Recently, the Ministry of Education, China National Intellectual Property Administration and the Ministry of Science and Technology jointly issued "Several Opinions on Improving the Patent Quality in Colleges and Universities and Promoting the Transformation and Application" (hereinafter referred to as "Several Opinions").
Compared with the previous policies, there are many fundamental differences between these opinions, which can be said to be an important change in patent work in colleges and universities. Therefore, many experts and scholars, IP managers and technology transfer personnel also had a heated discussion, and everyone gave various interpretations and working ideas from different angles.
Undoubtedly, these interpretations and discussions are very beneficial, especially for the profound understanding of policies, the subsequent implementation and the formulation of supporting policies.
The Opinions put forward four key tasks: perfecting the intellectual property management system, carrying out pre-application evaluation of patents, strengthening the construction of specialized institutions and talent teams, and optimizing the policy system. In these four tasks, I personally think that "pre-patent application evaluation" is the focus of several opinions. The direction and effect of this implementation are related to whether the whole goal can be achieved smoothly.
Where did the "pre-application assessment" come from?
Judging from these two paragraphs, the foothold here lies in "deciding whether to apply for a patent"? The question is, what is the basis and principle of application or not? What is the standard of evaluation? At present, there is no clear text explanation in the article. There are two minor disputes under this heading, one is "establishing an evaluation system" and the other is "clarifying the ownership of property rights and cost sharing".
Establish an evaluation system and carry out "clear property rights and cost sharing" according to the evaluation results. Many well-known universities in the world have taken a similar approach: after evaluation, if the unit thinks it is valuable and needs protection, the relevant expenses will be paid by the school. After the evaluation, if the school thinks that it has no application value and is unwilling to apply, it will "transfer the patent application right or patent right through legal procedures and allow inventors to apply for patents on their own".
After evaluation, it can indeed reduce the number of invalid applications and low-quality patents, but it can not form high-quality transfer here and promote the transfer and transformation work.
In the era of quantity, universities may ignore the quality of patents and apply for a large number of patents. The problem is that invalid applications and low-quality patents can basically be eliminated during the examination; If it is not enough, the audit will be more rigorous. Colleges and universities can also achieve this goal by "inventors are not allowed to use financial funds to pay patent fees" and "stopping funding and rewarding patent applications, greatly reducing and gradually canceling the rewards granted by patents".
03. Judging from the connotation of Several Opinions, we need the evaluation of "promoting transformation orientation"
Several opinions do express the same meaning: after the patent application is reviewed, the university should conclude a written contract with the inventor, transfer the patent application right or patent right according to legal procedures, and allow the inventor to apply for a patent on his own. After authorization, the patent right belongs to the inventor and the patent fee shall be borne by the inventor. After deducting the costs of patent application and operation and maintenance expenses, the inventor will pay the income to the university according to the agreed proportion.
From this perspective, the result of "pre-patent application evaluation" is a basis for "clarifying the ownership of property rights and cost sharing". However, it's not over yet. Our "pre-patent application evaluation" is definitely not only to "clarify the ownership of property rights and share the costs", or to prevent teachers from applying for patents for inventions with poor quality without bearing all the costs of patent protection through evaluation. If so, we can apply for a patent by canceling all patent grants, rewarding and restricting the use of government-funded projects, thus solving the problem simply and effectively.
The complete meaning of "Several Opinions" is to improve the patent quality of colleges and universities and promote the transformation and application. Obviously, our core lies in transformation and application. Therefore, we can put forward that the evaluation standard before patent application should aim at "identifying and confirming potential commercial technology".
The two main tasks of pre-application assessment are patentability assessment and industrial feasibility assessment.
Indeed, the development of things has stages. At this stage, we can't, or can't, fully evaluate the commercial value, but what we need to avoid is getting into the patentability evaluation, that is, fully evaluating the novelty and creativity of the invention. If so, we may put a lot of manpower and material resources into another activity of "patent for patent and innovation for innovation", but we can't guarantee the value of innovation and the resources needed for commercialization.
04. What does the transformation-oriented evaluation need to evaluate? -Take foreign universities as an example.
Referring to the intellectual property policies of several famous foreign universities, the evaluation before patent application is as follows:
A: The University of Florida has won a reputation as a leader in treating diseases and commercializing discoveries to make the world a better place. It licensed technology from 1985, received more than 300 inventions every year, conducted more than 100 commercial transactions, and established nearly 20 companies. 20 17, milken institute (milken
Institute) ranks the University of Florida as the third in the country because of its technology commercialization efforts.
After receiving the disclosure information, the University of Florida Licensing Office will arrange a meeting with the inventor. They will discuss the invention together and make a preliminary evaluation of the feasibility, patentability, novelty, potential application and possible market of manufacturing. Because it is expensive to apply for a patent for an invention, the licensing officer may decide not to apply for an invention; If an invention application is sought, a preliminary licensing strategy will be formulated. In other words, its evaluation is aimed at whether to pursue commercialization.
In its IP policy, OTT office is specifically mentioned. Before investing in the cost of patent protection, it is necessary to consider whether a technology can successfully apply for a patent or get an implementation opportunity. For example, the potential market is too small or the potential development cost is too high, which may make it difficult to obtain the invention license. Even if such an invention evaluation result is innovative, it is likely that you will not get the opportunity to apply for a patent.
