Part 3 of 3: What You Should Be Doing Instead
This three-part series explains why conventional techniques, particularly “semantics-based” searching, fall short for freedom-to-operate (FTO) searching and analysis. It then puts forth a solution for avoiding these problems. Part I was an introduction to the differences between the searches. Part II identified the deficiencies of semantic searching in relation to FTO analysis. Part III explains how these deficiencies can be overcome. Click here to download a PDF of the entire series.
Part I and Part II of this series explained how semantic and similar keyword-based platforms are ill-suited for freedom-to-operate analysis. We saw how, for various reasons, these platforms show little for their cost.
We can overcome the shortfalls of conventional search tools by building a new FTO solution from the ground up.
Let’s take a look at some necessary characteristics of such a solution:
1. The solution must recognize claim scope, not just patent disclosure.
Easier said than done, right? Patent claims are notoriously complex and are often intentionally vague or broad. Despite its complexity, claim scope could be effectively navigated with the right platform.
First, the solution ultimately must leverage human analysis in some form. We should dispel the notion that artificial intelligence, such as semantic-based algorithms, can properly interpret claims. Sure, they may be fine at retrieving patents that disclose pertinent subject matter, but there is a fatal disconnect when it comes to claim coverage. Semantic algorithms simply cannot read and process delineations of scope. They are essentially language-similarity detectors and can’t differentiate between claimed concepts and those that are merely disclosed.
Second, the solution needs to handle claim concepts in an eliminatory or deductive framework. This is a significant departure from the status quo. Conventional platforms amass or aggregate sets of potentially relevant patents to create a large set for deeper review. However, in FTO, it is far more efficient to arrive at a review set by first eliminating irrelevant patents from a large initial set based on a claim scope determination. Several reasons for this were discussed in a previous blog post.
The correct framework places the most relevant question at the forefront, not the back end. For FTO, the question is whether a particular product embodies each claim element of a patent. It is not whether a patent discloses similar subject matter.
2. The ideal FTO solution accounts for the infinite ways of describing a product.
The ideal FTO solution should not require an analyst to identify keywords or specific terms ahead of time because, as discussed in Part II, there is never a single “right” way to do so. And if an analyst were to try to capture all of the ways, semantic platforms would retrieve an impossible amount of results.
The solution to this problem must remove this guesswork from the equation. Building on the eliminatory framework described above, the solution should present to the analyst an organized menu of claim concepts. Instead of considering what to bring into a search, an analyst only needs to consider which of the displayed claim concepts do not correspond to the product.
The menu of concepts should be displayed in an organized manner, for example an index-based system that an analyst can navigate. The index will present a list or taxonomy of technical concepts that each represent patent claim elements. In this way, the analyst can simply make a determination on an element-by-element basis as to whether it relates to the product at issue.
A rough semblance of a concept-based index exists in the form of official patent classification systems used by patent offices around the world, such as the former U.S. Patent Classification system (USPC) and the newly adopted Cooperative Patent Classification system (CPC). But these systems are still extremely cumbersome for FTO for several reasons: (i) they are not keyed to specific claim elements but, rather, general inventive concepts; (ii) they have no capacity to distinguish among different independent claims of a single patent; (iii) they are not nearly specific enough to be effective; and (iv) while they are updated from time to time, they are effectively static indices that are difficult to modify and adapt.
The ideal FTO solution includes a dynamic, easily modifiable taxonomical index of elements that are programmatically connected to specific patent claims. The index has high granularity but allows the analyst to operate as broadly or as specifically as desired without reducing efficiency.
3. The ideal FTO solution does not sacrifice completeness for relevance.
In Part II, we discussed the problems that arise when a search platform provides results in a “ranked” order. We saw that these ranking algorithms could be arbitrary since they are based primarily on similarity of language or terminology. Highly relevant results from an FTO perspective can be placed far down the result list. Missing pertinent patents in an FTO analysis is far more consequential than missing a potentially relevant reference in a patentability search.
The ideal FTO solution should be equipped to capture all potentially relevant patents, readily bring them to the surface, and do so efficiently. It will avoid burying highly relevant patents and make them easy to locate.
Clearstone Elements™ – The Ideal Solution
Our Clearstone Elements application is the ideal FTO solution. It is an interactive platform that, as a core capability, provides a comprehensive taxonomical index of technical elements drawn directly from human analysis of patent claims. As an analyst navigates the hierarchy, he or she selects elements that are not present in a product under review. The software will automatically eliminate from the initial set the patents that require the selected element for infringement. After just a short period, typically less than an hour, 90-95% of the initial patent set is usually eliminated, leaving the most critical and relevant patents for closer review.
To see this more clearly, take a look at the below real-time video, in which more than 10% of the initial patent set is eliminated in less than 45 seconds:
These kinds of results and efficiency are simply not achievable with any other system. This is how the “noise” is removed from search results.
An interesting phenomenon occurs in FTO. A large proportion of patents tend to be dismissible from an initial patent set based on only a few, general requirements. This is due in part to the noisiness of conventional search tools, but also to the peculiarities of claim-drafting.
As an example, consider the golf club field. There are about 4,500 active patents in this field, a 100-plus year old industry. Obviously, these active patents are directed to nuanced, highly incremental improvements. Yet, of this universe of highly specific patents, the claims of about 62% require a golf club head to be an “iron-type,” “putter-type,” or “wood-type.” What this means is that, if one only applies those three broad technical concepts in Clearstone Elements, they could eliminate 30-40% of patents from any particular search. Imagine what is possible by applying a few more concepts.
Determining if this phenomenon occurs in your industry is simple enough. Review a random swath of patents from the initial patent set of your last comprehensive FTO investigation. For patents that you excluded, what were the reasons? Were they excluded for requiring broad, sweeping technical concepts (or were you compelled to dig deep to understand the fine points of novelty)? Did these reasons frequently recur (or were they unique)? I suspect that most patents were dismissible based on broader concepts that frequently recur throughout the patent set. Clearstone Elements leverages this phenomenon and more to achieve incredible results.
The graph below illustrates conceptually how the addition of a deduction-based platform such as Clearstone Elements can shift the cost-accuracy curve for FTO. Because of the ease of objectively eliminating large portions of patent references with little work, high accuracy could be achieved at little cost. Conventional tools are unable to achieve this efficiency.
Another important aspect of Clearstone Elements is that the analyst does not have to know beforehand which aspects of the product may present infringement issues. The patented concepts are presented on the screen in the taxonomical index. The analyst only needs to decide whether the product embodies the concept or not. This is how the system ensures that critical patents are not missed – they are only removed from the initial set upon a deliberate decision by the analyst based on displayed concepts.
Taking this a step further, analysts can create a “product record” upon completing their review of the index. This product record is essentially a fingerprint of the product as it relates to the indexed elements, and, in turn, how the product relates to the initial set of patents. The product record can be opened and modified later on to quickly reflect any changes that are made to the product during development to achieve an incredible result: The Elements interface will instantly display a list of patents that become of issue solely due to the product changes. This capability is truly unprecedented and is key in streamlining product development through enhanced communication between product designers and the legal department. See the blog post, Bridging the Divide Between Patent and Engineers, for more.
Many more interesting and powerful results are being achieved with Clearstone Elements as a foundation, which will be discussed in future articles. The methods discussed here will pave the way for a new industry standard for all varieties of patent claim analysis since they represent the correct analytical approach (not to mention how enjoyable it is to interact with the application and watch the patent counter drop!). We hope you join us on this exciting journey.