Patent Evaluation Criteria – Invention Disclosures CriterionScore = 1Score = 3Score = 9 Economic ImpactLowMediumHigh Breadth of ConceptNarrowly Applicable.

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Presentation transcript:

Patent Evaluation Criteria – Invention Disclosures CriterionScore = 1Score = 3Score = 9 Economic ImpactLowMediumHigh Breadth of ConceptNarrowly Applicable Multiple Applications Possible Widely Applicable Likelihood of InfringementUnlikelyPossibleLikely Infringement DetectabilityDifficultModerately DifficultEasy Difficulty of Design AroundEasyModerately DifficultDifficult

Quality Metrics – Allowed/Issued Portfolio Quality MetricDescription QM1: Reads on a competitor product Patents that cover another company’s competitive products (e.g., demonstrated by claim chart) and/or are specifically identified in an agreement (e.g., licensed, covenant) with the competitor. QM2: Significantly covers a GE product Patents that significantly cover a GE product (e.g., composition of matter) or an important feature of a product (that provides GE with a clear marketing advantage). The product should be approved for sale and the patent should provide a significant barrier to competitor entry. QM3: Subject to external action Patents or applications where there has been some abnormal patent activity, (e.g., oppositions, interferences, broadening reissues, reexaminations, litigation) initiated by another company. Also included are patents where we have direct evidence that another company changed its product/plans because of our patent (e.g., letter, , etc. where the other company acknowledges such impact). QM4: Clear Space Patents covering strategic brand new spaces (e.g., IBs, Convergence Projects, etc.) based on specifically identifiable business information and/or roadmap that GE and the industry is going in this direction. QM5: Applications Designed to Target a Competitor Patents filed or modified in prosecution to target a competitor based on product tear-down or other competitive analysis – clearly indicate whether filed, or modified during prosecution QM6: Design-Around Review Patents subject to design-around reviews QM7: Second Attorney Claim Review For filings that have been the subject of claims review by an attorney other than the drafting attorney

3 Presenter and Event 23/09/2015 Quality Perspectives Differences between offices and applicants? Different business models have different IP models – flexibility required Need for speed? Not at expense of quality Must be fair (nationalities, technical areas) Need quality in litigation system

4 Presenter and Event 23/09/2015 Recent changes Positives and Negatives America Invents Act – greater certainty, harmonisation and fees USPTO interview practice, EPO oral proceedings Case law divergence – Brustle, Prometheus EU litigation proposals – bad for business, good for NPEs Decreasing flexibility Increasingly hostile political environment (green, healthcare) IP theft increasing