In an era driven by innovation, enterprises and research institutions are actively engaging in the wave of commercialization of scientific and technological achievements, and how to effectively promote such commercialization has become a focal issue. In this critical process, the management and protection of intellectual property rights play an essential role in the commercialization of scientific and technological achievements. They not only help innovation entities gain a comprehensive understanding of the patent landscape in their respective industries, but also safeguard the smooth commercialization of scientific and technological achievements, ensuring that their value is preserved and realized.
Among these, patent search and analysis is one of the key steps in formulating R&D strategies. Focusing on the screening of existing patents held by universities and research institutions, the improvement of pre-filing patent evaluation, and key considerations in patent valuation, we have selected the following three popular Q&As from Chapter 6: Intellectual Property Issues in the Commercialization of Scientific and Technological Achievements of the Practical Q&A Handbook on Cutting-edge Issues in Intellectual Property, jointly compiled with Wolters Kluwer CCH, Lusheng’s strategic partner Rouse International, to share with you.
Selected Practical Q&As
Q1
[Existing Patents] How to screen valuable existing patents of universities and research institutions?
In the Special Action Plan for Patent Commercialization and Utilization (2023–2025) issued by the General Office of the State Council and the Work Plan for Activating Existing Patents of Universities and Research Institutions jointly issued by the China National Intellectual Property Administration and other authorities, “sorting out and activating existing patents of universities and research institutions” is listed as the primary task, with clear requirements put forward to incentivize patent commercialization by universities and research institutions and to improve the patent industrialization rate.
At the implementation level, universities and research institutions organize the screening of patents with potential market value and uniformly register and file them online through the national intellectual property operation service platform system, namely the National Patent Navigation Comprehensive Service Platform (www.patentnavi.org.cn). Universities and research institutions may also conduct their own internal inventory through their proprietary platforms and upload the resulting data to the comprehensive service platform in a standardized format.
How to screen valuable existing patents of universities and research institutions is a crucial part of this process.
First, the primary task of the screening work is to clarify and refine the screening criteria and to build a comprehensive evaluation framework covering technology maturity, alignment with market demand, economic growth potential, and feasibility of industrialization. Specifically, attention should be focused on patent projects that are technologically leading, receive positive market responses, are expected to make significant economic contributions, and are easy to industrialize. Such patents often carry higher commercialization value and social benefits.
Second, in order to fully and accurately grasp the actual status of existing patents, it is necessary to make full use of authoritative data resources such as the National Patent Navigation Comprehensive Service Platform, and to leverage big data and artificial intelligence technologies to conduct in-depth mining and intelligent analysis of patent information. This process not only helps to quickly identify potential high-value patent candidates, but also provides solid data support for subsequent evaluation and commercialization work.
Furthermore, the review stage is a key step in the screening process. Universities and research institutions should establish a multi-level review system that includes self-evaluation by inventors, internal review by the institution, and external expert review, so as to ensure that the screening results are aligned with technological development trends and closely match market demand, thereby enhancing the scientific rigor and authority of the screening results.
Finally, for the high-value patents identified through screening, detailed commercialization plans should be formulated, specifying the commercialization pathways, target markets, and timelines. At the same time, attention should be paid to improving policy guidance and incentive mechanisms to create a more favorable external environment for patent commercialization.
In practice, the adoption of mature, market-oriented methodologies for screening high-value patents is key to identifying high-value existing patents, particularly with respect to the following three aspects: (1) comprehensive screening dimensions, including multi-faceted evaluations from technical, market, and legal perspectives, as well as multiple viewpoints from the patentee itself, the competitive environment, and third parties; (2) clear criteria for segmenting patent portfolios, defining reasonable levels of granularity, priorities, and executable action logic; and (3) reasonable setting of weights among the various dimensions, so as to avoid subjectivity and omission of key factors in the screening process.
Q2
[Pre-filing Evaluation] How to improve pre-filing patent evaluation in the commercialization of scientific and technological achievements?
