Reverse EOUs: Old Dog New Trick
by: Luke Barbin, CEO
As I spend time in the trenches growing our patent research business, I notice that I stereotypically compartmentalize the objectives of customers for each type of research project we offer. That is to say, a customer tells us they want a type of search, and my brain goes on autopilot and assumes (unless instructed otherwise) that I know the client’s objective.
Perhaps it just makes things easier that way. And most of the time, I am probably right. To illustrate, here are a few types of research we conduct routinely along with the customers’ motivation:
· Invalidity: Evaluate the validity of claims of a patent in anticipation of litigation
· Patentability: Evaluate the patentability of an invention
· Landscape: Evaluate the competitive patent landscape of a type of technology
· FTO: Evaluate the risk of infringement for a proposed product in a particular jurisdiction (typically before product launch)
However, lately, I’ve been spending a lot of time and effort actively trying to think outside of the box not only about how we could be better conducting research for our customers, but also what kind of technology is needed to make it possible.
In the monetization end of the industry, we are experiencing a significant rise in outsourcing Evidence of Use (EoU) investigations and Claim Charting. There is no shortage of patent assets for sale or license to monetize. However, there is a shortage of available resources to vet owned or in-licensed portfolios for soft licensing and litigation campaigns.
It seems that everyone I engage in monetization is awash in patent assets, but do not possess enough time/resources/talent to do the research required to truly maximize their patent assets’ return on investment.
From the outside looking in, it seems that most of the resources and technology being developed for and by these folks are attempts to lubricate the old way of doing things, namely:
1) attempt to identify the most valuable assets in a portfolio that’s for sale or that’s already been acquired (automatically or otherwise), so that
2) EoU studies can be performed on the likely most valuable assets to find claim reads and targets for monetization campaigns.
If I had a nickel for every time someone told me they are building a holy grail “patent-to-product” mapping tool that will instantly find EoU for specific patents/claims, well, you know how the idiom ends.
Flip the Script
So, I got to thinking.
What if there is another way to be more efficient about uncovering EoU that doesn’t require a unicorn patent-to-product mapping tool or countless hours googling through product marketing literature to find someone doing something exactly as claimed in a specific patent. It would almost certainly require that monetization folks change their workflow behavior. Let’s explore an innovation technique that’s been used for centuries the world over to solve problems: instead of inventing a whole new game changing process/technology, let’s take another existing process/technology and apply it to a different problem.
How about we take another very common and effective research technique and use it to make the monetization industry more efficient at uncovering EoU. Turns out there is such a tool in our toolbox, but it requires a different way of thinking, and it requires that you start your EoU research at the other end of the typical monetization research workflow.
Why can’t we use FTO searches (aka Infringement Searches) to supplement the monetization industry. Instead of giving us patents to do EoU research on, the monetization customer provides a specific company, product, and set of features they are interested in. We go out, and we perform an FTO search to identify the patents that have claims that are problematic for the selected company, product, and features.
The inefficiency of attempting to narrow the world of all product uses to those that read on specific claims is highly inefficient. I would argue that it is more efficient to start with the product and work back to the claims. The patents we identify could then be targeted by monetization folks for licensing/acquisition.
Better yet, the EoU research, at least with regard to one or more primary targets who make very similar products, would be practically done before the assets are even acquired, and the monetization folks get to spend more time doing what they do best: licensing and litigation, not evaluating thousands of patents and tens of thousands of product uses.
I assume this would ease the financing process and many of the peripheral activities that must be completed to successfully run a monetization business. I call it “Reverse EoU”, aka an FTO search that is conducted at the request of a monetization group, not a product manufacturer. Old dog new trick.
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