Archive for Patents
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.
Who’s Mining the Shop? The Need to Mine Inventions in Companies, Universities
“Who’s mining the shop?” This is a question that needs to be asked for every university, company, and organization capable of creating inventions. In my corporate and academic experience (am the former Corporate Patent Strategist at Kimberly-Clark Corp., and was a professor before that), numerous inventions never get the protection they deserve because nobody was there to coach the inventors, to recognize the potential for intellectual property, and to do the extra work required to develop a sound IP strategy for the work. Many inventors know almost nothing about intellectual property. Many don’t even recognize that what they have developed is an invention. This can be especially true in businesses when the invention is developed outside of a normal R&D department, such as a new business method or software tool. But even research scientists and professors may miss the patent potential of their work unless there is someone there to coach and guide them.
Technology transfer offices are charged with this task in many universities, and legal departments or patent review boards have this duty in many companies, but both can miss huge opportunities unless there is someone who goes out to mine the organization for inventions. That involves reaching out to groups and individuals, educating them (often in presentations or group meetings) about intellectual property, being available for one-on-one discussions, asking questions, looking for signs of exciting developments, being an advocate and mentor, and constantly mining for IP gold. These are activities that we at Innovationedge have done for some of our clients, with exciting results. Let us help you develop a plan to capture more of the inventions that are in your midst, and to generate new intellectual assets (including low-cost assets) to build a powerful portfolio.
One of the many exciting experiences I had at Kimberly-Clark came after recognizing that a particular remote mill had developed some clever solutions to a few problems they were facing. After further inquiries, I learned that the mill had some very bright engineers who were solving lots of problems in clever ways. I suggested that there may be some patent opportunities coming out of that mill, and arranged a trip where a couple of us would spend a couple days there giving presentations and doing interviews of team members to see what they might have. I found many exciting and potentially patentable advances from their work, and ended up working with them to generate nearly a dozen invention disclosures, several of which were filed as patents. This created a lot of excitement for the mill and helped them pay more attention to the IP potential of what they were doing.
As with that mill experience, part of successful mining involves helping people write up the initial invention disclosure. When people are very busy and writing disclosures doesn’t fit their job description, someone needs to be the assistant/mentor who basically writes it for them, taking away the pain of the IP process. It requires resources, but it can lead to substantial returns.
We would be happy to work with you to examine your organization and determine what you could achieve by applying some additional resources to help generate IP through proactive mining. Mining and generating intellectual assets for clients are among our favorite services that we offer. We consider it an important step toward overcoming innovation fatigue in some organizations.
Who’s mining the shop? Great question. Give us a call today and let us help you strengthen your mining efforts.
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.