Zhao Shuo
WANG JING & GH LAW FIRM
Intellectual Property
Senior Legal Consultant
Zhao Shuo
WANG JING & GH LAW FIRM
Intellectual Property
Senior Legal Consultant
Patent Layout: Monetize Your Patents！
Patent layout is a well-known conception, and unfortunately, enterprises, except some pioneering ones, usually unhelpfully keep it at a conceptual level. In the past, most of the information concerning patent layout had focused too much on its importance while insufficient toward practical operations. This article will get rid of dazzling conceptions and descriptions and help the enterprises to proceed with patent layout from reality.
The significance of patents, or even spreading to that of all the intellectual property rights, is supposed to lie in monetization. Regardless of the novelty and inventiveness of the technology, if the related patents cannot be exchanged of consideration and make a profit, they have to be classified as the cost of the enterprise. Following this principle, a patent layout should be profit-oriented. Firstly, obtain more patent rights by patent mining；secondly, institute legal proceedings based on patent rights and increase the infringement compensation.
Patent mining
Patent mining means searching and collecting patentable technical solutions from the intellectual achievements of the enterprise, which is the foundation of IPR management. The essential point regarding patent mining is to screen solutions that are promising to be granted, and the basic requirements for granting patent rights are mainly directed to novelty and inventiveness.
Novelty means that, the technical solution was not from part of the prior art or has conflicting applications (prior applications previously filed and published later which will take away the novelty of the solution). The principle to determine novelty is the separate comparison: the target solution shall be compared separately with one single item, rather than with a combination of the several items of the prior art. The target solution could be primarily determined to possess novelty when it is different from the prior art under separate comparison and could be listed as the object of patent mining.
Inventiveness means that, as compared with the prior art, the solution has prominent substantive features and represents notable progress (invention and utility model shall meet different levels of inventiveness). When evaluating inventiveness, it is permissible to combine different technical contents, which is different from the principle of separate comparison with regards to novelty. The criterion for evaluating substantive features is to examine the obviousness: firstly, determine the closest prior art; secondly, determine the distinguishing features between the target solution and the closest prior art, and their technical effect; finally, determine whether or not the prior art has disclosed the distinguishing features and whether or not there exists such a technical motivation in the prior art to apply the said distinguishing features to the closest prior art.
For some easier and helpful approach, in the phase of patent mining, the IP manager of the enterprises may screen the intellectual achievements on the basis of the following several types of technical solution:
(1) A solution opening up a whole new field refers to a totally new technical solution which is unprecedented in the history of technology.
(2) A solution by combination refers to a new technical solution made by combing certain known technical solutions to solve a technical problem objectively existing in the prior art.
(3) A solution by selection refers to a solution made by selecting on purpose a smaller range of options or an individual option not mentioned in the prior art from a larger range of options disclosed.
(4) A solution by diversion refers to a solution of applying a known technology in one technical field to another different technical field.
(5) A solution of a new use of a known product refers to a solution of using a known product for a new purpose.
(6) A solution by changing elements, include solutions by changing relations, by replacing elements and by omitting elements, refers to a solution that is made by changing, substituting or omitting a certain element of a known product or process.
Patent Monetizing
The methods of patent monetizing mainly include monetary damage for patent infringement, fees for patent licensing and fees for patent assignment, and the payer shall be the entity of individual who needs to exploit or operate the patent. Anyhow, if the patentee keeps silent and just sleeps on the patent right, the entity using related technical solutions would not pay initiatively. Therefore, patent monetization occurs under the condition that the patentee has informed the suspected infringers that the solution exploited falls into the scope protected by granted patent rights, please reach a settlement via licensing or assignment, otherwise the patentee has the right to claim for infringement compensation via litigation.
Patent litigation is a signal of payment requested, through which the patentee (plaintiff) could obtain an advantageous position in the following negotiation or get compensation directly. For the technology that has made a considerable income for the enterprise, patent litigation could help to prohibit infringements and ensure the dominant edge in competition and the market share.
