Featuring three essential Q&As on patent screening, pre-filing assessments, and patent valuation.
In today’s innovation-driven landscape, transforming scientific and technological achievements into marketable assets has become a strategic focus for both enterprises and research institutions. In this critical process, intellectual property management plays a vital role—not only helping stakeholders gain a comprehensive understanding of the patent landscape but also safeguarding the smooth commercialization of research outcomes.
Patent search and analysis are key components of strategic R&D planning. Focusing on topics such as the screening of existing patents held by research institutes, evaluation before filing new applications, and key points in patent valuation, we have selected three essential Q&As from Chapter 6: Intellectual Property Issues in the Transformation of Scientific and Technological Achievements of the Practical Q&A Guide to Cutting-Edge Intellectual Property Issues, co-authored by Wolters Kluwer, Lusheng Law Firm, and its strategic partner Rouse.
In the Special Action Plan for the Transformation and Utilization of Patents (2023-2025) issued by the General Office of the State Council and the Work Plan for the Revitalization of Existing Patents in Universities and Scientific Research Institutions jointly issued by the China National Intellectual Property Administration, “sorting out and revitalizing the existing patents in universities and scientific research institutions” is identified as the primary task. That said, it is crucial to set clear requirements for incentivizing the transformation of patents in universities and scientific research institutions, and for improving the patent industrialization rate.
At the operational level, universities and scientific research institutions screen patents with potential market value by using the unified online registration and archiving facilities on the National Intellectual Property Operation Service Platform system, also known as the National Patent Navigation Integrated service platform (www.patentnavi.org.cn). These institutions may also conduct inventories through their own platforms and upload the inventory results to the integrated service platform in a standardized format.
Screening valuable existing patents in universities and scientific research institutions is a crucial aspect of this process.
Firstly, the primary task of the screening work is to clarify and refine the screening criteria to establish a comprehensive evaluation framework that encompasses technology maturity, alignment with market demand, economic growth potential, and industrialization feasibility. Specifically, the work should focus on patent projects that are technologically advanced, have positive market responses, have significant expected economic contribution, and are easy to industrialize. Such patents often carry higher transformation value and social benefits.
Secondly, it is essential to fully utilize authoritative data resources. such as the National Patent Navigation Integrated Service Platform, to comprehensively and accurately analyze existing patents. Institutions may leverage big data and artificial intelligence technology for in-depth mining and intelligent analysis of patent information. This approach not only helps to quickly identify potential high-value patent candidates, but also provides solid data support for subsequent evaluation and transformation work.
In addition, the evaluation stage is a critical part of the screening process. Universities and scientific research institutions should establish a multi-level evaluation system that includes self-evaluation by inventors, internal evaluations within the entity, and external expert assessments. This system ensures that the screening results align with technological development trends and closely follow market demand, thereby enhancing the scientific rigor and credibility of the screening results.
Lastly, for the screened high-value patents, detailed transformation plans should be formulated to outline the transformation path, target market and timeline. At the same time, attention should be paid to improving policy guidance and incentive mechanisms to create a more favourable external environment for patent transformation.
In practice, adopting a structured, market-oriented methodology for screening high-value patents is key. This process should consider three core aspects:
1. Comprehensive screening dimensions
Assess patents based on technological, market and legal factors, while incorporating perspectives from internal teams, the competitive landscape and third-party experts.
2. Clear segmentation criteria for patent portfolios
Define segmentation granularity, priority levels and action logic to ensure an effective classification system.
3. Balanced weighting of screening factors
Set reasonable weight distributions across different dimensions to minimize subjectivity and ensure critical factors are not overlooked.
Pre-application evaluation is an important prerequisite and key link for the transformation of scientific and technological achievements. It involves a multi-dimensional analysis of inventions and creations, with the aim of improving the quality of patent applications, and facilitating the transformation and utilization of patents.
The guidance issued by the General Office of the State Council on Improving the Evaluation Mechanism of Scientific and Technological Achievements, issued in August 2021, clearly aims to accelerate the reform of the evaluation of national scientific and technological project achievements. The acceleration involves establishing a pre-application evaluation system for patents, increasing the evaluation weight of high-quality patent transformation and application performance, incorporating the strategic patent layout of enterprise patents into the evaluation scope, and moving away from simply considering the number of applications and grants as evaluation indicators. The Ministry of Education, the China National Intellectual Property Administration, and the Ministry of Science and Technology have also identified the establishment of a pre-application evaluation system as key to promoting the transformation and utilization of scientific and technological achievements.
The main components of the pre-filing evaluation include:
1. Patent layout assessment: Analyze the development status and trends of the industry and technology related to the invention, identify hotspots and gaps in the technology field, and develop a hierarchical patent layout strategy.
2. Patentability assessment: Evaluate whether the technical solution has the potential to be patentable, based on its novelty, inventiveness and practicality.
