All the Intellectual Capital Management (ICM) processes focus on implementing IP strategy. The strategy must clearly articulate what the desired business objective is and how IP supports that (Figure 1).
To support IP strategy development, it is useful to have an IP landscape analysis1 of your and your competitors’ IP. The landscape analysis should show the IP by business segment. The granularity of the analysis is dependent on the issues that are important to your business strategy. This is a key part of understanding your IP strengths and the competitive IP environment of your business. This understanding supports the IP strategy development and the new product development process.
Many companies have a new product development process that consists of various stages or gates that must be passed for the product development to progress to commercialization. This “Stage-Gate” process has been used for many years to manage the investment risk in new product development. I have found that many companies haven’t sufficiently incorporated IP into the process. This results in many missed opportunities.
First, the prior art needs to be fully taken into account to prevent both “re-inventing the wheel” and actual Freedom to Operate issues down the road. It is much easier to redirect the development effort at an early stage if the prior art issues are known. A side benefit of knowing the prior art is that inventive concepts created during the new product development can be readily distinguished from the prior art for patent application drafting.
Second, creating an IP strategy for the new product development will guide the team towards the type of IP needed to meet the objectives of the business. This could include a defined mix of composition of matter patents, process patents, application patents, enabled publications and trade secrets. If you know where you are headed, you are more likely to arrive at the right place. Contrast this approach with the one in which invention disclosures are written at the conclusion of the new product development at the initiative of the inventor, possibly just before (or after) product launch! In that case, the patent attorney is under tremendous pressure to get something filed before the product is publicly disclosed by commercialization or realizes that an on-sale bar has now complicated patentability, possibly negating it. By this point, there may only be limited IP vehicles left for the attorney to pursue.
Third, integrating an invention extraction process as a sub-process of the new product development process can facilitate the capture of all inventive concepts made during the development for a fuller range of IP protection possibilities. The key patents can be protected further by patenting the ways others might invent around them.
Many companies have found they can improve their IP value with appropriate inventor incentives. If the incentive is to reward quantity, you will get the results we got at Dow in the past: many patents of questionable value. If the incentive is to reward quality/value, then you will find your patent portfolio value increasing. From many inventor interviews and surveys, I have found inventors are motivated with peer recognition and to a lesser extent, money. Supervisors must allow inventors time to document and disclose their inventions and time to work with the attorneys on reviewing application drafts and reviewing examiner office actions. IP is a lengthy time investment, in focused bursts of activity over 3-6 years.
Most inventors are inexperienced in knowing what an invention is, what is patentable, how to articulate the invention and how to disclose it. Developing and implementing inventor training programs can be very useful in bridging this gap. Inventors need basic IP understanding: IP strategy of the company, why IP in important to the company, what is patentable, how to disclose their inventions and what the whole patenting process is. The training course or courses need to be relevant to the technology and experiences of the inventors. Dry, legal course content is rarely effective. Some companies have found that having a group of seasoned inventors that can serve as inventor mentors is very useful in helping less experienced inventors navigate the invention disclosure process.