Mining Ideas for Diamonds

The following sections are included:

• Disclaimer
• About the Authors
• Contents
• List of Figures
• List of Tables
• Preface

The following sections are included:

• Target Audience
  • Everyone has sparks of ideas
  • Our emphasis on quality — symbolized by “diamond”
  • Driving force behind this book — from invention selection to patent monetization
  • Ultimate purpose of the book — comparing China and US IP practices
• The Importance of IP
  • Definition of IP
  • Roles of IP — for US and Chinese companies
  • Investing in R&D and IP process/tools
  • Protect by establishing a strong IP portfolio
  • Leverage through strategic IP actions
• Definition of a World-Class Patent Portfolio
• Patenting an Idea Does Not Equate to the Right of Practicing it
• Benefits of a World-Class Patent Portfolio
• IP Strategy as a Cornerstone of Business Strategy
• How to Use This Book

The following sections are included:

• Intellectual Property Trend in US
• IP Trend in China
• Antitrust in China and US
• Patent Filing in China — The Changing Landscape
  • Chinese patent system versus US patent system
  • Chinese utility model versus US provisional application
  • Chinese utility model versus Chinese invention patent
  • Chinese utility model deserves attention — benefits and drawbacks
  • Chinese patent priority claiming versus US provisional application
  • Chinese design patent versus US design patent
  • Chinese government's subsidy to patent filings may end soon
  • Checklist — differences between Chinese and US patent systems
• Comparing China and US IP Court Systems
  • Differences in the court system — China's new IP Courts
  • China's patent litigation procedure — lack of discovery process
  • Difference in privileged communication and work product
  • IP infringement damage award
  • Checklist — differences between the court systems
• Patent Box — Lower Tax Rate for Income from Patented Products
• Differences in Patent Eligibility for Software and Business Methods
  • Comparison of IP law for software
  • Subject matter eligibility comparison
  • Information disclosure statement requirement comparison
  • Comparison of third-party pre-issuance submission process
• Potential Changes to Chinese Patent Law
  • Chinese administrative authority in protection of patent right
  • Choice of patent enforcement forum in China
  • Employment-related invention
  • Indirect infringement and ISP liability
  • SEP issue

The following sections are included:

• Driving Force for Inventions — The Important Role Played by Portfolio Managers
  • Cross-functional team collaborations are needed
  • Innovation-driven IP strategy versus IP-driven innovations
  • Jumping S-curve and finding the next disruptive technology
• How to Ensure High Patent Quality
  • Step A — selecting and approving invention disclosures
  • To do prior art search or not
  • Implement pre-screening process
  • Step B — drafting and prosecuting patent applications
• Recommended Methodology for Inventors and Patent Committee
  • To file or not to file?
  • Is the patent office likely to grant a patent?
  • Are others likely to use the invention significantly in the next 2-20 years?
  • Deciding whether to file a patent application
  • Inventor and patent review committee checklist
• Effective First-Filing Approach
  • The increasing international characteristics of IP
  • Factors in selecting first-filing country
  • Identification of inventor(s)
  • Determination of the location where invention was made
  • Optimization of first-filing decisions under various scenarios
  • Time period to obtain the permit of foreign filing license → file first in China provides an earlier filing date, but the disparity may be temporary
  • Time to grant → file first in US provides generally an earlier grant date
  • Quality of application drafting → file first in US generally yields a higher quality patent application drafting
  • Other considerations such as overall portfolio management
  • Conclusion — effective patent application first filing is important to your IP strategies
  • First filing strategy checklist
• Whether to Accelerate or Decelerate Your Patent Prosecution
  • Acceleration
  • Deceleration
  • Comparison checklist — acceleration or deceleration of patent prosecutions

The following sections are included:

• How to Ensure High Quality Drafting of Patent Applications
• Company or Patent Applicant Should Motivate Inventors to Invent and File High Quality Ideas
• Should You Use Outside Law Firm for Patent Drafting?
• Impact of the “First-to-File” System
  • Leveraging provisional patent application for US inventions
  • How to obtain an early priority date in China
  • Checklist in obtaining an early priority date
• Impact of US Supreme Court's Alice v. CLS Bank Decision
  • Observation from patent sales/purchase transaction perspective
  • Observation from patent filing perspective
• Strategy for Claim Drafting and Deployment
  • Overcoming subject matter patentability §101 issue in post “Alice” world
  • Try to follow USPTO provided case claims — use “Nature-Based Products” as an example
  • Try to follow USPTO provided case claims — abstract idea/software examples
• Drafting Strategy for Chinese Invention Patent
• Train Drafters to Draft with Final Objectives in Mind
  • Offensive IP actions typically include the following goals and benefits
  • Defensive IP actions typically include the following goals and benefits
  • Typical IP actions taken by various IP Owners
  • Drafting future blocking patents
  • Drafting high quality claims
• How to Improve an Existing Portfolio Through Strategic Patent Prosecution
  • Step (a): Review pending applications with early priority dates
  • Step (b): Determine whether specification covers target products
  • Step (c): Assess whether claims are well written
  • Step (d): Determine whether desire patent issuance soon
  • Step (e): Determine whether expedited patent issuance is required for non-optimized claims
  • Step (f): Assess whether spec will likely map onto future target product
  • Step (g): Decide whether need to slow-down patent prosecution
  • Action (1): Speed up patent prosecution via all possible paths
  • Action (2): Accelerate prosecution via TrackOne
  • Action (3): Re-write claims to optimize
  • Action (4): Add broad claims
  • Action (5): Decide whether to abandon the case
  • Action (6): Monitor prosecution progress carefully
• Protect Your Company's Trade Secrets and Resist the Habit of Drafting Overly Broad Claims

This book is not intended to cover all the patent basics. Instead, it is intended to share best practices and lessons learned to help you avoid or minimize potential pitfalls. As a result, we want to dedicate a chapter to key software patent-related issues due to the recent US court rulings and the overwhelming interest in this subject. This is a global issue which all main economic entities face…

The following sections are included:

• Intellectual Property
• Spotting “Disruptive Technologies” or “Disruptive Triggers” in Specific Industries
• Gap Analysis
• How to Define a High Value Patent
  • Defining a “high quality patent”
  • Total Cost of Avoidance (TCA) — technical/business question
  • Evidence of Use Quality (EoUQ) — legal/business question
• Patent Portfolio Valuation Methods
  • Existing patent valuation methodologies
  • What's missing in current patent valuation tools?
  • Patent value may change with product cycle
  • Our proposed methodology to evaluate patent intrinsic values
  • Estimation of the extrinsic value (market pricing) of a patent
• Build a World-Class IP Strategy — Portfolio Development Considerations
  • IP demand — cross-licensing, litigation/assertion, monetization
  • IP supplies — internal invention, external patent acquisition
  • High patent quality — a “must” for all IP demands today
  • Checklist for high quality patent development
• Recommendation on How to Build a High Value Portfolio
  • Build a strong IP strategy to fill in short-term and long-term gaps
  • TRIZ approach for breakthrough ideas or blocking patents
  • Producing high quality patent — patent attorney is critical
  • Action item checklist for high quality portfolio

The ultimate goal of getting a patent granted is to leverage it to accomplish your final business objectives. In the following, we'll walk through some commonly encountered legal and business issues when conducting various intellectual property (IP) transactions. Such transactions include patent acquisition, patent sales, patent cross-licensing, and technology transfer.

This chapter will dive deeper into various agreement terms and conditions. Again, this book is not intended to cover all basic foundations for each type of agreements. Instead, we'll only highlight areas that tend to be controversial or need special attention so that you are prepared when the issues come up during negotiations.

The following sections is included:

• Index