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For Inventors and Patent Review Committees (Relating to Idea Generation)

In: MINING IDEAS FOR DIAMONDS Comparing China and US IP Practices from Invention Selection to Patent Monetization

Author

Listed:
  • TAO ZHANG
  • JINGUI FANG

Abstract

The following sections are included:Driving Force for Inventions — The Important Role Played by Portfolio ManagersCross-functional team collaborations are neededInnovation-driven IP strategy versus IP-driven innovationsJumping S-curve and finding the next disruptive technologyHow to Ensure High Patent QualityStep A — selecting and approving invention disclosuresTo do prior art search or notImplement pre-screening processStep B — drafting and prosecuting patent applicationsRecommended Methodology for Inventors and Patent CommitteeTo file or not to file?Is the patent office likely to grant a patent?Are others likely to use the invention significantly in the next 2-20 years?Deciding whether to file a patent applicationInventor and patent review committee checklistEffective First-Filing ApproachThe increasing international characteristics of IPFactors in selecting first-filing countryIdentification of inventor(s)Determination of the location where invention was madeOptimization of first-filing decisions under various scenariosTime period to obtain the permit of foreign filing license → file first in China provides an earlier filing date, but the disparity may be temporaryTime to grant → file first in US provides generally an earlier grant dateQuality of application drafting → file first in US generally yields a higher quality patent application draftingOther considerations such as overall portfolio managementConclusion — effective patent application first filing is important to your IP strategiesFirst filing strategy checklistWhether to Accelerate or Decelerate Your Patent ProsecutionAccelerationDecelerationComparison checklist — acceleration or deceleration of patent prosecutions

Suggested Citation

  • Tao Zhang & Jingui Fang, 2016. "For Inventors and Patent Review Committees (Relating to Idea Generation)," World Scientific Book Chapters, in: MINING IDEAS FOR DIAMONDS Comparing China and US IP Practices from Invention Selection to Patent Monetization, chapter 3, pages 89-128, World Scientific Publishing Co. Pte. Ltd..
  • Handle: RePEc:wsi:wschap:9789813146174_0003
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    More about this item

    Keywords

    Patent; Quality; Invention; US Patent Law; China Patent Law; Ideas; Innovation; Monetization; Licensing; Invention Disclosure; Software Patent; Function Claim; International Inventors;
    All these keywords.

    JEL classification:

    • O34 - Economic Development, Innovation, Technological Change, and Growth - - Innovation; Research and Development; Technological Change; Intellectual Property Rights - - - Intellectual Property and Intellectual Capital
    • K20 - Law and Economics - - Regulation and Business Law - - - General
    • M10 - Business Administration and Business Economics; Marketing; Accounting; Personnel Economics - - Business Administration - - - General

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