Patent Evaluation Criteria – Invention Disclosures

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Patent Evaluation Criteria Invention Disclosures. Quality Metrics Allowed/Issued Portfolio. Quality Perspectives. Differences between offices and applicants? Different business models have different IP models flexibility required Need for speed? Not at expense of quality - PowerPoint PPT Presentation


<ul><li><p>Patent Evaluation Criteria Invention Disclosures</p><p>CriterionScore = 1Score = 3Score = 9Economic ImpactLowMediumHighBreadth of ConceptNarrowly ApplicableMultiple Applications PossibleWidely ApplicableLikelihood of InfringementUnlikelyPossibleLikelyInfringement DetectabilityDifficultModerately DifficultEasyDifficulty of Design AroundEasyModerately DifficultDifficult</p></li><li><p> Quality Metrics Allowed/Issued Portfolio</p><p>Quality MetricDescriptionQM1: Reads on a competitor productPatents that cover another companys 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 productPatents 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 actionPatents 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 SpacePatents 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 CompetitorPatents 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 prosecutionQM6: Design-Around ReviewPatents subject to design-around reviewsQM7: Second Attorney Claim ReviewFor filings that have been the subject of claims review by an attorney other than the drafting attorney</p><p>* Presenter and Event*</p><p>Quality PerspectivesDifferences between offices and applicants?Different business models have different IP models flexibility requiredNeed for speed? Not at expense of qualityMust be fair (nationalities, technical areas)Need quality in litigation system</p><p>* Presenter and Event*</p><p>Recent changesPositives and NegativesAmerica Invents Act greater certainty, harmonisation and feesUSPTO interview practice, EPO oral proceedingsCase law divergence Brustle, Prometheus EU litigation proposals bad for business, good for NPEsDecreasing flexibilityIncreasingly hostile political environment (green, healthcare)IP theft increasing </p></li></ul>