When intellectual property (IP) is considered a part of a company’s assets, the creation of new IP should be integral to the company’s technology…and product-development processes. For patents, the starting point is generally a search of patent databases to assess the patent landscape. Who has patents issued (or applied for) in the field of the invention? How do they relate to the inventions that the company proposes to protect? Is there any room left for novel designs?
Optimum Technologies offers a structured process called “White Space Mapping” that assists client companies with the analysis and creation of new IP*. The process consists of several steps:
- DisclosureThe client discloses to us the nature of the invention. This may consist of verbal or written descriptions, CAD files, sketches, and/or hand drawings. The novelty of the invention must be clearly conveyed, as well as the benefits derived. Ideally, some background to the invention is also provided.
- SearchingBased on the information disclosed by the client, we develop a search strategy using a variety of search terms. Searches generally encompass both the U.S. and International patent databases. We identify those patents that are most relevant to the proposed invention. These patents may be current or expired.
- Claims AnalysisAll patents contain claims. These are the most essential part of the patent. Only what is described in the claims is protected by the patent. We analyze claims to distill into plain English what the legalese of the claims means.
- Draft ClaimsWe draft preliminary claims for the proposed invention.
- MappingWe create a matrix to compare the draft claims of the proposed invention to the claims of the most relevant patents. If the claims are not directly comparable, we establish relationships or dependencies. As this process is completed, it becomes clear whether there is any “white space” on the page. These spaces represent areas where IP may be developed, or at least where a product may be designed that does not infringe on existing patents.
- IP Strategy DevelopmentWorking with the client and patent counsel, we help develop an IP development strategy that meets the client’s goals.
Throughout this process, we may engage the services of our patent counsel or the client’s counsel, at the client’s option.
We recently used this process to develop a new bar code reader. The client was a late entrant to the field, but had novel technology that could position them competitively. We used the white space mapping process to identify ways to incorporate various design features into new bar code readers that not only did not infringe on the many issued patents in the bar code reader field, but resulted in new patent applications for the client.
* Optimum Technologies does not offer legal advice.
Only client’s legal counsel should provide legal advice.