Pre-filing patent evaluation is an important prerequisite and key step in the commercialization of scientific and technological achievements. It involves multi-dimensional analysis of inventions and creations, improves the quality of patent applications, and promotes patent commercialization and utilization.
The Guiding Opinions of the General Office of the State Council on Improving the Evaluation Mechanism for Scientific and Technological Achievements, issued in August 2021, clearly call for accelerating the reform of the evaluation of outcomes of national science and technology projects. A pre-filing patent evaluation system is to be established, with increased weighting given to the performance of high-quality patent commercialization and utilization, and corporate patent strategic layout is to be included within the evaluation scope, while avoiding the simplistic use of application volume and grant volume as evaluation indicators. The Several Opinions of the Ministry of Education, the China National Intellectual Property Administration, and the Ministry of Science and Technology on Improving Patent Quality of Higher Education Institutions and Promoting Commercialization and Utilization also identify the establishment of a pre-filing patent evaluation system as an important task in promoting the commercialization of scientific and technological achievements.
The main contents of pre-filing patent evaluation include:
1. Evaluation of patent layout: analyzing the current status and trends of the industry and technology to which the invention or creation belongs, identifying hotspots and gaps in the technical field, and formulating a hierarchical patent layout strategy.
2. Evaluation of patentability: assessing whether the technical solution has prospects for patent grant, including novelty, inventiveness, and utility.
3. Evaluation of technological advancement: assessing the position and technological value of the technical solution within its technical field.
4. Evaluation of commercialization prospects: taking into account industrial policies, market environment, prospects for industrial application, industry maturity, and expected economic benefits.
5. Evaluation procedures: forming an evaluation team, submitting technical materials, conducting evaluation work, and issuing evaluation opinions.
6. Application of evaluation results: applying the evaluation results to patent filing decisions, patent layout planning, drafting of application documents, and implementation of commercialization and utilization.
7. Related requirements: including institutional requirements, scientific rigor and applicability, confidentiality, and cost considerations.
In practice, the quality of university patents is a bottleneck affecting the commercialization of scientific and technological achievements, and it is difficult to assess patent quality solely by application volume or grant volume. For example, for low-quality patents granted merely by stacking features, others can easily circumvent the scope of protection by simply adopting alternative technical means. Such patents cannot be used for rights enforcement from a legal perspective and do not have commercialization value from an economic perspective. Therefore, the key to pre-filing patent evaluation lies, on the one hand, in screening out and filtering low-quality patents, and on the other hand, in providing feedback for building high-quality applications.
In summary, pre-filing patent evaluation aims to select high-quality patents with commercialization prospects for promotion and application, prevent blind patent filings, and ensure the maximization of patent value. This process requires not only consideration of technical factors, but also a comprehensive analysis from market and economic perspectives. Through such evaluation, the success rate of patent commercialization can be more effectively improved, and the commercial value of patents can be realized.
Reference:
Guidelines for Pre-filing Patent Evaluation in Chongqing (Version 1.0), issued in August 2024
Q3
[Valuation] What should be noted in patent valuation during the commercialization of scientific and technological achievements?
In the process of commercializing scientific and technological achievements, accurate valuation of patents is crucial to ensuring the efficiency of commercialization and maximizing outcomes.
The national standard Guidelines for Patent Evaluation, issued in September 2023, provides a systematic methodology and indicator system for evaluating the legal value, technological value, and economic value of patents. The Guidelines apply to patent evaluation by enterprises, universities, research organizations, financial institutions, and other entities in scenarios such as patent licensing and assignment, finance, financial reporting, infringement remedies, and management. The document sets out general principles for evaluation, including scientific rigor, systematicness, operability, and extensibility. It specifies in detail the structure of the evaluation indicator system, including primary indicators (legal value, technological value, economic value), secondary indicators, and corresponding tertiary and extended indicators. It also provides methods for selecting indicators and determining their weights, such as expert judgment and analytic hierarchy process, and offers specific examples of evaluation methods and indicator weight design for different application scenarios.
