How to perform a technical patent analysis

We look at investigating patents from the technical perspective and introduce Papula-Nevinpat’s partnership with Huld for this kind of work.

Performing a technical patent analysis may be necessary if you suspect your rights as a patent holder have been infringed upon by a competitor’s technology. Or sometimes it may be performed by a patent holder – often a startup – concerned that their technology may infringe upon someone else’s patent.

Either way, performing a technical patent analysis requires a combination of skills in both the legal and technological dimensions of intellectual property.

In order to extend our work in this area, Papula-Nevinpat is now offering technical patent analysis services together with technology and software design house Huld. The company has more than 500 experts working from 13 offices across Finland and the Czech Republic.

Where then does one start with identifying the need for a technical patent analysis?

European Patent Attorney and Papula-Nevinpat Team Leader Tomi Konkonen lays out some of the steps to take:

“Usually the people in your company working with the technology in question should be your first point of contact. They’re the ones who understand the business and technology landscape at its most practical level and know it very well,” says Konkonen.

“Then you can conduct searches – through the internet, for example – as well as look through your competitor’s marketing materials. You can even order the competing product or service to try it out yourself and see how it works in relation to your patent portfolio.”

Begin with mapping competing claims

Konkonen recommends that patent holders should conduct a claim mapping exercise. This is where the independent claim of your patent is broken down into technical claim features that are compared one-by-one to the product you believe might infringe upon that patent.

A two-column claim mapping table is a simple but useful tool that’s commonly used. It’s also very helpful as a basis for communicating with a technical expert – such as those from Huld – who can then start exploring the source code, analysing any devices, and interpreting features in relation to the patent claim. Many of the tools Huld uses are the same ones the company employs during security and penetration testing.

“There is no handbook for this kind of work – it’s about collecting information in different ways,” says Huld’s Director for Digital Security and Functional Safety, Tarmo Kellomäki.

“Sometimes you may need to reverse engineer software. Deep technical expertise is very important for this. You really need to understand patents and how they are structured – including any technical descriptions and terminologies – so you can help legal IP analysts with their work,” he says.

Expert cooperation, thorough analysis

When Huld’s analysts find potentially infringing technology, evidence is captured in the form of source code, screenshots, video or other formats needed for further analysis. The evidence is then presented in a report to the IP protection team. This is where Konkonen takes over.

“When we do this kind of analysis, there’s always a need to prepare the evidence properly. It will be challenged and contested, so you need to be ready to defend it against thorough review,” he says.

The cooperation between Papula-Nevinpat and Huld provides patent holders with a one-stop-shop for getting a technical patent analysis done.

Huld has extensive experience working with different software related products, including mobile applications, information systems, and embedded devices. The company’s work covers Android, iOS, Windows and Linux for both consumer and industrial applications.

“We’re a unique player when it comes to integrating digital services and physical environments,” says Kellomäki. “Whether you’re a big corporation or a startup, we can tailor our service with Papula-Nevinpat to meet your needs. Our work can start off as a small project or we can be part of your robust IP analysis process. We can easily join your team in whichever way you prefer.”

You can watch the recording of the webinar, The benefits of technical patent analysis here.

Contact Tomi Konkonen for any questions, we are here to help you.