Evaluation Team Roles and Responsibilities

The evaluation team consists of several types of team members. These roles can rotate from member to member as the team sees fit; however, for most participants, several unique skills will be developed over time using this approach.

The evaluation team leader establishes the agenda and ensures regular meetings are conducted to keep the patent evaluation queue manageable. Generally speaking, keeping patent reviews to a minimum of 15 minutes, and no more than 25 minutes is a best practice to develop. The point here is that allowing fewer minutes, as opposed to more minutes, enforces with the inventor(s) to be to-the-point in presenting their ideas. This practice forces clarity in thinking.

The inventor team should agree on a spokesperson for the defense of the invention to the evaluators in the review and a special needs defensive team member, should the invention idea fail to prove its case. This entire exercise can only help to strengthen the skills of the team members and the sharpness of the problem, solution, and novelty.

Inventor and Evaluator Interactions

This collaboration is excellent for strengthening of ideas and building skills on any inventor team. Establish regular review sessions with inventor(s) and evaluators on a team. Consider appropriate protocol exchanges, which can occur between the evaluators and the inventors.

Work together to review the proposed invention ideas, the respective problems, solutions, and novelty associated with each idea. Inventors need to listen closely to the questions the evaluators are asking to determine if their explanations of the invention are coming across in the manner that they intend.

Inventor's Protocol

The inventor(s) must be crystal clear in their thinking. Remember that it is within the first few moments of discussion that an evaluator is looking to try to understand the problem, solution, and novelty the idea addresses. Pick a spokesperson for this role. Back this person up in all cases with additional teaming and support if it becomes necessary during the review; otherwise, let this person carry the role of “lead inventor,” for the duration of the review.

Make sure each team member is concise, hard-hitting, and to-the-point as he or she describes elements of the problem, solution, and novelty. Ask the evaluators if they have questions as you progress through your discussions. Make sure that you are being understood in you explanation. Work to establish a warm and friendly review environment. This in itself encourages a welcome learning environment for both sides.

Sometimes if the topic of the invention(s) requires some education up-front of a review, it may be beneficial to send materials to the evaluators ahead of time. This often times can happen with very leading-edge technologies, sciences, and other technical areas.

Evaluator's Protocol

Evaluators (for purposes as presented in this book) should always work with inventors to help them strengthen their ideas. This can be accomplished in enlightening ways, which often result in the inventor(s) developing new lines of reasoning—ways for them to better explain exactly what they are thinking when they state the problem, the solution, and the novelty in their ideas. Ask them to explain why this is not obvious to those skilled in the art. Ask them to concisely state what they are claiming to be novel in their idea(s).

Evaluators need to be careful in handling innovative thinking concepts of inventors. Encouraging innovation is the key. Always work to recognize the novelty, relating it back into the solution and ultimately aspects of the problem this solves.

Evaluators may also want to watch carefully for ideas that spawn from other ideas. In some cases, inventors will describe an idea, which actually has more than one valid invention within it. Take time to point out to the inventor the potential of multiple ideas concealed inside a single idea.

Encourage the inventor(s) to contrast the prior art they have discovered with that of the current art—their invention idea(s).

Guidance on Secrecy Practices for Patents

Patents are sometimes classified into government-protected secrets. In these cases, the patents, the evaluators, and the inventors are managed in slightly different ways from normal patent processing methods.

The following discussion outlines the variance in handling secrecy patents, that is, according to the laws of the United States. For other countries and applicability to this subject of “secrecy,” please contact the patent authority for your country or geographical region. For additional details on the content described in this section, please reference http://www.rl.af.mil/pls/oradata/show?in_filename=31-401.HTML.

A1-1. Patent Applications and Government Security

A1-1.1. A basic “specification” describing the invention

A1-1.2. A set of drawings illustrating the mechanism or apparatus

A1-1.3. An original set of claims (these are numbered, single paragraphs at the end of the specification which set out to define just what the invention is)

Although claims are in a language difficult for the layman to understand, their close scrutiny is not, ordinarily, necessary for a determination of secrecy.

A1-1.4. Correspondence, amendments, and office actions

These need not be reviewed, at least until an understanding of the invention has been secured from the specification and drawings.

A1-2. A Secrecy Order Is Needed When the Application Includes Certain Items

Technical data properly classifiable pursuant to a security guideline of the National Security Executive Order (EO 12358, classified National Security Information, April 20, 1995, effective 180 days).

