Minneapolis patent attorney Mark Stignani explains how portfolio mapping helps executive understanding of a portfolio.
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How does portfolio mapping address executive understanding of a portfolio? For that, let’s kind of start with what is portfolio mapping. In our case, we map the claims and the claim language of a set of patents, a portfolio, a segment of a portfolio, into concepts that are really standard technical in nature or simple concepts that are bereft of the legalese that we have in many of the patent claims. So we do this in a way that allows a person who is not a patent specialist to look at a series of concepts, essentially noun phrases that, you know, disclose a thing that an invention does. And we go through an analysis with them, saying, “Is this something you do or is this not something you do?” And we turn it into a binary decision rather than trying to holistically make someone understand a whole claim.
So if you can actually map a portfolio in these fragments – and by in what we in the patent space call limitations – we can go point by point by point with an inventor, with an executive, with a technologist who’s trying to understand what’s in a portfolio, and give them a better, fresher, and deeper understanding of what the patent claim actually does say and does cover. So, what do we do with this? We discover prior density, what has been disclosed before this. We discover what things we can design around, what things have been patented, are claimed, or disclosed – don’t do that; let’s do this, that which is not patented, which is not claimed, and which is disposed, and we work with the engineering teams to get that done.
We look for white space. White space is a very abstract term, but what it really involves is understanding where the gaps are in patent coverage, and allowing our client or their team to come into those spaces and cover those spaces adequately, or exploit those spaces if they’re held by another patent owner. We also use this to discover inbound and outbound licensing activity. So we can take an inbound licensing request and we can map that out against the current portfolio to see what the value of bringing that license in is. And once that license is in, then we can actually give a map to the engineers and technologists, who can look at that and go, “I’m okay to do this. I’m okay to do this,” or “I’m not okay to do this,” and then call in-house counsel.