Suddenly, as if a spring breeze came overnight. Recently, various national ministries and commissions have issued policies to encourage the conversion of intellectual property rights, and the intellectual property community is delighted. However, when a patent technology to be transformed appears in front of you, do you know how to cherish the opportunity? How can you avoid selling a bale of goldweed for a cabbage price? The author is throwing in the towel and offering three tricks for colleagues to consider.
First move: Defining the appropriate scope of protection
The essence of the patent system is to exchange protection for disclosure. Writing patent claims is like "running a race to the bottom", and inventors are inclined to make the scope of protection of a patent as large as possible. However, the scope of protection and the probability of granting a patent are contradictory, and sometimes in order to increase the probability of granting a patent, the scope of protection has to be reduced, which will undoubtedly lead to the value of the patent being greatly reduced.
Although many technical personnel have the consciousness of patent protection, but not through the industrial chain upstream and downstream patent layout to expand the scope of patent protection, or limited to the investment of patent funds and shrinking, which may make an otherwise very promising technology is difficult to transform.
Multinational company A's N-type heat-resistant material has become very popular since its launch. A company then took advantage of the Chinese enterprises in the patent layout of the negligence, pre-emptive application of 16 T fiber downstream application patents, the use of patent layout means to successfully squeeze the domestic T fiber market space. A few years later, A company's global sales of N materials grew to $ 8.4 billion, while the global sales of inexpensive domestic T-fibers only 120 million, less than a fraction of each other.
In the above case, the inventor of T-fiber did not pay attention to the patent layout, only applied for the relevant patents in the field of production, not in the upstream and downstream of the industry chain to draw a protective circle, which caused an opportunity for competitors to take advantage of, making an excellent invention greatly reduced in value.
In addition to these two common problems, an inventor's transfer value of a patent can also be significantly affected if the following issues arise during the patent application process.
1. The scope of protection delimited by the content of the invention is too broad.The scope of protection is not as broad as it should be; too much protection leads to less stable patents and makes them vulnerable to invalidation by competitors. Patents whose rights are not sufficiently secure will be less valuable.
2. Inappropriate disclosure of inventions.Writing an application for an invention is not writing a thesis; it is sufficient that the technical details disclosed support the scope of protection of the claims. Disclosing technical details that are not relevant to the claims would result in excessively low infringement costs and high enforcement costs, thereby undermining the value of the patent.
3. Poor quality in the drafting of patent applications.The content of the claims determines the scope of protection of a patent, and if the claims are not supported by strong support due to poor patent drafting quality, the protection of the patent for the technical invention cannot be fully realized and the value of the patent will be reduced.
Step 2: Increase transfer value through patent portfolios
In order to overcome the problem of low value of a single patent, an experienced patent operation organization usually packages several technically related patents to form a "patent portfolio". The transfer value (or "fair market value") of the patent package is not simply adding up the transfer value of each patent in the package, but rather the effect of 1+1>2. The transaction price of a patent package covering the upstream and downstream of the industry chain is far more than one or two core patents.
In our long-term work on patent technology transfer, we have found that the factors that have the greatest impact on the transfer value of a single patent are not market prospects and technological advancement, but rather the "strength of patent protection" and "enforceability" indicators. If the score for these two indicators is zero, the transfer value base will be quite low, no matter how excellent the patented technology is.
In a medical device patent, the inventor strictly limits the size and shape of the device. The patent protection strength index is close to zero, although the patent also protects the method of use of the device, but in clinical use, even if there is infringement, the patentee can hardly prove or defend against the infringement, and the patent enforceability index is close to zero. The intended sale price was less than $50,000.
The indicators of strength of patent protection and enforceability are closely related to the quality of patent drafting. We often say that patent layout is to buy insurance for the inventor's technology. If the investment of patent protection is less than 100,000 yuan, the "insurance" is obviously not enough for the research results obtained by investing tens of millions of RMB in research and development.
If the value of the patented technology is diminished due to inadequate patent protection, this is unfortunate, but not irreparable, and a patent portfolio is one of the remedial measures. An experienced patent transfer agency will first analyze and sort out the points of invention of the core patent, and then select the appropriate peripheral patent to form a patent package with the original core patent to remedy the defects of the original patent. Alternatively, a new patent can be filed to remedy the defects in the drafting of the core patent. This is a very effective way to increase the transaction value of the patent.
