One of the pre-patent evaluation

Because companies have many potential ideas, but they don't have enough money to apply for patents, even in the United States, Nanjing Huaxun found that ordinary companies can only apply for patents for 70% of innovative inventions, which creates the problem of screening patent application programs. At the same time, the evaluation of application scheme is also an important means to improve the quality of patents and explore the creation of order-based patents.

The essence of Nanjing Huaxun's US patent intellectual property assets is "intangible", which is difficult to define and select. Patent assets also have the characteristics of technological innovation, and value evaluation is more difficult. What's more, the evaluation of technological inventions before patent application-licensing, litigation, acquisition or other activities related to patent value all take place several years after the creative application for patent. After analysis and summary, the 16 evaluation indicators are carefully recommend for your reference.

(I) patentability assessment

This is the most basic content of patent application evaluation, which mainly evaluates whether the relevant technology belongs to the object and scope of patent protection and its "three characteristics.

1. Whether it belongs to the object and scope of patent protection

To apply for a patent, one must first examine whether the invention-creation falls within the scope of the patent granted by the State. For example, according to Chinese law, inventions and creations that are not granted patent rights include: scientific discoveries, rules and methods of intellectual activities, methods of diagnosis and treatment of diseases, animal and plant varieties, substances obtained by nuclear transformation methods, etc.

The object of invention patent protection is "new technical solutions proposed for products, methods or improvements thereof." Generally speaking, the technical solution mentioned in the patent refers to the use of natural laws to form a technical solution to solve a certain problem. It does not require a formed product or practical application, but must be practical. Under this premise, except for the five cases mentioned above, as long as it belongs to the technical scheme, it can be considered to be within the scope of invention patent protection.

In contrast, the scope of utility model patent protection is much narrower, and the object of protection is "the shape and structure of the product or the new technical scheme suitable for practical use proposed by its combination". It is not protected for the formula, process, method and use of the product, as well as material replacement, system, some medical appliances, circuit design that does not involve the shape and structure of the product.

Design patents protect not technical solutions, but "new designs made by the shape, pattern or combination of the product, as well as the combination of color, shape and pattern, which are aesthetically pleasing and suitable for industrial applications", which is why some countries have independent legislation and norms for design patents.

If you do not meet the requirements of the above three patent protection objects, you should consider whether you can obtain protection through other intellectual property laws or commercial means. Patents are not the only means of protecting creation, and studies have shown that no industry relies solely on patent protection, and that technical secrets and lead times are the two most effective means of protecting product innovation.

2, whether to have the three characteristics of the patent

Although the regulations are not the same, the world's major countries have three requirements for the authorization of patents (except designs). Three sex refers to novelty, creativity and practicality. The above three patents, referred to as patentability. In patent law, patentability is a very important content, and it is the most basic condition for the authorization of a patent application.

According to the provisions of my country's Patent Law, novelty means that the invention or utility model does not belong to the prior art; no unit or individual has filed an application for the same invention or utility model with the patent administration department of the State Council before the application date, and it is recorded in In the patent application documents or announced patent documents published after the application date. Inventiveness means that the invention has outstanding substantive features and significant progress compared with the prior art, and the utility model has substantive features and progress. Practicality means that the invention or utility model can be made or used and can produce positive effects.

The design for which a patent right is granted also has requirements that are very similar to the three characteristics. For example, it requires that the relevant design "should not belong to the existing design; No unit or individual has filed an application with the patent administration department of the State Council before the application date for the same design and recorded it in the patent documents announced after the application date", which is equivalent to novelty. It stipulates that "the design for which a patent is granted shall be significantly different from the existing design or the combination of existing design features", which is very similar to creativity.

(II) potential value assessment

Is to assess whether the invention in question has market prospects or industrial value. The enterprise patent management agency must predict and analyze the market prospects and economic benefits that the technical solution may create, and then make a decision on whether to apply. If you do not want to implement it soon due to corporate strategic considerations, or if the market prospects and investment benefits are unclear, it is necessary to consider whether there is a need for patent application and layout.

From the point of view of product production, the value of patents comes from helping enterprises to obtain monopoly market position. Evaluators should consider: Does the new invention add value to customers? How likely does the new invention offer to the production of new products? What is the actual or projected gross and net profit of related or similar products? How does the invention compare with current methods? Is it an extension of a related commercially successful product? Has the manufacturing process been proven? Does the company have a ready-made customer base and distribution network?

From the perspective of patent licensing profitability, the market value of a patent stems from the size and potential of the market in which it is licensed. The evaluator should consider how big the relevant product market is? Are there other uses and markets?

From the perspective of strategy application, the evaluator should consider: What is the relationship between the industry related to the invention? Is there any possibility of competitors using the invention? What is the possibility of cross-licensing? The number of competitors in the relevant market, what is the company's position in the competition? The direction of competitors, do they seem to enter the relevant technology market?

Patents have different purposes in the hands of enterprises of different sizes and industries. Small enterprises use patents to attract investors. Patents of large enterprises are tools to maintain their strategic position. Therefore, the index design of patent value evaluation should be considered according to the specific situation of enterprises.

If the practical value of the new invention is not high, but it does not want competitors to obtain patents; it does not intend to implement and use the patents of the technology to obtain economic benefits, but also to prevent competitors from being in a competitive advantage after obtaining patents, which in turn restricts their own development. Enterprises can consider giving up the application and appropriately disclosing the technology.

Nanjing Huaxun feels that the potential value assessment is best to carry out a certain quantitative assessment, specifically and clearly to be reviewed, to avoid simple qualitative, superficial judgment.