Patent Evaluation Criteria – Invention Disclosures

Criterion Score = 1 Score = 3 Score = 9

Economic Impact Low Medium High

Breadth of Concept Narrowly Applicable Multiple Applications Possible

Widely Applicable

Likelihood of Infringement Unlikely Possible Likely

Infringement Detectability Difficult Moderately Difficult Easy

Difficulty of Design Around Easy Moderately Difficult Difficult

Quality Metrics – Allowed/Issued PortfolioQuality Metric Description

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, email, 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

04/19/23

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

04/19/23

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