The value of a patent is inextricably linked to the presence of both a patent attorney who is intimately familiar with the patent system and a technical solution with implementation prospects rooted in the complex workings of a technical expert. It is important to maintain smooth communication between the patent attorney and the technical expert, as this will ensure that the innovative technology can be mined for optimal value. It is also crucial to carefully manage the large number of technical solutions that are accumulated in daily development.

The technical solutions or designs embodied in a patent are born of the innovations of technical experts. Patent attorneys should collaborate with these experts to implement effective patent mining techniques, including by helping them to:

  • devise technological innovations;
  • analyse, organise and screen innovations in both technical and legal terms; and
  • identify the technologically innovative ideas and solutions that are eligible for patent protection.

Patent docketing with technical experts

Patent attorneys should work closely with technical experts to foster patent-eligible innovations throughout the enterprise’s R&D process. Possible scenarios for such cooperation are outlined in Figure 1.

Figure 1. Scenarios for patent docketing with technical experts

Technical experts with little or no previous experience of the patent system should be aware that a technical solution may be ineligible for patent protection where it:

  • lacks a means of optimised implementation;
  • involves only minor changes based on the existing technology; or
  • has a technical effect that is not ideal or has limited applicability.

Patent attorneys should respond swiftly to novice technical experts’ questions, using vivid examples of patentable technological developments which can assist experts in ultimately converting their technical solutions into valuable patents.

For interdisciplinary and experienced technical experts who are well acquainted with the patent system, patent attorneys can stimulate their creative thinking and assist them in clearly communicating technical information. Experts usually conduct in-depth research in their respective fields, whereas patent attorneys deal with a wide range of patented technologies and thus think more laterally; combining such longitudinal and lateral thinking often yields innovative ideas. Moreover, financial support is often necessary during the lengthy patent application and examination process. In this regard, patent attorneys can assist interdisciplinary and experienced technical experts in protecting key technology and products at the R&D stage and extending the applicability of the relevant technical solution to other fields.

Technical experts are the source of innovation. Good docketing between patent attorneys and technical experts therefore ensures a steady flow and clarity of ideas, which in turn facilitates the extraction of maximum patent value.

Patent mining throughout the technological development process

Figure 2. Patent mining process

The patent mining process comprises the following stages:

  • comprehensively communicating with technical experts regarding the technical direction and planning of the process;
  • organising various technical directions;
  • patent layout;
  • tracking the R&D process and extracting innovative solutions over time;
  • drafting documents which elucidate the extracted innovative solutions; and
  • checking for any missing innovative solutions and filling the gaps accordingly.

The communication and organisation of technical contents in the first two stages are based on the patent attorney’s sufficient technical understanding; while the documentation of innovative solutions in stages three to five is based on his or her knowledge of the patent system. In addition to technical experts’ knowledge of the relevant technology, the search tool of patent documentation databases can be used to determine whether a technical solution is innovative. Particular care should be given to the collaboration with technical experts in tracking the development progress and extracting innovative solutions (stage four). In particular, novice technical experts can gain an intuitive preliminary understanding of the patent application on the basis of both its technical R&D direction and the easy-to-operate template for technical disclosure that is provided. Meanwhile, interdisciplinary and experienced technical experts can check for novelty and pinpoint specific technical elements or solutions which are conducive to ensuring success at the patent examination stage.

Technological mining should remain a focus throughout the patent development process. Experts’ R&D work is a process of cumulative advancement, with the possibility of technical innovations being discovered at any time. If the technology mining falls behind research and development, it is possible that only the elements that are directly related to research and development will be mined, while any unrecorded parts may be lost. As a remedial measure, a guide for technical issues can be used to help experts to recall and retrieve innovative solutions. However, it is more advisable to carefully and comprehensively undertake patent mining throughout the R&D process.

In addition, technical experts can discover innovative solutions purely by accident and since their primary focus is conducting research and development, patent mining considerations may take secondary importance in the course of their work, causing some innovations to be missed in the process. Patent attorneys should encourage technical experts to record the ideas used to solve problems as soon as they arise, which can subsequently be used as a basis to develop further implementation measures and technical improvements without interrupting ongoing R&D work.

Figure 3. Documents outlining overall progress

Team

Brief introduction

to the technical

solution

Independent

innovation

Reference

Potential

intellectual property

Summary of the processing procedure (see documents on the course of innovative solutions)

Team 1

1. Magnifying

Yes

No

Two inventions

Disclosure completed

2. Signal source

No

Yes/Huawei

-

Primary examination/re-examination

3. Matching circuit

 

 

 

Delivered for drafting

In total: eight invention patents, five utility model patents, two design patents, one set of trademark applications, two software copyright registrations

Team 2

1.

-

-

-

-

2.

-

-

-

-

Patent mining documents

Products and R&D projects typically embody the hard work of many technical experts and incorporate many technical solutions. However, a patent cannot be acquired without a degree of finessing. Patent attorneys must manage a number of innovative solutions to maximise the protection of the enterprise’s IP rights. Common situations such as R&D staff changes may pose significant challenges in this regard; therefore, it is recommended that the following documents be drafted during the patent mining process:

  • documents outlining the overall progress of patent mining;
  • documents detailing the course of innovative solutions; and
  • documents disclosing the results of the appraisal of the innovative solutions.

