Archive for Intellectual Assets
The Circuit of Innovation™
The Circuit of Innovation™ from Innovationedge
This image from Innovationedge is used in our book, Conquering Innovation Fatigue, to describe the relationship that needs to exist between intellectual assets and the marketing plan to complete the circuit that connects the power of the market to inventors. Leave out either a sound IA strategy (holistic or 360 IA™) or the marketing plan, and you’ve short-circuited your chances for success. Ideally, your intellectual assets are in synch with your marketing plan, meaning they reinforce the marketing story and tell a marketable story of their own, in harmony with the marketing plan. The strengths you sell to the market had better be reflected in some way in the intellectual assets (think more broadly than patents alone, of course). This will be part of our conversation tonight on Brian Fried’s hit radio show, GotInvention radio at GotInvention.com, broadcast at 7 pm Central Time.
Be sure to tune in next week on March 25 to hear Cheryl Perkins, CEO of Innovationedge, share more about what it takes to achieve innovation success.
Introduction to Defensive Publications
Here’s a brief Pixetell video presentation introducing some of the issues you should be considering in terms of defensive publications. Assistance with low-cost intellectual asset strategy is an important service Innovationedge offers for its clients. If you would like to know how we can help you save money and improve the results you’re getting with your IP budget, contact us and let us show you what we can do for you.
Don't Overlook the Power of Defensive Publications
One of the most important lessons I learned about intellectual asset strategy during my time as Corporate Patent Strategist at Kimberly-Clark Corporation was the value of aggressive defensive publications. IBM, one of the world’s leaders in extracting value from its patent estate, publishes about half of all its invention disclosures. John Cronin of ipCapital Group taught us some of the reasons for IBM’s aggressive publishing and some of the unexpected benefits of publishing. He was involved in IBM’s successful efforts in the 1990s to generate revenue by licensing its estate. One of their early efforts involved a patent for a technology (scanning tunnelling microscope) where the value of a patent estate ended up being reduced by about 90% due to a group of minor improvement patents on top of the foundational IBM patent. Many of the improvements were things that IBM had thought of but didn’t feel were worth the cost of additional patents. They realized that such improvements needed to be disclosed to create prior art that would stop others from getting patents for all those minor variations or minute improvements, thereby increasing the value of their own estate.
The IBM STM story is behind this passage from Richard Poynder’s 2001 article, “On the Defensive about Invention“:
As patenting strategies become more sophisticated, so the value of defensive publishing increases. It can, for instance, protect against picket-fencing – where competitors patent small incremental improvements in your patent in order to erode its value and enable them to license your technology on preferential terms.
In 1982, for instance, International Business Machines was granted a US patent for the scanning tunnelling microscope (STM) capable of imaging atomic details as small as 1/25th the diameter of a typical atom.
At first IBM dominated the STM field. By 1989, however, it had been picket-fenced by competitors.
“If IBM had published disclosures of all of the incremental innovation around their pioneering technology, they could have prevented others from picket-fencing them,” says Tom Colson at IP.com. “They would, in effect, have taken full control of the technology without putting patent resources at risk.”
Such blocking tactics can also be achieved by patenting the incremental improvements, but defensive publishing is significantly cheaper. “It costs $109 ( £75) per document to publish on IP.com,” says Mr Colson. “This compares very favourably with the $20,000 it costs per patent application to file in key locations worldwide.”
The price at IP.com has come up since then, but it’s still an incredible bargain. For a very small fee, your document is almost instantly published and time stamped, archived, and made searchable by the PTO and other patent offices, providing a lasting and secure record that the information disclosed was part of the public domain at that time.
Some of you with corporate R&D or IP experience have faced the pain of seeing competitors get patents on things you had considered long ago but thought were too “obvious” or minor to be worth a patent. An important lesson from IP litigation is that even an invalid patent can still be a major headache, one that can cost millions. Much better to reduce the odds of such nuisance patents by creating a strong body of prior art that discloses bells and whistles as they come up and also discloses various combinations that competitors might be working on to reduce what they can patent in the fields important to you.
