Technology is driving growth in unprecedented ways. Rapid technology development and implementation of technologies such as artificial intelligence (AI) within products and services make the critical role of intellectual property (IP) even more apparent. Generally speaking, IP is often a valuable and flexible financial corporate asset for technology companies that serves as a key data point for corporate valuations and investment. Every stakeholder, from the software developers to top management must aggressively participate in IP strategy for optimal results.
Canadian technology companies are becoming more concerned about their IP rights and those of their competitors. A recent Intellectual Property Awareness and Use Survey (IPAUS) report found that half of the businesses that own IP credit it with improving their success including competitive advantages, reputation, and goodwill as well as increased revenues. About half of information and clean technology companies were found to own at least one type of IP. However, a substantial number are not taking full strategic advantage of their IP assets to establish competitive advantage and increase profitability.
To bolster harvest innovation, technology companies are specifically focusing their attention on how their innovators innovate and empowering them to identify promising ideas for patent or trade secret protection. These efforts along with deliberate streamlining of the IP protection process with the coordinated help of internal or external IP counsel can bear valuable fruit.
“We need to get the product out the door NOW!” Technology companies are understandably focused on building products to get out to ready customers. While it is understandable that in the heat of day-to-day product development, taking steps to obtain IP protection fall to the wayside, this can result in the loss of important IP rights. When this is happening in respect of various technologies there can be a magnified loss of IP advantage.
“I’m worried that it will take too much time to work on a patent.” Often the amount of time and effort required is overestimated. Skilled patent practitioners can assist with the invention capture process to the extent where minimal time is required by a stretched innovation team. Existing documentation such as product specification documents, process flow (flowcharts), GUI screen captures and SRED applications can often be enough to start the preparation of a patent application.
“What does this competitor patent mean for us?” Building IP awareness for the technical team is important. This is best done by establishing an IP friendly culture and ensuring that ongoing discussions amongst innovators include implications relating to IP.
“If there is a truly revolutionary idea here, I’m sure management will pursue it.” There can be the perception that only exceptional ideas will merit patent protection. Generally, engineers and developers, especially more junior ones, tend to believe their ideas are “unworthy” of a patent and play down the novelty and inventiveness of their ideas. They can also feel unsure about how to flag the patentability of a new idea to management. It is important to encourage a culture where every innovator is encouraged to speak up about their technology ideas.
FOSTER AN IP FRIENDLY CULTURE
Intellectual property starts with innovators. Company innovators need to know that a company values innovation and is interested in hearing about new ideas for new products and services. Companies should regularly review their internal innovation capture channels, patent education, inventor incentives, and innovation mining program to ensure that they are providing sufficient positive reinforcement to foster an IP friendly culture. These measures demonstrate to the entire organization that IP is important and valued.
Internal Champions - Key to establishing an innovation friendly culture is having internal champions at all levels. A senior champion embedded in leadership who understands the value of IP and is willing to communicate to others about the importance of IP and to allocate time and financial resources to patent mining. In addition, it can be very helpful (but not essential) to have a second champion who can operate as a day-to-day facilitator. The internal champions are an essential conduit between outside IP counsel and the technical team.
IP Education - The best way to motivate internal IP development by employees is to provide education regarding basic IP concepts (e.g. Lunch and Learns) as well as the company’s IP policy. For example, it can be useful to have easy-to-digest handouts on the five types of IP, five steps of the patenting process, and the decision making between keeping an invention as a trade secret and patenting. More specific information on the patenting process, from search to filing, and hints on how to review prior art and patent application claims and descriptions can be useful for innovators who will be engaging in the patenting process with external IP counsel.
Productive Patent Mining - One particularly powerful way to harvest IP within an innovation friendly environment is to establish regular invention mining sessions. As a professional who has conducted invention mining with many IP savvy technology companies over the years, techniques such as the following have proved effective:
- Monthly IP Check-ins – A default monthly check-in session to provide education and answer questions about IP encourages on-going thinking and conversations about IP.
- Regular Pitch Sessions – Development teams working on products with high market potential can be tapped to “pitch” promising features they have developed to other innovators and to the IP team. The ensuing discussion can help innovators develop a sense for “what does it take for something to be patentable”.
Incentivize Innovation – The most innovative technology companies continue to rethink how to incentivize their employees to go beyond their regular scope of work and offer innovative solutions to challenges in the marketplace. Many technology companies provide employees with financial incentives to generate IP such as providing bonuses when new technology is identified and selected for filing as a patent application and/or issued as a patent. However, some studies have shown that non-monetary incentives that recognize and celebrate innovators for their contributions have been found to be more effective. For example, “shout outs” in the company blog, digital display of innovators and their contribution to technology and patenting status, personal call from management to note contribution, and allowing inventors to work on “meaningful” projects.
Empower Innovators to Participate in Patenting – The company champions and outside IP counsel should together empower innovators and guide them through the various stages of patenting to give the innovator ownership in the technology advance and its success in the marketplace:
- Innovation mining process
- Need for examples/data
- Drafting invention disclosure
- Drafting, filing, and prosecution of the application before patent office(s)
It is also worthwhile to include the inventor in the decision-making process on whether to monetize the idea.
Deliberate IP Planning and Tracking – Ensure annual reflection of an ‘IP Plan’. The success of an IP Plan can be measured and improved by reviewing quantifiable results. For example, the technical and geographic coverage of patent families can be reviewed on a regular basis. In addition, specific revenues associated with the licensing of patent families to third parties can be noted. The market success of patented inventions should be compared back to the investment amounts associated with obtaining patent protection to get a helpful perspective on patenting choices previously made. Finally, a record of actual and potential conflicts associated with competitor IP as well as a record of ongoing and resolved IP disputes can be kept.
Once employees are provided with a clear indication that their employers are committed about IP assets and a reasonable understanding of basic IP concepts, employees realize that IP can be an important part of their role in the organization and become motivated to monitor for, and identify, new technologies.
About the author
Isi Caulder is a partner, patent and trademark agent with Bereskin & Parr LLP and helps technology companies secure and license patent rights for a wide variety of electrical and computer related inventions.
This article previously appeared on the OBA Information Technology and Intellectual Property Law Section’s articles page.