As seen in Figure 3, documents outlining the overall progress of patent mining are used to summarise the progress of each innovative solution (eg, at the technical disclosure, patent review and patent drafting stages). These documents can be subdivided and categorised for easy reference according to the relevant technical parts, R&D staff and technical fields. They can also be timely updated throughout the patent mining process. As to the technical solutions that fail to pass the appraisal, the reasons for rejection can be noted in order to guide subsequent patent mining.

Figure 4. Records of the cour

March 1 2016

The disclosure of the technical solutions of Expert X was received; innovative ideas

A, B and C were determined... See Annex 1.

March 5 2016

The IP commissioner of the primary examination performed a search to determine innovative ideas B, C1, C2 and D... and supplemented technical effects. See Annex 2.

March 10 2016

Technical Expert X confirmed the modification and added

certain embodiments. See Annex 3.

March 15 2016

The review group approved the innovation and

delivered it for drafting.

Documents detailing the course of innovative solutions (see Figure 4) are used to record all of the technical contents contained in the patent mining process and deliberations on the patent application, including:

  • the technical information originally provided by technical experts;
  • extensions of and supplements to the technical solutions;
  • technical experts’ opinions on the importance and novelty of the solution;
  • the basis on which the patent attorney will judge novelty;
  • proposed patent application strategies; and
  • a summary of key points of the innovation.

These documents essentially record the raw materials necessary for the development of technologies and IP protection. They can help to determine the focus of the innovation and the impact of the product in question during the patent application process and the substantive examination phase. Accordingly, examination of patent applications and IP rights maintenance can be undertaken without the participation of technical experts.

Documents disclosing the results of the appraisal of the innovative solutions typically consist of three parts:

  • a summary of the opinions of technical experts, the applicable IP protection programme and infringement risks;
  • a summary of the review programme pursuant to the patent attorney’s evaluation, including information on R&D references, retrieval, IP protection and advised risk control strategies; and
  • a record of the technical contents of the relevant innovative solutions, including technical issues and results and analysis of technical essentials and possible extensions.

Comprehensive documentation facilitates effective management of the enterprise’s intellectual property and provides support for subsequent patent applications.

Other considerations

Extracting maximum value from patents requires not only the concerted efforts of technical experts and patent attorneys, but also the sustained support of the enterprise as a whole and its corporate culture. Such a favourable environment can promote lasting enthusiasm for innovation and maintain the initiative of technical experts. For example, experts with innovative solutions can be rewarded at both the time of filing the patent application and when the patent is granted.

Enterprises should also consider the different types of patent application that may be filed. Invention patents are granted for high-level innovations, but applications typically take three to five years to proceed to grant. Nowadays, in light of the rapid development of technology, a utility model patent may be preferable if the relevant technical solution could potentially be replaced soon by newer technology. In addition, design right protection has developed significantly of late, especially for innovative solutions involving end-user products. In practice, innovative ideas can be protected through the full range of IP rights, maintaining the enterprise’s core competitive edge in the process.

Patent mining is essential to extracting maximum value from innovations and patent attorneys’ intensive cultivation of and close collaboration with technical experts are integral to this process. Enterprises should therefore continuously support their patent mining programmes in line with their specific requirements.

Liu, Shen & Associates

10th Floor Hanhai Plaza (1+1 Plaza)

10 Caihefang Road, Haidian District

Beijing 100080

China

Tel +86 10 6268 1616

Fax +86 10 6268 1818

Web www.liu-shen.com

Yinying Zhang

Partner

yyzhang@liu-shen.com

Yinying Zhang joined Liu, Shen & Associates in 2005, qualifying as a patent attorney in 2006 and as an attorney at law in 2009. She specialises in patent prosecution, patent application drafting, re-examination, patent analysis and freedom to operate, with a focus on telecommunications, electrical circuits, automatic controls, electrical engineering, computer science and the Internet.While at the firm, Ms Zhang has participated in patent invalidations, pre-litigation analysis, administrative litigation and civil litigation.

Ms Zhang worked as a researcher at Beijing Fujitsu Research & Development Centre before joining Liu, Shen & Associates. She received a master’s degree in telecommunications from Peking University in 2002.

Qing Ge

Partner

qingge@liu-shen.com

Qing Ge is a partner of Liu, Shen & Associates. She qualified as an attorney at law in 1999 and as a patent attorney in 2000. She also received professional training from a UK law firm. Ms Ge has extensive experience in patent prosecution, invalidation and litigation. She has prosecuted numerous patents to issuance in China, in fields including electro-mechanical devices, automobiles, medical devices and electrical appliances. She has handled numerous invalidation cases involving invention patents, design patents and utility models. She has also represented many clients in enforcing or defending their IP rights in patent infringement litigation.

Liqing Wan

Partner

lqwan@liu-shen.com

Liqing Wan has practised in IP affairs at Liu, Shen & Associates since 2007. She provides IP-related services such as patent drafting, patent prosecution, litigation, patent analysis, patent searches, patent navigation, patent monetisation, legal counselling and IP strategy, and has been recognised by various award programmes for patent attorneys. She has also been invited as an honoured guest to attend clients’ production release conferences. Ms Wan is dedicated to providing a wide range of high-quality IP services. She handles IP matters in the fields of electronics and computer science, internet technology, signal and information processing, image processing, semiconductor technology, telecommunications and automation, among others.

This article first appeared in IAM. For further information please visit www.IAM-media.com.