Author: Kui Hui Patent Analyst
In the process of innovation and development of China's industries, technology-based SMEs, as the leader of innovation and development of SMEs and the pioneer of emerging industries, play an important role and their development has attracted much attention. At present, the development momentum of technology-based SMEs is rapid, and as of June 30, 2020, the number of enterprises that have entered the National Science and Technology Based Enterprises Information Database has reached more than 141,000.
1. The level of patent risk management in technology-based SMEs urgently needs to be further improved.
The core competitiveness of technology-based SMEs lies in technological innovation. For technology-based SMEs, intellectual property, especially patents, play a significant role and are of great importance, as demonstrated by the following points: 1. Patents are important means for technology-based SMEs to protect their technological innovation achievements and are an important manifestation of their core competitiveness; 2. As an important intangible asset for technology-based enterprises, patents are an important financing channel for them to obtain patent pledge financing; 3. Patents are important conditions for enterprises to meet the recognition standards for technology-based SMEs, high-tech enterprises, and the scientific and technological innovation attributes of the Science and Technology Innovation Board; 4. Patents are a highly concerned risk source for technology-based SMEs and are also important weapons and bargaining chips for them to effectively resist the patent attacks of competitors; 5. Patents are an important information source for technology-based SMEs to obtain competitive intelligence on patent technology.
In recent years, the importance of patents for technology-based SMEs to participate in market competition has become increasingly prominent. On the one hand, the intensifying market competition has forced enterprises to establish a differentiated competitive advantage through technological innovation and build a competitive barrier through patent protection. On the other hand, the preference of the capital market for investment targets is increasingly biased towards technology-based SMEs with strong patent reserves. At the same time, the establishment of the Science and Technology Innovation Board has prompted the full display of the importance of patents for technology-based SMEs. The outbreak of a series of patent disputes in the Science and Technology Innovation Board in more than a year since its establishment further shows that if technology-based SMEs want to achieve healthy development, they must first effectively manage patent risks and effectively build a solid patent competitive advantage.
However, the current majority of technology-based SMEs generally suffer from the lack of intellectual property management personnel, the absence of intellectual property management departments, a poor overall awareness of intellectual property risks, and a lack of solid patent layout reserves, making it difficult for enterprises to effectively manage patent risks. Therefore, if technology-based SMEs want to achieve sound development in the fierce market competition, they must attach great importance to the management of patent risks.
Second, what patent risks should technology-based SMEs pay attention to?
For technology-based SMEs, the main patent risks that need to be focused on include risks related to patent applications, risks related to patent maintenance, and risks of patent infringement.
1. Risks related to patent applications
Risks in patent application stem from oversights in patent application strategy and practice. These oversights mainly involve whether to choose patent protection, whether the technology is properly laid out, and the geographical selection of patent applications, etc.
Firstly, facing the achievements of technological innovation, enterprises need to consider which protection method is more suitable, either in the form of trade secrets or in the form of other forms such as patent rights? If the protection method of patent rights is adopted for the own technology, it is necessary to know that once the patent fails to obtain authorization, the technical scheme will be published, not only can not get legal protection, but also provide convenience for competitors to master the own technological innovation achievements. Secondly, unreasonable patent layout will also cause risks. In an innovative achievement, there are often many technological innovation contribution points. How to make a reasonable patent layout around these new technologies when applying for a patent is a very important issue. It is not only necessary to protect the existing technological achievements of the enterprise, but also to prevent the competitors from taking advantage of the patent protection loopholes. Thirdly, since patents have geographical restrictions, before applying for patent protection, it is necessary to choose a reasonable geographical area to effectively protect the target market of the enterprise and give full play to the protective function of the patent.
2. Risks related to patent maintenance
The risk of patent maintenance is incurred after the patent is authorized, when the patent rights are to be maintained. The main risk impacts are manifested in two aspects: on the one hand, the patents that should be maintained are not maintained, resulting in the loss of important patent rights; on the other hand, the patents that should not be maintained are incorrectly maintained, resulting in the waste of valuable patent fees on unnecessary patents with extremely low value. As for the reasons, one is the lack of monitoring and management of patent maintenance, which fails to pay the patent fees in time; the other is the unclear understanding of the value of the patent itself, resulting in the lack of emphasis on the maintenance of patents with commercial value, the failure to renew the patents in time, and the unnecessary expenditure on patent maintenance fees on patents with insufficient commercial value.
3. Risk of patent infringement
Patent infringement risk includes both the perspective of infringement and the perspective of being infringed. Patent infringement often occurs when the technical scheme used by a company falls within the scope of protection of the authorized patent owned by the patentee, resulting in the risk of patent infringement. Being infringed generally occurs when other companies or individuals are using the company's patented products or patented technologies, or the technology used falls within the scope of protection of the company's authorized patent. In either case, it is related to the establishment or erosion of the company's competitive advantage in the market, so the company must immediately determine whether it truly constitutes patent infringement or being infringed, and take timely countermeasures.
