Mining Ideas for Diamonds:Comparing China and US IP Practices from Invention Selection to Patent Monetization by Tao Zhang & Jingui Fang

Author:Tao Zhang & Jingui Fang [Zhang, Tao & Fang, Jingui]
Language: eng
Format: epub
ISBN: 9789813146181
Publisher: World Scientific Publishing Company
Published: 2016-09-20T04:00:00+00:00

Table 4-6 Drafting high quality patents — focus on objectives.

(i)If you are a market leader in a particular technology area, your goal would be to prevent competition from infringing your inventions. The criterion for a well-drafted patent application is that it is able to fence off your technology area thoroughly so others can’t easily work around your invention. In this case where you are a market leader, your patent can simply map onto your own current and future products. The advantage is that, your inventors working on future products should have some idea about what your own future product might look like. However, your patent drafter needs to be extra diligent covering all possible scenarios that future market might adopt and including the corresponding potential embodiments in the specification unless your company plans to keep them trade secrets. Even though future technology direction is not 100% certain, you can reference your own R&D roadmap for your core products to get some insights. The patent quality can be at a normal level, i.e. you can use your regular process in terms of prior art search.

(ii)If your objective is to obtain design freedom via your patent portfolio, either by working around third party’s key patent or use your own patents to negotiate patent cross-licenses, you need to file negotiation grade patent, i.e. those that map well onto third party future products and can survive some diligent prior art challenges. The issue is that it is hard to predict third party future products. Possible solutions could be (a) look for standards; (b) study industry trend and third party patent filing trend to gain some insights.

(iii)If your objective is to detect infringement and file suits, assertions, injunctions, or being able to go to court to enforce these actions, then your patents must have very high quality, i.e. litigation grade. Therefore, you need to conduct thorough and skilled prior art searches to make sure your patent can survive invalidity challenges. These patents must read onto third party’s future core products. Similar to the above, the issue one often encounters is that future products are unknown or uncertain. The recommended solution is to look for standard related inventions and ideas; study competitor roadmap and patent filing trend to understand their technology and product directions.

(iv)If your objective is to avoid litigation by deterring potential assertion or suit with your patent portfolio or file first to invalidate third party’s patents, then you need to file enough normal quality patents (i.e. regular prior art search process) to reach a critical mass in terms of your portfolio size. The patents must read onto third party’s future core products. The issue is the same as the above that future products are hard to predict. The recommended solution is to study competitor’s roadmap, and study competitor’s patent filing trend to get some sense on their future technology and product directions.

Download

Copyright Disclaimer:
This site does not store any files on its server. We only index and link to content provided by other sites. Please contact the content providers to delete copyright contents if any and email us, we'll remove relevant links or contents immediately.