Author: Zhou Yanpeng Time: 14.03.2018
For a long time, various risks and damages caused by human hazards and natural disasters have developed various professional risk control mechanisms from the perspective of business management, which are widely integrated into their actual operations such as organization, personnel, facilities, information, processes, systems, relationships, insurance, etc. Therefore, in addition to force majeure and human negligence, most of them can control their corresponding human and natural risks, and also play a considerable management role.
However, it is difficult for various sectors to develop suitable management mechanisms and supporting measures for the control of “patent risks” like the control of human and natural risks. Not only are they often hit by landmines or booby traps, but they are also frequently sued for patent infringement, and they are still helpless to this day.
Reasons for the lack of patent risk management mechanism
Although various sectors have invested countless resources in patent search, patent maps, patent applications, and patent maintenance over the long term, one of the key factors is that the Patent Risk Management (PRM) mechanism has not been fully developed, nor has it been recognized that it can be established using professional methods and tools, due to the frequent lawsuits for patent infringement, import bans, seizures, and huge claims of royalties by enterprises in Europe and America, as well as the lack of technological autonomy faced by many industries in the international market, and even the competitive threats and transformation bottlenecks faced by many industries.
The patent risk management mechanism has not been established and implemented at the operational level in various fields, mainly due to the following reasons:
1. Subjectively, there are mostly lucky people who believe that they will not be so “bad”. They may encounter patent infringement lawsuits or be pursued for huge amounts of royalties, or they may just be making up stories and playing with the number of patent applications that do not have high quality and advantages on the surface;
2. They have no understanding of the full and necessary elements of patents, as well as their various risks, and are even unaware of them due to insufficient professional information provided. Therefore, they are unwilling to invest in understanding the full picture of patent competition elements, or believe that their industry nature is unrelated or not related to intellectual property, or they do not understand the positive role of intellectual property in the innovation and design of their business models.
3. Patent practitioners do not possess the necessary height, breadth, and depth for their organizational operations, making it difficult for them to have professional knowledge, experience, methods, and tools for cross-border patent risk management, and continue to engage in existing “patent engineering” projects and businesses;
4. Professional service organizations and their functions are usually to handle applications, maintenance, and litigation related to individual cases, but they do not have corresponding and appropriate knowledge, skills, and experience in patent risk management, and the development of patent risk management mechanisms is also unrelated to their organizational business projects;
5. The professional methods, tools, and systems required for the development of patent risk management mechanisms are not only rare in the world with corresponding knowledge, skills, and experience, but should also be rare and important resources globally.
This mechanism must withstand the test of US patent litigation
The biggest difference between the patent risk management mechanism and the human and natural risk control mechanism should mainly be the document data of the US patent infringement litigation discovery program (Discovery) and electronic discovery program (e-discovery), as well as the electronic file production (Production of Documents) and interactive inquiry (Interrogatory), Because the discovery process will touch upon the “actions” of litigants and related parties, as well as the “evidence” required by law, it can also be understood as the personnel, time, and objects involved by the parties, leaving almost all traces and records that need to be presented and rigorously examined and argued by themselves and their lawyers. It is almost impossible to hide, destroy, or annihilate them without any escape, especially in the modern world of information and communication and the internet. All “walked” traces and records can be easily “grabbed” or “caught in a whole string” like a meat dumpling, and then quickly restored to the truth by experts and professionals.
However, in the development of technology and products, from project planning, conceptual ideation, research and development design, experimental verification, production and manufacturing, sample certification to marketing and sales, almost all levels of patent projects and their information are touched upon and processed. So far, these operations are carried out in an unprotected information and communication network environment, and are almost always exposed to high legal risks. Most of them cannot withstand the test of future patent infringement lawsuits, whether they are plaintiffs or defendants.
Therefore, the development and establishment of patent risk management mechanisms should not only take into account the requirements of patent infringement litigation procedures and their operations in some countries, but also control the patent search system and subsequent patent searches, as well as the application systems and file storage and transmission networks used for analysis operations, which must be established in facilities and environments strictly protected by national laws.
Key factors for the development and establishment of professional mechanisms
For all sectors of industry, academia, and research, it is necessary to develop and establish an international level professional mechanism for patent risk management. It can not only play a risk prevention role of “spending a small amount of money to clear mines”, but also avoid the negative and huge costs of “spending a lot of money on wars”. Based on this, the key factors for the development and establishment of patent risk management mechanisms mainly include:
1. Have a full understanding and determined attitude towards the operation of organizations in the knowledge economy era, as well as their intangible intellectual property business models;
2. Personal participation in various patent projects and their operations should be sufficient, and in the initial stage, it is not advisable to only appear or talk about them;
3. It is necessary to integrate cross disciplinary professional practitioners and introduce useful and effective methods and tools;
4. Management and execution personnel must overcome the shortcomings and limitations of traditional patent searches and patent maps;
5. Patent information must be objectively presented in various patent information reports based on product technology structure and industrial structure;
6. Patent information must be integrated with industry dynamic information, especially information on research and development, investment, mergers and acquisitions, infringement litigation, authorized technology transfer, industry alliances, technical standards, patent alliances, etc. in major countries around the world;
7. Patent information must be obtained from competitor operating entities (OEs) or practicing entities; The organizational structure, business models, intellectual property, and operational operations of PEs, Non Practicing Entities (NPEs), and Patent Trolls, particularly the indicative Patent Portfolios and patent activities;
8. The interpretation and analysis of various reports on patent information must be carried out by professionals with professional knowledge, skills, and experience, rather than relying solely on non professional work and output from practitioners who have not received true professional training and development;
9. The patent risk management mechanism should cover various aspects such as organization, processes, forms, systems, operations, pointers, assessments, etc., and should comply with the requirements of organizational process operation and strict protection of major national laws.
Effective supporting measures
In addition to developing and establishing a ‘patent risk management mechanism’, the specific operational supporting measures for the patent risk management mechanism mainly include:
1. Utilize the Advanced Industrialized Patent System (AIPS) to continuously establish major national patent databases related to one’s own organizational operations based on product technology structure;
2. Based on the established patent database and industry dynamic information, select specific patents and their families that have relevance and risk to your organization;
3. For specific patents with correlation and risk, define their patent rights scope (Claim Construction) in the industrial patent analysis system, and then conduct patent infringement comparison (Claim Chart), or analyze whether they have invalidity or unenforceability;
4. If a specific patent can be claimed to be invalid or unenforceable, and the product technology is covered, then the patent administrative procedures of various countries should be utilized to make claims, such as filing an Ex Parte Reexamination or Inter Partes Reexamination with the United States Patent and Trademark Office (USPTO) as much as possible before the patent owner files a lawsuit, especially the 2011 US Invention Act, which added a post grant review procedure that can be filed by a third party within 9 months of patent approval, an Inter Partes Review procedure that can be filed after 9 months of patent approval, or filing an invalidation application with the mainland intellectual property office, or filing an invalidation application with Taiwan. The Intellectual Property Office has filed a patent application, and the administrative procedure fees are much lower than the huge expenditure of lawyer fees for infringement litigation procedures;
If a specific patent can be avoided without claiming invalidity or unenforceability, design around can be carried out with the assistance of professionals;
6. If a specific patent is not easily claimed to be invalid or unenforceable, nor is it easy to avoid design, and it is necessary to implement the specific patent, then it may be considered to purchase the patent or obtain authorization through various means, including low-cost utilization of patents of non operating entities;
If there is no budget to purchase the patent or obtain authorization, the supply chain, logistics, or operations can be adjusted