The evaluation is based on the principle of whether there is commercial prospect and value. If so, we need to consider how to plan IP, define protection strategy and licensing strategy (ordinary, exclusive, or establishing or investing our own company) to ensure its commercial value.
B MIT?
After receiving the disclosure form submitted by the inventor, the TLO (Technology Licensing Office) of MIT will begin to evaluate the patentability, commercial potential and obligations to the sponsor of the invention.
The first step is usually to meet the inventor, and TLO will invite one of them to participate in the literature retrieval of the existing technology. In the evaluation process, TLO will encourage the inventor to give feedback or actively cooperate to explain its technical characteristics and commercial value proposition. If the inventor has a strong insight into its technology and market feasibility, and has a good business network and industry cooperation relationship, the probability of its technology authorization will be very high, and TLO will often give intellectual property protection planning and support to such inventions.
MIT's intellectual property policy also makes it clear that although patent protection is sometimes for various non-commercial reasons, such as professional status, MIT will not seek protection for commercially unattractive inventions-even if these inventions have intellectual value-unless the research funders require otherwise. MIT usually seeks patent protection for inventions, commercial license and the terms of sponsored research agreements.
MIT supports and benefits from the public use of MIT research results. In many cases, just publishing research results is enough to transfer the research results of MIT to the public. In other cases, it is necessary to encourage industry to invest resources in developing products and processes for public use by protecting intellectual property rights and issuing licenses.
The purpose is to provide potential licensees with sufficient incentives to invest in venture capital and fulfill the commitment of resources needed for product development.
C. Harvard University
The portal of Harvard University's submission of the invention disclosure document is directly an evaluation of the patentability and commercial feasibility of the invention. Click on the link and submit the ROI (Return on Investment) file. OTD technology development office (technology
After receiving the investment return report submitted by the inventor, the Development Office will contact the inventor to explore the research potential of the invention. OTD is solely responsible for deciding whether a patent application should be filed for the supported invention. The application decision can be made based on commercial potential, obligations and rights to third parties, or other reasons that OTD deems appropriate. The inventor of a funded invention applying for a patent shall cooperate in various ways in the process of implementing the patent according to the requirements of the school or its agent or designee, and the inventor does not need to pay fees.
Stanford University
The inventor must be included in the disclosure of the invention to make a reasonable judgment on whether the invention has commercial marketing potential. If there is such commercial potential, the invention should be regarded as a "potential patent" and must be disclosed to Stanford. We look at it here, first judging that it has commercial potential, and then considering it as a "potential patent".
Who will do the pre-application assessment?
The purpose and standard of evaluation are clear, and then who will evaluate it. According to some opinions, the evaluation work can be carried out by the intellectual property management department (technology transfer department) of our school or entrusted by market-oriented institutions.
Obviously, at present, the intellectual property offices and technology transfer departments of most universities in China are not equipped with enough manpower to deal with the sudden evaluation work. Moreover, the pre-application assessment itself is very professional and technical.
When can the professional team be established?
In some world-class universities, technology assessment is usually completed by the team of the technology licensing office and external commercial organizations.
06 possible problems and contradictions
Disclosure of invention is the lifeblood of university innovation cycle. TTO of foreign universities spend most of their time on examination and analysis to realize potential commercialization. Their professionalism is very high, and the overall staffing is much more than that in China. However, it still faces the following problems:
Evaluating work ability is challenging and risky, and the success of commercialization depends largely on technology and its development stage. The innovation of university disclosure is mostly in a very early stage, and it needs further development before obtaining commercial license-it needs intermediate links, not technical incompetence. How to balance this?
Where is the evaluation before applying for invention?
Inventions in universities are basically early technologies. How to achieve the following objectives should be considered in the assessment.
Objective evaluation and classification technology
Improve the success rate of commercialization
Avoid the high cost of bad technical assets.
Eliminate speculation and subjectivity in evaluation decision-making
The evaluation results can be recognized by the inventors.
Avoid political decision-making
Support a high proportion of award-winning technologies.
Eliminate political and personal problems in patent and decision-making process
Eliminate speculation in technology assessment and classification
A good evaluation report should report the following contents:
Technical advantages and challenges of the invention, including potential regulatory obstacles and current situation.
Possible intellectual property rights, including detailed search results.
The commercial potential and the ways that can be used to commercialize the invention include industry trends, investment environment, competition mode and SWOT analysis.
Useful industry information and contact information of potential partners.
Are we ready?
Commercialization needs good IP protection, which does not mean that high-quality IP protection will definitely have good commercialization effect.
We need high-quality patent protection technology, but we should always focus on the application of technology and not get lost on the road of protecting intellectual property rights.
Technology from the laboratory to the market, this chain is very long, with many intermediate links. If one link is not done well, it will inevitably affect the realization of the whole chain. However, doing this link well means that it can cooperate well and serve the whole chain.
Return to the essence of patent again;
Most inventions need extensive development to achieve tangible results. Product development takes up a lot of resources, and patent protection helps patent holders to recover their investment in the market. Universities have no resources to develop products. Therefore, by seeking patent protection, universities can provide companies with exclusive rights to their technology to encourage them to invest in product development. Patent protection also helps UC startups with technical rights to attract capital and business partners. However, first of all, technology is needed by investment companies and business partners and has the possibility of commercialization.