3. Evaluation of technological advancement: Assess the industry status and technical value of the technical solutions within the relevant field.
4. Market-oriented prospect assessment: Consider industrial policy, market environment, industrialization prospects, industrial maturity, and expected economic benefits.
5. Evaluation procedure: Establish an evaluation team, submit technical information, conduct the evaluation, and formulate evaluation opinions.
6. Application of evaluation results: Use the evaluation results for patent application decision-making, patent layout planning, preparation of application documents, and implementation of transformation and use.
7. Relevant requirements: Include system requirements, scientific validity and applicability, confidentiality and cost considerations.
In practice, the quality of patents in universities often presents a bottleneck that affects the transformation of scientific and technological achievements. Evaluating patent quality based solely on the number of applications or authorizations is insufficient. For instance, low-quality patents that are granted by merely stacking features can have their scope of protection easily circumvented through alternative technical means. Such patents cannot be legally enforced for rights protection and hold no economic value. Therefore, the key to pre-filing evaluation is to filter out low-quality patents while providing feedback to enhance the creation of high-quality applications.
In summary, the purpose of pre-application evaluation is to select high-quality patents with industrialization prospects for promotion and application, prevent the indiscriminate filing of patent applications, and ensure the maximization of patent value. This process requires not only technical considerations, but also a comprehensive analysis from market and economic perspectives. Through such evaluations, the success rate of patent conversion can be effectively improved, and the commercial value of patents can be realized.
In the process of transforming scientific and technological achievements, accurately evaluating patent value is crucial to ensure transformation efficiency and maximize outcomes.
The National Standard of the Guidelines for Patent Evaluation, issued in September 2023, provides a systematic set of methods and indicators for assessing the legal, technical and economic value of patents. These guidelines are applicable to patent evaluations conducted by enterprises, universities, scientific research organizations, financial institutions and other entities in contexts such as patent license transfer, finance, financial reporting, infringement relief and management.
The document clarifies the general principles of assessment, which include scientific validity, systematic approach, practical applicability and scalability . It elaborates on the composition of the evaluation index system, including first-level indicators (legal value, technical value, economic value) and second-level indicators, along with corresponding third-level indicators and extended indicators. The guidelines also provide methods for index selection and weight determination, such as expert evaluation and the analytic hierarchy process, along with specific evaluation methods and index weight design examples for different application scenarios.
Additionally, the national standard includes formulas for calculating patent value and outlines the application methods of patent value in asset valuation using the income, cost and market methods. The appendix contains examples of patent valuation analysis and evaluation indicators, examples of index weight design, and illustrations of patent value applications. These all serve as references for practical operations.
In practice, the evaluator must ensure the legality, validity and clarity of the patent’s scope of protection by verifying the patent’s grant status, checking for factors that may could potentially invalidate the patent, examining any ongoing invalidation lawsuits or infringement disputes, clarifying the protection scope defined by the patent claims, and assessing the potential for design circumvention. Ensuring that the patent’s exclusive rights are effectively protected is essential to avoid potential invalidation and infringement risks. Only legally stable patents can provide a reliable foundation for subsequent commercialization.
Moreover, the evaluator needs to analyze the technological advancement, innovation and market demand of the patented technology to determine its market competitiveness and application value. It is also important to consider factors such as technology substitution risks and market development trends, to predict the future prospects of patented technologies. Only patents that align closely with market needs can provide a viable path for transforming scientific and technological achievements, and potentially yield significant economic benefits.
Additionally, the appraiser must avoid misconceptions about patent valuation. When applying asset valuation methods – such as the income, cost or market methods – it is crucial to fully consider the technological advancement and irreplaceability of the patented technology within its field. Failing to do so can lead to significant valuation discrepancies. Therefore, assessing patent value within the competitive landscape of patents, technologies and market segments, as well as selecting the most relevant indicators for the patents being evaluated, will enhance the accuracy of patent valuation assessments.
In collaboration with our strategic partner Lusheng in China and Wolters Kluwer, Rouse has developed a valuable resource for rightsholders: “The Practical Q&A Guide to Cutting-Edge Intellectual Property Issues in China”. This guide, compiled by over 30 senior China IP experts from the two leading IP firms, addresses the key concerns of businesses by providing insights on patents, trade marks, copyright, trade secrets, internet unfair competition, intellectual property investment, and punitive damages in an accessible Q&A format. It offers readers the latest legal interpretations, case studies, and practical guidance applicable to their operations.
To request a full copy, please complete the form through the link here.
Please note that due to publishing restrictions, we may not be able to fulfil every request. The application will be reviewed, and the report will only be available to corporate organizations. Thank you for your understanding.
Li Mi, Principal, Lusheng Law Firm, mli@lushenglawyers.com
Jensen Li, Patent Attorney, Lusheng Law Firm, jli2@lushenglawyers.com
Jenny Cheng, Patent Agent, Lusheng Law Firm, jcheng@lushenglawyers.com