Innovative products are launched in market by following a strong technology evaluation process after patent filing. Companies looking to develop or adopt new technology face many challenges, including creating a strong patent portfolio. Some of them are technical, and all of them can be found in organizations with varying business models, revenue streams and infrastructure, which can restrict the patent filing process. Developing and adopting new technology is a complex process that requires understanding the technology, reviewing the business case and aligning organizations to support creation of intellectual assets by way of patents.
The main step in the technology transfer process documents the success or failure of the technology to be adopted. Once the technology or a patentable invention is disclosed to the company, it is evaluated based on the invention disclosure document submitted. Evaluation is broadly based on the invention’s patentability, marketability, and future commercial viability. Evaluation thus determines the value of the invention. A company usually formulate their specific criteria, which provides a basis for measuring the potential success or failure of the technology. Based on the criteria, the company board may ask specific questions about the invention and its use case.
Assessment based on marketability is an analysis of the market and customer base based on the information provided in the invention disclosure. The idea is to evaluate the need for technology in the market or company. If the technology has been around for a while, the analysis may include an assessment of the invention in comparison with similar or substitute technologies and the effect of those existing technology on the marketability of the invention. Existing technologies of similar features are taken as a base to evaluate the commercial success of the invention and the valuation of the invention as an asset.
In contrast, when the invention is new to the market, it gives the company a chance to pioneer the use of new technology and a competitive edge, which also results from the novel and unique nature of the corresponding patent application. However, since the technology is new to the market, the company might dig deep to evaluate it based on critical criteria including but not limited to adoption cost, future risks, capabilities, its usability in connection with customers, its advantage over existing technology, the problem the technology will solve and like.
Patentability-based assessment digs into prior art to see if similar technology exists in patent literature. If the invention disclosure includes prior art (including published patent applications, scientific journals, and other publicly available documents), the evaluation will include an analysis of such patents. The evaluation also includes prior disclosure of that patent and its effect on obtaining patent protection. Publication of invention prior to patent would mean that it is available to the public by means of written or visual display. This may hamper patentability but may not mean that technology won’t be successfully commercialized.
By evaluating the patentability and IP of technology, primarily through an extensive patent search followed by drafting a strong patent application, the company decides the income or type of royalty the inventor would receive. Since the end game is to commercialize the invention, the patent owner or inventor will receive payment for the use of his or her invention in the market. It consequently leads to back-and-forth negotiations between the inventor and the company to reach a middle path. The financial negotiations for intellectual property and patent licensing require expertise and understanding in the evaluation domain and knowledge in license negotiations. And since intellectual property evaluation is a different domain for the company yet a crucial component in the technology transfer process, an IP attorney is engaged on both parties’ sides.
The third step in the technology transfer process is the patent filing procedure, wherein a patent application is filed before disclosing the invention to the public. Upon drafting the patent, one must consider the technology’s commercial potential. Filing a patent is to obtain exclusive rights over the invention and eliminate possible use or third-party commercialization. Since the technology is transferred to another entity, IP is one of the vital that results in successful commercialization.
A patent application is a request currently pending at the patent office for the issuance of a patent for an invention detailed in the patent specification and a set of one or more claims expressed in a formal document, including all relevant paperwork and correspondence. It is the culmination of the paper and its administrative and legal handling within the patent office’s framework. A patent application is meant to be written for a person with ordinary skill in the technical field where the invention falls within. Because many intricate elements of a given machine are not required for the invention that is incorporated into it, an application need not be a production blueprint. Once the Patent Office receives the patent application, oath, and fee, it is thoroughly examined. Once the application crosses all hurdles of examination and opposition, the patent is issued.
An applicant may file a provisional patent and subsequently file a non-provisional patent during the window of one year. A “provisional” patent application is another type of place-holder application that might set an early filing date for an invention. Unless a formal utility patent application is filed within one year of the date the provisional application was filed, a provisional application is not subject to examination and will not result in a patent. A provisional patent application allows the applicant to claim “patent pending” on the invention for its 12-month life with fewer formalities and often reduced initial costs. Many different factors can lead to the filing of a provisional application. These explanations frequently centre on time constraints for file preparation, expense, the unpredictability of an invention’s value, and the need for an early filing date.
Once the application is submitted, no substantive information can be added. However, the specific method by which the information is expressed or the focus can be adjusted for the claimed scope of protection. Therefore, it’s crucial to provide a thorough disclosure right away. While filing a patent application for technology or technological invention, one should always look for prior art that may utilize the same method for operation. Since there might be a possibility that the invention is deemed similar to other prior art, the focus should be on such essential embodiments of the invention which would need patent protection. In short, one should need to come up with patent claims for those embodiments which have commercial potential. Another consideration while drafting a patent should be that the invention must be technological and solve a technical problem. The subject matter of the technology might be any process, method, product or further advancement in existing technology. All should carry a feature of industrial applicability.
In addition to the crucial points stated here relating to technology evaluation process, the future business models based on technology evaluation process and innovations may regularly need assistance for Patent Searching. The results of a patent search report for technology evaluation process can assist in determining if Patent Drafting for technology evaluation process is the next step along with USPTO Patent Filing. In case of blockchain based business models adapted from technology evaluation process, utility token Legal Opinion Letters may also be needed for technology evaluation process, along with a set of applicable technology evaluation process contracts and technology transfer and technology licensing agreements.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements. Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
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