Valuation Borough
Key points for patent attorneys to handle patent technology evaluation business
The purpose of formulating these key points is to improve the quality of patent evaluation reports and protect the rights and interests of clients and report users. When a patent attorney is appointed to handle patent technology evaluation business, in order to demonstrate his or her rigorousness, fair, independent and objective spirit, he or she should issue an independence statement in reporting the evaluation results. The identification of the institution to which the patent attorney belongs in the declaration of independence shall refer to the firm where the patent attorney is established or employed, or to the legally established or registered corporate body or foundation where the patent attorney is employed.
There is an appointment relationship between a patent attorney and his or her client under the Civil Law. In addition to complying with the professional ethics and evaluation standards communiqué, the patent attorney must also strictly abide by the obligation of confidentiality, handle the appointment affairs faithfully and fulfill the duty of being a good manager. Patent attorneys should conduct patent due diligence, patent technical validity assessment, patent commercialization determination, patent competitive technology analysis and other operating procedures in accordance with patent laws, patent examination standards, patent infringement judgment points and other patent-related laws and regulations. However, since the circumstances of each patent evaluation case are different, these key points do not prevent patent attorneys from conducting various procedures. If other laws, adjudication, judgments or standards are applied reasons should be clearly stated in the evaluation report.
The purpose of patent evaluation includes different purposes such as transaction purpose, tax purpose, legal purpose, financial reporting purpose, management purpose, etc. Based on the evaluation purpose of the client, the patent attorney conducts patent technology evaluation, and the evaluator uses this as the basis for the conclusion of the evaluation value. However, if a patent attorney conducts patent due diligence and there are discontinuous transfers that cause doubts about the status of the rights, the client has not obtained the rights to the evaluation subject patent on the evaluation base date, or the evaluation subject patent rights have expired, etc., which may lead to inaccurate conclusions on its value, then all should be stated in the evaluation report.
The information used by patent attorneys to evaluate patent technology should include information provided by the client and public information that the patent attorney inquires on his own. The information provided by the client to the patent attorney for the purpose of evaluation should be explained in the report or presented in the form of an attachment to the report in order to prepare an evaluation report. As for the public information that the patent attorney inquires on his own, when using the information in the report, the source of the information should be stated for review by the client, the user of the report, or for review by the evaluation. Special attention should also be paid to the fact that the patent evaluation report is not a public report. The report should be limited to the client and the report users designated by the client. The patent attorney has the obligation to keep the contents of the report confidential.
(Above content is reproduced from the Patent Attorneys Association’s Q&A on said key points)