Publications need to be crafted for strategic purposes. There are quite a few issues to consider, such as how to get the internal review needed to avoid harmful disclosure, how to get them written, what kind of incentives to provide for inventors/authors, whether to publish anonymously or not, and what venues to use (IP.com is one of my favorite), etc. I’ll be discussing some of these issues in the future, but feel free to give me a call if you’d like to learn more.
When Innovationedge helps a company strengthen their innovation strategy or IP strategy, defensive publications are usually one of the key topics we address. We find very few companies do anything serious in this effort, and many Legal Departments seem inherently geared to overlook the benefits that can be obtained with creative publications. That’s understandable. The IP attorneys are all about IP, and publications don’t fall into the “P” area of property. They are intellectual assets, however, that must not be neglected for cost-effective IP strategy.
25 innovative companies by patent ranking
Not too long ago Businessweek published a list of the 25 most innovative companies in the world. Check out the slideshow to see who made the list. This particular ranking was compiled by Ocean Tomo an intellectual-property consulting firm. The firm sorted through U.S. patents granted to the world’s 1,000 biggest companies in the past four years. Ocean Tomo then assessed the patents’ value by tallying, among other things, patent filing trends, litigation rates, and how many times each was cited by other applicants or in scientific and technical journals.
Patents: Valuable Tools for Advancing the Public Good
Many of our readers understand how a sound patent system can advance the public good. The US patent system, for example, is based on a social compact between inventors and the public in which inventors are asked to teach the world their secrets in exchange for a limited monopoly on the invention. For a few years, the inventors can control the rights to what they have invented, and then the patent expires, making it available to all. Meanwhile, by teaching how to practice the invention, knowledge is advanced and everyone’s boat is lifted. Take away the respect for intellectual property rights inherent in the patent system, and inventors would be more likely to protect their invention through secrecy, limiting the advance of knowledge and taking us a step back toward the so-called Dark Ages when much practical knowledge was kept secret in the minds of a few masters and guilds. Chances are you already understand that.
Interestingly, even for those who do not want to profit from their inventions but wish to turn them over to the public, patents can still be useful tools to advance the public good. This is true when there is a need to protect and maintain the quality of the invention for the public good. A great example of this principle comes from the story behind the foundation of one of the world’s most successful technology transfer organizations, the Wisconsin Alumni Research Foundation, known as WARF. Here is an excerpt from the history of the founding of WARF:
WARF’s creation traces back to UW-Madison biochemistry professor Harry Steenbock, who demonstrated in late 1923 that irradiation with ultraviolet light increased the vitamin D content of foods and other materials. Steenbock knew his invention held the potential to eliminate rickets, a crippling bone disease of children caused by vitamin D deficiency. He also knew that without proper management his advance might never reach this potential.
Thirty years earlier, one of Steenbock’s predecessors in the biochemistry department, Stephen Babcock, developed a novel test for determining the butter fat content of milk. Babcock consciously chose not to patent the advance, instead giving it “freely to the world.”
But Babcock quickly learned that without patent protection he had no way to control the accuracy and reliability of the “Babcock tests” developed by companies. In the rush to meet the demands of dairies clamoring for the test, many manufacturers produced sub-standard testing equipment and supplies, resulting in Babcock tests that often failed to work. The situation eventually grew so serious that state legislators had to intervene with regulations for standardizing the test. Although the invention was eventually accepted worldwide, Babcock reportedly regretted his decision not to patent the technique.
Determined not to repeat Babcock’s experience, Steenbock moved quickly to file a patent application with $300 of his own money when he discovered that irradiating rodent chow with ultraviolet light cured rickets in laboratory rats. Soon afterward, Steenbock was approached by the Quaker Oats Company, which offered him a deal worth nearly one-million dollars for the exclusive rights to his invention.
But rather than sell his discovery to a commercial concern for his own profit, Steenbock strongly believed that any monetary gains resulting from his work should return to the UW-Madison to support scientific research.
Steenbock went on to form WARF to provide a means for patents from the university to benefit the university and further advance the public good. Today revenues from the patents coming from the University of Wisconsin provide many millions of dollars to advance research in many areas, further raising the water level in the sea of knowledge and further advancing the public good.
By protecting a health care invention with a patent, Steenbock was able to ensure that the invention was applied properly and used to advance health appropriately. The control that the patent provided was critical for the success of the technology that went on to advance the quality of life of people all over the globe.