Three, how can technology-based small and medium-sized enterprises effectively manage patent-related risks
Among the above risks, the risk of patent infringement is the most serious patent risk, which even affects the survival and death of enterprises; Moreover, if the patent application and patent maintenance process is improper, it will also lead to the generation of the risk of patent infringement. Therefore, the author believes that, within the scope of its ability, technology-based small and medium-sized enterprises should first avoid the occurrence of the most harmful patent infringement risk, and then avoid the risk of patent application and the risk of patent maintenance.
Starting from the full chain of technology research and development in technology enterprises, technology-based small and medium-sized enterprises can consider the effective control of patent-related risks from the following perspectives:
1. At the initial stage of research and development, pay attention to confidentiality.
Technology-based SMEs should strive to minimize the disclosure and public exposure of relevant technical information during the R&D process, reduce or control the number of personnel with access to core technologies, and require technicians to bear confidentiality obligations. During the research process, unrelated personnel are not allowed to participate or visit. Before carrying out technology promotion, participating in various exhibitions or forums, it is necessary to prepare in advance for the deployment of related patent applications.
2. Mid-term R&D, forward-looking layout
When the R&D technology is stable, and before the technology is made public, it is possible to consider the appropriate protection method. If the technology developed by the enterprise is a technology secret that is difficult to reverse engineer, and the technology has been stable and has a clear lead over competitors, it is possible to consider protecting it as a trade secret; in other cases, it is possible to consider protecting it as a patent. In the process of product development, it is timely to apply for patents for related functional improvements and parts matching technologies, to build a meticulous and complete patent layout portfolio around the core technology, and to firmly establish the enterprise's patent protection network. In addition, it is also necessary to focus on the enterprise's product operation strategy and market expansion strategy, to pre-select and determine the appropriate patent application protection area, to provide patent application layout support for the enterprise's products to receive patent protection in the target market country in the future.
3. Browse at any time, and regularly check.
Set aside a fixed time to browse the patent gazette of the State Intellectual Property Office, and manage and handle the reexamination and invalidation of patents. Regularly check the existing patents within the enterprise, maintain the payment of patents carrying core technologies, and consider transferring or licensing patents that are not used or not intended to be used. Consider giving up patents that have lost their commercial value to save on patent maintenance fees.
4. Patent search, always with
Train and encourage technical backbones to conduct patent search on related technologies, whether before, during, or after R&D. Technicians should always be sensitive to relevant technologies in this field and always follow the cutting-edge dynamics. Free database resources can be used, such as the patent search database of the State Intellectual Property Office, the European Patent Office's patent search database, and other free databases. In addition, there are many commercial databases to choose from. Use competitor or related technology keywords, etc., to search at the search entrance, and continue to pay attention to the legal status of important patents obtained, such as those with the same or similar technical content as the company, and independent claims, etc. For such patents, if necessary, entrust professional institutions to conduct search analysis.
5.迅速 respond to infringement
When a company discovers that it is in a state of infringement and being infringed, it can quickly establish a special response team, drawing in capable legal and relevant technical personnel from the company's middle management to respond quickly; when necessary, introduce external high-level patent service agencies to provide professional support. For patent infringement incidents, fully collect information on the other party's patents and evidence of patent invalidity, deeply analyze the patent laws of the country where it is located, strictly control the reliability and availability of relevant evidence, and efficiently develop a response plan; for incidents of being infringed, focus on collecting evidence that the other party constitutes patent infringement, fully analyze the possible impacts and consequences after the outbreak of patent infringement litigation, and make full preparations for patent infringement litigation.
6. Maintain cooperation, seek help
Cooperate with external intellectual property service agencies. Intellectual property service agencies have a stable professional service team, specializing in intellectual property agency, analysis, consultation, litigation and other businesses, fully mastering professional legal knowledge and operation procedures related to intellectual property, which can help enterprises quickly establish a suitable patent layout and reduce patent risk hidden dangers.
In summary, the patent risks faced by technology-based small and medium-sized enterprises in China permeate the entire process of enterprise technology research and development and business activities. Technology-based SMEs need to adapt to the current market competition and patent competition situation and characteristics, and take effective measures to manage patent-related risks, so as to provide strong patent support for the establishment of a healthy development cycle for enterprises.
References:
[1] From China Intellectual Property News, "130,000 Enterprises Enter the National Science and Technology Small and Medium-sized Enterprises Information Base".
[2] Deng Yajun, Research on the Application of Patent Information Analysis Method in Patent Early Warning [D]. Wuhan: Huazhong University of Science and Technology, 2016.
[3] Zhang Jingyao, Research on Patent Risk of Technology-based Small and Medium-sized Enterprises [D]. Hunan: Xiangtan University, 2017.