For Inventors and Patent Review Committees (Relating to Idea Generation)

Tao Zhang and Jingui Fang

Chapter 3 in Mining Ideas for Diamonds:Comparing China and US IP Practices from Invention Selection to Patent Monetization, 2016, pp 89-128 from World Scientific Publishing Co. Pte. Ltd.

Abstract: The following sections are included:Driving Force for Inventions — The Important Role Played by Portfolio ManagersCross-functional team collaborations are neededInnovation-driven IP strategy versus IP-driven innovationsJumping S-curve and finding the next disruptive technologyHow to Ensure High Patent QualityStep A — selecting and approving invention disclosuresTo do prior art search or notImplement pre-screening processStep B — drafting and prosecuting patent applicationsRecommended Methodology for Inventors and Patent CommitteeTo 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 applicationInventor and patent review committee checklistEffective First-Filing ApproachThe increasing international characteristics of IPFactors in selecting first-filing countryIdentification of inventor(s)Determination of the location where invention was madeOptimization of first-filing decisions under various scenariosTime period to obtain the permit of foreign filing license → file first in China provides an earlier filing date, but the disparity may be temporaryTime to grant → file first in US provides generally an earlier grant dateQuality of application drafting → file first in US generally yields a higher quality patent application draftingOther considerations such as overall portfolio managementConclusion — effective patent application first filing is important to your IP strategiesFirst filing strategy checklistWhether to Accelerate or Decelerate Your Patent ProsecutionAccelerationDecelerationComparison checklist — acceleration or deceleration of patent prosecutions

Keywords: Patent; Quality; Invention; US Patent Law; China Patent Law; Ideas; Innovation; Monetization; Licensing; Invention Disclosure; Software Patent; Function Claim; International Inventors (search for similar items in EconPapers)
JEL-codes: K20 M10 O34 (search for similar items in EconPapers)
Date: 2016
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