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Quantitative Vs Qualitative Patent Evaluation –

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Quantitative Vs Qualitative Patent Evaluation –

  1. 1. Quantitative Vs Qualitative Patent Evaluation – Are we falling for automated tools ?? Rakesh. K
  2. 2. Introduction <ul><li>Of late there has been lot of thought if &quot;patent evaluation&quot;, a key element of IP Management can ever be effectively automated. Analyzing the parameters taken into consideration while evaluating patents requires a lot of attention to details. </li></ul><ul><li>Some of the factors that we come across often are forward and backward citations, dependant and independent claims, age of the patent, expected market cap of the technology disclosed by the patent, technology commercialization feasibility in the current market. </li></ul>
  3. 3. Forward Citations <ul><li>While considering the no. of forward citations received, the age of the patent is a critical factor. Fir example a patent which is in force for two years and has 10 citations will have a higher rating than a patent which has been in force for 4 years and has received 15 citations. Here merely quantifying by no. of citations will be misleading. Here including the citations received by family members of the invention should be taken into consideration. </li></ul><ul><li>Also, if the patent under review deals with a totally new product with multiple market application and has a no. of forward citations which build on this patent by adding incremental addition, we may consider the patent as base patent in the technology area. This will increase its rating. </li></ul>
  4. 4. Backward Citations <ul><li>While considering backward citations one needs to check if the technology enunciated by the invention is complimentary to a existing technology and not a incremental addition. This will give an idea of the level of novelty of the patent. </li></ul><ul><li>Patents cannot be quantified by mere no. of backward citations because higher no. of backward citations can give the impression that the there is already a lot of prior art out there and the invention may not hold substantial value. On the other side, listing the entire prior art reduces the risk of litigation and there could be less possibility of an ex-parte challenging the validity of the patent. </li></ul>
  5. 5. Dependant and Independent Claims <ul><li>Assessing the claims of a patent is a highly qualitative factor. Merely going by the no. of dependant or independent claims will not provide the right directions. Instead on has to check if the claims are optimum. This is because at times the claims are very narrow and are restricted to one particular technology. This will reduce the market cap of a new market application of the same technology if its not claimed for because one wont be able to prevent others from making a similar product for the new market application. </li></ul><ul><li>On the other hand, if the claims are too broad the probability of being invalidated is more. There needs to be a proper trade-off in the assessment and market potential of the technology should be taken into account. </li></ul>
  6. 6. Legal Status <ul><li>One has to ensure through file wrappers and office actions if the title for the patent is clear and there is no history of opposition/ re-examination or litigation associated with the patent. If there is a history of litigation which is not positive, it is advisable to provide a lower rating considering the perceived risk. </li></ul>
  7. 7. Market capitalization <ul><li>Assessing the market cap can again be a dubious task. Say for example I have a patent on blue ray disc under review. I must be able to see the forecasted buy-in trend and demand for blue ray disc, use of blue ray disc drives and other complementary technologies. The demand for blue ray disc & drive may see a up-trend today. But five years down the line will it be able to sustain the same demand? Will this trend be subdued by new technologies like flash drives. </li></ul><ul><li>On the other side there is a saturated yet performing market for low-cost compact disc drives. In such a scenario how I position my product will be critical. Even if one is operating in a niche space, market capitalization will be a % share of total market. So the volume of units which could be sold is connected to all these factors. </li></ul>
  8. 8. Technology commercialization feasibility <ul><li>Yet another critical factor is the commercialization feasibility of the technology. A fuel-cell technology may look very promising in terms of emission reduction. Will I able to be position it with competing hybrid technologies with the cost factor and replenishment coming into consideration. </li></ul><ul><li>One also has to see if the product meets current or future market needs. Feeding a product with 90's technology in a blue-chip industry can be height of foolishness and so would be rating the patent high. We can never benchmark an outdated technology with current products. </li></ul>
  9. 9. Conclusion <ul><li>Having discussed on all these critical aspects of patent evaluation, we should introspect asking if we still have an automated tool which can perform all these tasks for us?? </li></ul><ul><li>We would all be happy to hear a YES </li></ul>

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