Highlight: The patent has been an integral part of modern companies. Bridge IP Commentary will give you the suggestion for the patent management and application under the laws and regulations of China.
Patent is the essential part of the intangible asset of modern companies for it may bring great profit with proper application. In recent years, it has brought to the attention of China companies the importance of the patent for the often encountered patent litigation and the Section 337 Investigation by U.S.A. Then how to manage and apply the patent? And the followings are our suggestions:
Generally, the development of the companies may experience the primary phase, the developing phase and the stable phase, with the point and strategy of the patent management varies among such phases.
I. The patent management on the primary phase
On this phase, the company has no or few patens for its startup, therefore the point of the patent management shall rely on:
a. To assign paten managers, who shall take charge in the patent application of the company, the patent training and the analysis and retrieval on the patent in cooperation with the R&D department.
b. Patent training, including the training for the employers and the management. The training for employers shall involve the basic knowledge of the patent, such as the practical use, novelty, creativity of the patent, patent mining and the retrieval & analysis on the patent documents. As to the training for the management, it shall emphasize on the significance and value of the patent for the management’s awareness of the patents’ importance to the company and its characteristics, such as the long-term investment and no short-term returns, thus the investment in the patent could be guaranteed with the highly value by the administrative members of the company.
c. Analysis and retrieval. The early R&D demands numerous analysis and retrieval for the determination of the research direction and the choice of the project. And the documents retrieved are sent to R&D department for reference accompanied with the analysis jointly made by the researchers.
d. Rewards and punishment policy. On this phase, there’s always no sense of patent application in the mind of company researchers, therefore the policy shall be drafted, such as rewards stage by stage in the patent application, to stimulate the active application.
e. State funding. Currently, there are local patent funding policies throughout China, which may save the expenses of the company. And such funding is prominent to the startups lacking in capital.
II. The patent management on the developing phase.
On this phase, the R&D of the company has been on track and its market is rapidly expanding basing on the positive exploration. For the quick development on the numbers of the patent applied due to the encouragement and rewards on the last phase, the point of the management of this phase shall be:
a. To complete the patent management department. On this phase, the amount of the patent application could be more than one thousand; therefore an individual and professional patent department is demanded, with the staffs of engineers familiar with the patent, senior technician, marketer and financial management.
The key work of the patent management department is to strictly examine each patent and reply the examination opinions, which is the basic work of the patent engineer. Meanwhile, it’s also necessary to cooperate with the R&D department in the patent planning and mining. In addition to this, the management dept. shall also make suggestions to the patent management policy and strategy to the company, even to the primary blueprint. Surely the patent litigation and license shall also be the duty of the patent management department.
b. The establishment of the patent examination system. The comprehensive system and procedure starting from the patent mining, drafting of the clarification book to the preparation of the patent document shall be established. The patent management dep. may set up its own assessment system and rules basing on the character of the industry, and to determine in which point and direction shall apply the patent for the best protection over the patent product, as well as how to draft the application document to maximize the protection. All of these need the research of the dep. researchers.
c. Using external resources. The operation cost of the company could be reduced and the efficiency of the company running could be improved relies on the external resources like agency, attorneys-at-law and other resources. For example, the work of patent drafting could entrust to a well reputed patent agency when there’re no adequate patent engineers, while the careful examination of the drafted ones shall also be conducted by the company engineers. The protection scope of the patent shall be decided by the patent engineer for the inventor only focuses on the technology and has little knowledge of the protectable scope. Also to invite experienced patent lawyers for the training to the company staffs are also suggested.
d. The establishment of the data pool. The pool shall include the patent data of the company and the information and statistics of the main patent bureaus (such as USA, EURO, China, PCT, and Japan or Korea if may possible). The data pool may facilitate the patent management and also help patent engineer to find which patent has been applied for the avoidance double application. As to the pool of the external data, it mainly shows the engineer the latest development of the technology and for the needs of retrieval.
e. Participation in the rule drafting. The company shall participate in the drafting of the company business standard, industry standard and state standard. And the attendance to the conferences or meetings of the standard organizations could make the company keep pace with the industry trends and the development direction instead of working behind the closed door.
f. Reasonable evaluation index. The evaluation index is suggested to make for departments, such as the patent application amounts for the R&D dep., the amount of the valuable patent chosen for the patent management dept., and the amount of the information of the rivals and opponents for the market dept. Thus the company’s sense of the patent could be rapidly promoted basing on these indexes.
III. The patent management on the maturity phase.
On this phase, the development and the market of the company has been mature and enjoys a smooth development, and the application of the patent is tending to be stable, or even decreasing. For this stage, the patent management of the company shall focus on:
a. The completion on the patent strategy. The strategy shall be made on the feature of the company and the market strategy. For details, it shall include the annual mount of the patent to apply, the global patent strategic arrangement, the application and planning arrangement of the products in various industries, and the competition tactics to the rivals, etc. In consideration of the various features of the products, the company shall choose the most suitable patent strategy basing on its own development condition and market with comprehensive thinking.
b. Clear responsibility for the patent management dept. It’s suggested to appoint specialist taking the patent application, reply to the examination, patent mining and the planning, also it’s better to assign professionals being responsible for the patent with the common technology features, thus the smooth run of the patent work could be guaranteed. Furthermore, for the patent litigation and license or other events, it would be best if there could form a project team or special department.
c. More attention on global patent arrangement. For China companies, they are usually practiced in the domestic application and less experienced in the application overseas. For this reason, it’s recommended to make the arrangement according to the situation of the company, and to avoid blind follow of the “trend” to apply amounts of useless patent or abandon the application.
d. To improve the competition environment. On this phase, the company may make the offer of cross-license to its rivals depending on its abundant patent for the avoidance of any possible litigation. Also the company could initiate the lawsuits against any unfair competitor who tags a unreasonable low price for the competition advantage so that a better market could be developed.
e. Information superstition and collection. The company is suggested to actively supervise the R&D of the competitors and the market situation as well as to collect information related, which could make the company fully prepared for any suit from the competitors or to sue against them to hinder their development. Also the information collected is helpful to the adjustment on the development strategy of the company.
f. The patent map. The map is essential to the company, which shall not only include the basic information like application number, application name, licensing date, fee payment, licensing state, but also the technical feature of the patent, development trend, relationship to the products involved and the information of the rivals or their sales condition. In a word, the map is beneficial to the patent management and application of the company.
g. To maximize the patent value. To the company, the patent is kind of intangible asset with its own value, and the application and maintenance of it demands huge expenses,. Therefore, the company will only be driven to apply and maintain the patent when it could produce benefit to the company. The value of the patent to the company shall show in the patent licensing, patent trading, patent lawsuit, patent financing and patent investment.
All the above are the writer’s opinion on the patent management of different phases of the company and for the company’s reference. Meanwhile, it has come to our notice that the management strategy shall be made on along with the strategy of sales and development of the company, and shall be improved from time to time, while the simple imitation of others is absolutely un-suggested.
Author: Mr. Gao Shaoyi
Attorney-at-law of DeBund and Bridge IP Commentary;
Former patent engineer of Huawei.
About the Founder & Editor-in-Chief of Bridge IP Commentary:
Mr. You Yunting
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.
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