Evaluating Inventions –
To evaluate a set of Patentable Inventions and rank them according to the value these can bring for the organization. Let us define Value of a Potential Patent as a function of following parameters (it should be noted down that these parameters are just a representative list, one can add or delete more parameters as per the requirements):
- Synergy with Existing Patent Portfolio: A Patent that enhances the existing portfolio will strengthen the organization’s position in the area and also get strength from existing Patents. This synergistic effect will enhance its value.
- Position with respect to Competitor’s Patent Portfolio: If a patent fills up a hole in the competitor’s portfolio and competitor need to use that patent for future products, it can help the organization in bargaining and cross-licensing scenarios
- Patent Vitality Profile: A Patent which looks very interesting at present may become obsolete quickly. Hence one needs to look at long-term survivability and usefulness. Besides vitality of a Patent indicates the potential of the patent to create more inventions on its basis.
- Industry Presence in the Field: If there are a large number of competitors in the field, it indicates a highly active field. A field which is just starting need to be evaluated on a more comprehensive basis. That is true for a field that is highly mature and might have reached a saturation level.
- Technology Maturity Level: Every product goes through phases of technology maturity, i.e., the technology S curve. Given the time of invention, it is prudent to ascertain where exactly in the S curve the present Patent is placed.
- Macro Level Valuation of the Patent: The most important factor contributing to patent value evaluation is the valuation in terms of monetary benefits that a Patent can bring to the assignee. This analysis may be done at a micro economic level. However, for prioritizing, a macro level evaluation may be sufficient.
- Scope of Rights Securable: the value of any patent rests on the scope of rights secured – as described in the Claims. What can be protected by the patent depends upon how broad the Claims can be. The breadth and depth of the claims depends upon prior art in the field and skill of the patent drafter to expand the scope and protect a large territory in the field.
- Ability to Detect Infringement and Enforce Patent Rights: How easy it is to verify the infringement of a Patent and prove it in a court of Law. If the invention is extremely complex and it is extremely difficult to establish infringement of the invention, it will be better for the company to either keep it as a trade secret or get a copyright protection by making it public domain.