April 1, 2012 (Vol. 32, No. 7)
Prospecting for Innovation Should Be a Regular Part of Any Company’s Patent Program
Many companies have more inventions than they recognize, and each unrecognized invention is a missed opportunity and potentially a wasted asset. Fortunately, capturing unrecognized inventions through “invention mining” is easy and efficient, and should be a regular part of any company’s patent program.
Invention mining, also known as “invention harvesting,” is the art of engaging with an engineer or scientist to identify and capture inventions, including those that might otherwise go unrecognized. Inventions are the raw material of any patent program, so identifying a company’s inventions gives the company more choices for strengthening its patent portfolio and making the best use of its patent budget. Done well, invention mining is not disruptive to the inventor’s work and can generate significant return on investment.
The art of invention mining turns on the ability to ask the right questions, not only to uncover inventions, but also to overcome barriers that may be holding back their disclosure. In both respects, a little experience goes a long way.
Engineers and scientists often are not attuned to recognizing inventions, yet almost any worthwhile project involves innovation. The product they are designing to meet a customer’s needs must have some advantage over alternative solutions, and that advantage may be a patentable invention. Perhaps product development or research requires a new application of an existing technology or an improvement on that technology. Perhaps that product or research will lead to a new material or a new method of manufacturing. Any of these might include patentable innovations.
Tom Tuytschaevers
Why It Matters
A number of factors contribute to make invention capturing important.
A patent is an asset that protects corporate value. For example, a recent article in Forbes explored the staggering cost of developing new drugs—costs that must be recaptured in product sales. A reading of Pfizer’s 2011 Annual Report to the SEC is instructive. Pfizer reported U.S. revenues from its Lipitor product were $5 billion in 2011. Because the U.S. patent expired in November of that year, Pfizer warned that “revenues for Lipitor in 2012 will be substantially less than our 2011 revenues for Lipitor.” Clearly, the Lipitor patent was a valuable asset—a large nugget of gold—to Pfizer and its shareholders.
In addition to feeding a company’s patent pipeline, recognizing inventions may be important for a variety of other reasons. For example, some companies measure their engineering output as a ratio of invention disclosures per dollar of R&D spending, while other companies measure patent applications filed per year, patents granted per dollar of revenue, or any combination of these factors.
In any event, even a handful of additional inventions can have a significant positive influence on such metrics. In addition, a small investment of time in invention mining can have a positive effect on a workforce as members gain an appreciation for all they have done, and for the fact that the company recognizes their efforts.
Time Is Not On Your Side
Mick Jagger famously sang “Time is on my side.” But then, Jagger is not an inventor. Time has always worked against the inventor in the patent process, and things are about to get more challenging.
Current U.S. patent law favors the first inventor, even if a later inventor files a patent application first. The recent patent reforms will change that when they take effect. Historically, a first inventor could take some comfort in delaying a patent application while refining an invention—even if a later inventor filed a similar application, the patent would go to the first inventor, provided that the first inventor remained diligent and eventually filed a patent application.
Not so under the 2011 Leahy-Smith America Invents Act. For patent applications filed after March 16, 2013, U.S. patent law will, with limited exceptions, award the patent to the first inventor to file an application, irrespective of whether that inventor was the first to conceive the invention.
In addition, the impending changes significantly curtail the grace period available to an inventor whose invention was disclosed by someone else before the inventor files a patent application. Consider, for example, conference proceedings or an academic paper describing an invention and published before the inventor files a patent application. Existing U.S. patent law provides the inventor a one-year grace period in which to file an application before such publications become a bar to patentability.
Not so under the 2011 Leahy-Smith America Invents Act. With limited exception, such disclosure will bar a patent on an application filed after March 16, 2013. As such, delay in filing a patent application is becoming riskier.
In short, under the 2011 patent law revisions, inventors will be in a race to the patent office, so time spent honing your idea may be fatal to your patent and toxic to your business interests.
Overcome Those Barriers!
Even when engineers and scientists suspect that they have an invention, they often lack confidence to disclose it. Young innovators may think that their ideas are not worthwhile, or “if it were a good idea, the senior engineers and scientists would already have thought of it.” Paradoxically, senior engineers and scientists tend to believe that many new ideas are the same as things they saw long ago.
Even worse, innovators too frequently think that the requirements for patentability are much higher than they are. Then, even when an innovator recognizes an invention, other job pressures may leave little time to fill out an invention disclosure form. With a little guidance and investment of time, these barriers can be overcome, and when that happens the floodgates of invention disclosure tend to open.
Invention mining typically involves sitting with a company engineer or scientist, or a team of engineers or scientists, and starting a discussion about what they have been working on. What have you done? What challenges have you faced, and how did you overcome them? Why is that different? What made you think to do it that way? How was it done before, and why didn’t anyone do it this way previously? Why will your customers like it?
Once you get an inventor to reflect on her work by thinking along these lines, the ideas will flow. Even better, a group discussion often produces a synergistic effect: When one person volunteers an idea, others begin to remember other details, setting off a chain reaction of invention disclosures.
An invention prospector working with a company’s engineering and scientific staff can capture these ideas easily by filling out the company’s standard invention disclosure form on the fly and supplementing it with documents that the engineers have already produced in the course of their work.
Anyone can be an invention prospector, but there are advantages to having a patent attorney do the digging. In addition to experience with teasing out innovations, a patent attorney can ask other questions critical to patentability—for example, about inventorship and invention ownership.
Also, since time works against the inventor in the patent process, a patent attorney knows to ask about events that may have triggered a patent filing deadline and about foreseeable events that could jeopardize potential patent rights.
A company cannot protect innovation that it fails to recognize. Invention mining is an efficient way to capture the innovations inherent in any company’s work, yet is not as widely or consistently practiced as it could be.
Tom Tuytschaevers ([email protected]) is a patent attorney at Sunstein Kann Murphy & Timbers.