Tactic 3: Actively expanding the application of technology
The industry usually uses a market return approach for valuing technologies. This is because the boundaries of the technology are not sufficiently clear to allow a mathematical model to accurately assess its value. The more applications a technology has, the more market revenues it will have, and the higher its relative value. Although the inventor is an expert in the field of the technology, the market application of a technology is not necessarily limited to the field of the technology, and unintentional transfer of patents is common. One of the most famous examples is Pfizer's flagship product, sildenafil (Viagra).
"Sildenafil was thought to have therapeutic efficacy in the treatment of cardiovascular disease due to its ability to inhibit the enzyme 5-phosphodiesterase. However, clinical studies showed that sildenafil's performance in the treatment of cardiovascular disease was disappointing and it could not grow into a successful therapeutic drug, and in 1991 the clinical study of sildenafil was officially a failure. However, the research unit responsible for the clinical trials unexpectedly found that the drug had the potential to improve patients' quality of sexual life. After validation studies, it received marketing approval from the FDA in 1998 and became a fist product with annual sales of more than $2 billion, and in 2014 another study reported that the inhibitory effect of sildenafil on phosphodiesterase 5-phosphate inhibitors could be used in the treatment of malaria.
In the above case, inhibition of phosphodiesterase 5-phosphate was the technical effect of the "sildenafil" invention. The application of this technical effect to the treatment of cardiovascular diseases failed, but further studies of the effect found additional market applications, e.g. for the treatment of sexual dysfunction, the treatment of diabetes, etc. The new market applications have brought the invention back to life and have created significant value.
This is why the Office of Technology Licensing (OTL) at Stanford University has become a global benchmark for patent technology transfer by working with inventors to explore the potential applications of their inventions, studying the technology and market risks, and developing a technology licensing program. Transfer strategies, etc. The value of the invention is further increased each time a new market application area is extended.
Through the above three tricks, the market transaction price of patents can be effectively increased. However, there is often a huge gap between the psychological price of the transferor and the transferee of patent technology. In order to bridge the gap and facilitate the transaction, the amount of work involved is unimaginably large. The following two methods can be used for reference by colleagues.
Type 1 Understanding the real needs of the buyer
Patent transfer is a buyer's market, where there are usually multiple routes to choose from in the same field of technology and the buyer has a relatively wide choice. If the assignee's goal is to obtain a financial return, the assignee will choose the technology that is less risky and more rewarding without giving much thought to the advanced nature of the patented technology. There may be buyers who have a "hard-on" for a particular patent at any price, but at least our colleagues at the patent bank have never encountered one.
Secondly, the transferee of patented technology is more likely to evaluate the transaction price from the perspective of financial return. A successful transfer of a patented technology entails the transferee assuming multiple risks, including technology risk, market risk and business risk. The higher the price of the transfer, the greater the technical risk borne by the transferee, which means that the transferee usually does not readily agree with the transferor's estimate of the value of the patented technology. Therefore, it is necessary to prepare a large amount of detailed information during the transaction, including, if possible, an infringement analysis report, background technology analysis report, etc., to help the transferee recognize the intrinsic value of the patent technology to be transferred.
Type II. Correcting the seller's psychological expectations
Many patent owners tend to confuse the asset value of patented technology with the transaction price, and have high expectations of the transaction price of a patent. Take a used car transaction as an example. Assuming that a used car has been driven for only one kilometer, its asset value should be very close to that of a new car, when in fact the market price of the used car will be much lower than the price of the new car.
According to modern economic theory, the price of an item is not determined by the seller, but by the buyer. For the seller of patented technology, no matter how large the initial investment in research and development is, it has become a silent cost. Patents are protected for only 20 years, during which time there is a risk of technological change, and the value of the patent will quickly dissipate if the benefits are not realized soon.
In addition, the transfer of patented technology is limited by the specific field of technology application, so the patentee has a narrow choice. The seller should be aware of the disadvantageous position of the seller in the negotiation, rationally consider the huge risk of the transferee, and reduce the transaction cost and time cost by designing a flexible and reasonable transfer route and transfer conditions to facilitate the transaction. At the same time, the seller should actively explore the application fields of the patented technology and find multiple potential transferees for the patented technology, so that the seller is in a more favorable position in the negotiation.
(Source: Shanghai Zhifali Intellectual Property Co., Ltd., Gu Xiaojun)
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