic about what can or should be done and what not. As everyone has limited resources (people, time and money), one should only do things which bring clear benefits for the business.

The rationale for mapping

In recent years, intellectual property (IP) has come to play an increasingly important role in the world economy. In the knowledge economy, knowledge has become an important economic good. Thus, IP and patents gain in importance. Patents can bring value in a variety of different ways to a business or organization.

Freedom to operate

• Product or feature differentiation
• Revenue generation (though licensing or selling)
• Business influence
• Enabling a technology
• Supporting technology transfer
• Cost advantage
• Positive innovation image in the marketplace
• Tax benefits (for example the Patent Box in the UK)
• Attracting investment

To order to obtain many of these benefits listed, a company may need to first conduct a patent product mapping exercise.

Challenges with mapping

Mapping a patent to a product however is often easier said than done. This challenge with mapping was flagged by a number of companies considering to apply for the Patent Box in the UK when the scheme was being deployed in 2013. Why is it so difficult for some? The language and terminology used in patents is rather unique, and somewhat different from that used by technical engineers or product marketing personnel. In a patent, a word must describe a thing very precisely, and have a very specific, unambiguous meaning. When it comes to describing a device or process in a patent application, specificity is ever more crucial because of the risks of encroaching on other patents in process or already granted.

Most patents do not make mention of specific products. There may be no product information contained within the original invention reports when the inventive idea was first documented. The inventor will definitely have been much more focused on the technical invention rather than any product possibly incorporating this technical invention.

When the patent was drafted, there may not have been any specific product information included simply because no product existed as it had yet to be designed, developed and commercialised.

The IP Data Management System in use either by the Corporate IP Department or by its outside IP Firms may not have been configured to record product details. Even if such a field exists, it may have suffered from data integrity or ‘dirty data’ issues. Data integrity is data that has a complete or whole structure. All characteristics of the data including business rules, rules for how pieces of data relate to each other, dates, definitions and lineage must be correct for data to be complete.

The timing of the patent and product may be completely out of sync. A product may launch well before or after a patent is granted as the product development process and the patent creation process are independent processes and not connected as such.

The company may have a very large patent portfolio of thousands or tens of thousands of individual patents to manage and patent product mapping may not have been considered a key issue of importance within the patent portfolio management process. The company may have very busy or crowded technology or product road-maps, making patent product mapping very difficult and therefore not easily accomplished.

The complexity of the products involved may make this mapping exercise extremely challenging. The product may contains hundreds or thousands of hardware, mechanical and software components. The product may change over its lifetime as enhancements or improvements are incorporated. The bill of materials may change as second sourced almost identical components are fitted.

Part of the patent portfolio may have been acquired through M&A activity or part of the patent portfolio may have been bought in. Patent information previously included on say product user manuals may no longer be recorded there. There may simply have been no justification in the past to capture such patent product mapping information. Even if there is some product information documented, it may be difficult to interpret it. Many product development companies use a variety of project names, project codes, SKU numbers, product brand names or numbers, all actually referring to the same product.

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,

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