A1-3. A Secrecy Order Is Not Needed When the Application Includes Certain Items

A1-3.1. Improvements in technique, application, material, or apparatus which basically are already known in the open engineering or scientific literature

A1-3.2. Bizarre, impractical, or technically unsound solutions to actual or imaginary problems

A1-3.3. Merely different arrangements or ways of doing something, where the existing general solution to the problem is well known or established

A1-3.4. Any improvement which has no apparent utility in National Defense effort

A1-3.5. Minor details of material in classified projects, providing the feature or parameters which cause the project to be classified are not disclosed

A1-4. As an Expert in the Technical Area, the Review Should Provide the Following Recommendations

A1-4.1. Whether or not the patent application should have a Secrecy Order issued

A1-4.2. Whether classified material is contained in the patent application

Where there is clear evidence of government property ownership interest (i.e., a statement on the first page of the specification as to an interest-free license to the government, a government contract number, or received with classified marking when filed at the Patent and Trademark Office (PTO)), the Government Technical Representative has the right to classify the patent application. If the patent application does contain classified information, it should be classified per DOD 5200.1-R, that is, classification level, downgrading and classification authority (including the most current security classification guide). If the patent is on microfiche, the envelope must be marked with the proper classification and downgrading. If a hard copy is supplied, all pages and paragraphs must be marked per DOD 5200.1-R. The Business Management Division marks the document based on your recommendation.

A1-5. Some Clarifications Related to Secrecy Orders

A-1-5.1. Any patent application that is found to have classified information contained in it and is subsequently classified automatically has a Secrecy Order issued on it by the Patent and Trademark Office (PTO).

A-1-5.2. Per DOD 5200.1-R, paragraph 2-701, a patent application on which a Secrecy Order has been imposed is handled as though classified CONFIDENTIAL (or some higher classification as determined in A1-4.2, this section).

Intellectual Property Asset Commercialization

Intellectual property assets have an elastic value that will greatly differ over the life of the asset. For example, our last discussion on patents that became government secrets, this becomes very clear. Government assets have a distinctive value set to a specifically defined cultural base.

To determine the value of an intellectual property asset is to say whether it is a high-value or low-value invention idea. Or to sell a trademark or copyright—what value might that bring? These topics are at the core of many large enterprise and country-level discussions today, as these entities aggressively work to bring to global markets their first-of-a-kind products and/or services. This is prevalent in almost every industrial country—none more aggressive than in the United States; however, for the purpose of this example, we will explore an Asian country, China.

China is an excellent example of a country that has demonstrated incredible growth in areas of intellectual property development. One very good example of this is the product approach they have employed to assist them in intellectual property asset commercialization decisions.

Shanghai's Intellectual Property Asset Evaluation System and Its Growth

According to Shanghai's Xinhua News Agency, enterprising organizations in China have created an application environment that evaluates intellectual property for assessing value. This system is described in the following text.

“A system that can evaluate a patent and give a fair price to it has been designed successfully in Shanghai and approved by experts.

The system, designed by the Shanghai Intellectual Property Right Service Center and the Shanghai Lixin Asset Evaluation Company, can store numerous data and patent cases and is equipped with special software for evaluation of patents.

In the past ten years, about 300,000 patent applications have been submitted, but only a small number have been put to commercial use partly due to lack of reliable patent evaluation systems.

The system will accelerate the industrialization process of China's patent achievement, according to the State Intellectual Property Office.”^[1]

^[1] For more information, please reference Xinhua News Agency at http://www.china.com.cn/english/BAT/94635.htm.

China's Growth in Intellectual Property Areas

It has been noted that more and more patents are being applied for in China, with the total number standing at three million last year. This places China as a world leader in total quantity of patent applications. According to the State Intellectual Property Office, China led the world in 2003 with the largest number of applications filed for Innovation Patent and Patent of Practical New Patterns.

These statistics would, in turn, indicate that China's patent system is (more than ever) playing an increasingly important role in promoting technical innovation in the world.

Shanghai, the leading technology research geography center in China, saw an average of 62 new patent applications every day in 2003; this was an all-time high for them.

Shanghai received 22,374 patent applications in 2003, which was an increase of approximately 12% over the previous year. Patent applications from universities and colleges totaled 1,794, which exceed all other institutes of higher learning in China. Applications from industrial enterprises totaled approximately 15,280 in 2003, which was up 7% from the previous year.

Shanghai has collaborated on a wide-scale to build relationships across 16 provinces and regions. This particular collaboration is (in part) to serve to enhance an inter-regional crackdown on patent infringements.

An expert with the Shanghai Municipal Intellectual Property Rights Bureau claims that a big rise in patent applications now shows that many local technicians have a much stronger sense of intellectual property rights protection.

In recent days, statistics have shown that the average cost of an innovation patent is 42–73 million Yuan in state-owned scientific research institutes; 11–19 million Yuan in colleges and universities; and 3–11 million Yuan in large and medium-sized enterprises. The high cost of state-owned institutes reflected the inefficiency of the government input in technological innovation.

This, however, is changing in very effective ways.

Today, their top priorities are beginning to focus on large enterprises that can achieve placement on the list of the world's top 500 enterprises and do so over the next five to ten-year period. And regarding the private technological enterprises with their own intellectual property rights, these organizations will also receive financial support from the government. At the same time, the government should consider an aggressive program providing increased incentives to individual innovators and inventors.