In addition, this national standard provides a formula for calculating patent value scores and methods for applying patent value scores under the income approach, cost approach, and market approach in asset valuation. The appendices include examples of indicators for patent value analysis and evaluation, examples of indicator weight design, and examples of the application of patent value scores, thereby providing references for practical operation.
In practice, on the one hand, evaluators must ensure the legality, validity, and clarity of the scope of protection of patents, so as to ensure that the exclusive rights conferred by patents are effectively safeguarded and potential legal risks are avoided. This includes verifying the grant status of the patent, checking for factors that may lead to patent invalidation, examining whether there are invalidation proceedings or infringement disputes, clarifying the scope of protection defined by the claims, and assessing whether there is a possibility of design-around, so as to ensure that the exclusive rights conferred by the patent are effectively safeguarded and potential invalidity and infringement risks are avoided. Only patents that are robust from a legal perspective can provide reliable protection for subsequent commercial exploitation.
On the other hand, evaluators must conduct in-depth analysis of the technological advancement, innovativeness, and market demand of the patented technology to determine whether it has market competitiveness and application value. At the same time, they must consider factors such as the risk of technological substitution and market development trends to forecast the future prospects of the patented technology. Only patents with a high degree of alignment between technology and market can provide a realistic pathway for the commercialization of scientific and technological achievements and generate considerable economic benefits.
Furthermore, evaluators need to avoid pitfalls in patent valuation, particularly when applying asset valuation methods such as the income approach, cost approach, and market approach to patent valuation. If the technological advancement and irreplaceability of the patented technology in its field are not fully taken into account, significant deviations in valuation may result. Therefore, evaluating patent value within the segmented competitive environment of the relevant patents, technologies, and markets, and selecting from among numerous indicators those most relevant to the patent under evaluation, will help improve the accuracy of patent valuation.
Other excellent Q&As covered in this chapter:
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[Types of IP] What types of intellectual property are involved in the commercialization of scientific and technological achievements?
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[Ownership of IP] How to determine the ownership of intellectual property in the process of commercializing scientific and technological achievements?
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[Open Licensing] What factors should be considered when using patent open licensing for the commercialization of scientific and technological achievements?
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[Cross-border Commercialization] What intellectual property issues should be noted in cross-border commercialization of scientific and technological achievements?
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[Risk Management] How to identify and manage intellectual property risks related to the commercialization of scientific and technological achievements?
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[Benefit Sharing] What role does intellectual property play in the distribution of benefits from the commercialization of scientific and technological achievements?
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[Modes of Exploitation] What modes of exploitation are available for intellectual property generated from the commercialization of scientific and technological achievements?
Authors of this Chapter
Li Mi Patent Director
Lusheng Law Firm Beijing
Email: mli@lushenglawyers.com
Li Hai Patent Attorney
Lusheng Law Firm Shanghai
Email: jli2@lushenglawyers.com
Cheng Ling Patent Attorney
Lusheng Law Firm Shanghai
Email: jcheng@lushenglawyers.com
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About the Report:
The Practical Q&A Handbook on Cutting-edge Issues in Intellectual Property is jointly and meticulously authored by Wolters Kluwer CCH, Lusheng Law Firm, and its strategic partner Rouse International, and was officially released online in November 2024. The Handbook is compiled by more than 30 senior intellectual property experts, and selects 108 intellectual property questions divided into 11 chapters, comprising a total of 100,000 words of detailed analysis. It focuses on the most pressing cutting-edge issues currently of concern in the industry and comprehensively covers key areas such as patents, trademarks, copyright, trade secrets, unfair competition on the Internet, intellectual property capital contribution, and punitive damages for intellectual property infringement. Adopting a “Q&A” format, it distills the hot topics of concern to IP practitioners and provides readers with up-to-date legal interpretations, case analyses, and practical guidance.
Upon its release, the report attracted widespread attention and high praise from the industry. To better share its excellent content, we will continue to select and publish some of the most insightful Q&As from each chapter in the form of a series of articles.
