By identifying the right problem to be solved, first! The problem with controlled flight was not weight and balance, like so many others had focused on. It was a pitch and yaw problem, something bicycle repairmen are experts at understanding.

Right Product, Wrong Customer?

A state of the art search is critical before any company enters into a new technology area. Results can provide a basis for making critical market decisions based on competitive intelligence. They will become a powerful navigation framework for any innovative product or process design and will keep development focused on the right customer.

When Chester Carlton, the inventor of the photocopy machine, spent years trying to sell his invention to large companies, but to no avail. But two small companies, the Batelle Memorial Institute and the Haloid Corporation (later to become the Xerox Corporation) eventually agreed to license the technology and manufacture the copier.

It then took Xerox 15 years before the first viable, user friendly model hit the market. And their challenges continued when the Arthur D. Little Consulting company report done for IBM advised that the Model 914 “had no future in the office copy market”

Yet in its first six months the Model 914 exceeded sales projections for the entire lifetime of the machine. The A.D. Little Report consultants had only done their research on mailroom managers and not the secretaries who became the primary customers.

Optimize and Monetize

Visionaries are by definition too early and with each passing, great idea they seem to only get more visionary. Most of Nikola Tesla’s inventions were too early to be commercially successful in his lifetime. Yet many of them now form the basis of entire new industries and have helped create millions of jobs.

Is there a “Tesla” in your collection of innovations? Have you built a great product that is too early to be commercially viable? The true litmus test for commercial viability is when customers will actually buy the product and in some cases – even prepay for it

Effective archiving allows a company to monetize that product development risk by legally safeguarding the IP until the market is ready to buy.

Or is there a brilliant process your company has perfected for your current industry that has an even more world changing impact when applied to another industry?

Remember, Henry Ford repurposed a process from the meat-packing industry that allowed mass production of cars. And Yo-Yo Ma’s cello bow measurement technique is now used to design every child’s car seat in the world. Capturing this IP can foster even more of the cross-pollinating breakthroughs that have been the hallmark of product success.

Today’s sophisticated workflows and collaborative environments make it imperative that creative work be legally safeguarded yet remain accessible to as a private archive. This will also serve to optimize the value of your R&D budget, potentially increasing your company’s balance sheet and adding measurable asset value to any future M & A.

We are on the cusp of a third industrial revolution that will raise the global standard of living yet again. Today we have access to an unprecedented amount of resources and we’re collaborating like never before. And yet there is no shortage of global problems that need to be solved. So go build that product that will change the world, by drawing on brilliance.

About The Author:

Jackie Bassett is founder and CEO of BT Industrials Inc., a strategic management and technology consultancy where she helps CEOs of global 500 companies design and execute on their innovation strategies. She was one of the first 100 employees at Netscreen Technologies; which started in 1997, successfully IPO'd in 2001, then was acquired by Juniper Networks in 2004 for $4Billion. Her background is in investment banking having worked at State Street International. Her innovation strategy work has been in a variety of industries from Telecom, to HealthCare, to Clean Tech, to Digital Entertainment, to Biotech. She holds an MBA from Babson College and a private pilot's license.

Forget the thinkers: who does this? One who can speak to this directly is Ross Smith at Microsoft. When in charge of the Windows Security Team, Ross and wingman Mark Hanson realized they had some incredible talent on the team that was under-utilized. They needed to innovate. As Ross studied innovation, he began to realize trust was the key to getting there.

Does it work for Ross? He’ll answer a resounding ‘yes.’

In the course of the next month, you’ll be hearing from several of these people: Eric Uslaner, Robert Porter Lynch and Ross Smith in particular, as well as others. I think you’ll enjoy reading what they have to say.

For now, let’s just notice what they all agree on: the road to innovation goes through trust.

About the Author

Charles H. Green is founder and CEO of Trusted Advisor Associates. The author of Trust-based Selling and co-author of The Trusted Advisor, he has spoken to, consulted for or done seminars about trusted relationships in business for a wide and global range of industries and functions.
Centering on the theme of trust in business relationships, Charles works with complex organizations to improve trust in sales, internal trust between organizations, and trusted advisor relationships with external clients and customers.

Charles started his career with the MAC Group and its successor, Gemini Consulting, where his roles included strategy consulting and VP strategic planning. He majored in philosophy (Columbia), and has an MBA (Harvard).

Trust Matters is his blog and he is also the founder of the monthly business blog review on the worldwide web known as the Carnival of Trust. We follow him on Twitter, as well, @CharlesHGreen

Once the key intellectual property has been identified then the next step is to look at what should be registered to protect it legally. This is where a great patent lawyer comes in to play. Good intellectual property lawyers don’t come cheap but considering the value that is created then it pays off to invest for all your major intellectual property.

Learn more about Trademark Registration Singapore and uncover how does a trademark lawyer and IP protection increase the net worth of your business overnight.

Article kindly provided by UberArticles.com

About Jeremy Phillips, in his own words.

I graduated from the University of Cambridge (Clare College) with a BA (Law) in 1973 and earned my PhD from the University of Kent at Canterbury in 1977 for my thesis on the allocation of intellectual property rights between employers and employees. From 1975-1976, while I was writing up my thesis, I was a Special Fellow at the University of California at Los Angeles (UCLA).

I have taught law full-time at Trinity College Dublin (1976-1980), University of Durham (1980-1984) and Queen Mary (1984-1987), returning to Queen Mary in 1991-1992 as Herchel Smith Senior Research Fellow. More recently, from 2003 to 2006, I was Professorial Fellow at the Queen Mary Intellectual Property Research Institute.

In addition, I spent two years as Managing Director of the publishing house that founded Trademark World, Patent World and Copyright World. I also launched Managing Intellectual Property magazine, which I sold to Euromoney Publications in 1991. Between 1992 and 1996 I was Registrar of the Court of the Chief Rabbi.

The biggest pool of patents is not at Samsung, or IBM, or LG or IBM or Microsoft, it is in the SME space.

We consistently hear (and at the conference, from the likes of Eli Lilly, Microsoft and Philips) that most innovation is occuring at the SME level.

Clearly most IP management is occuring there as well.

We have all heard about and constantly deal with IP silos within companies, managing IP as a profit centre (and not a cost centre) and communicating value to the Board.

Well, the vast majority of IP management has no silos, no profit centre, no cost centre, indeed no centre at all.

The vast majority of IP management is done where there is no IP function.

The challenge then, is to develop a set of principles and practices that are transportable across SMEs to large corporations. Accounting principles apply this way, as do marketing, sales, product development, indeed every other function.

Large entities have a great interest in helping SMEs to acheive this. They themselves often say that this is where they look for innovation. If they are to acquire IP from SMEs, then they would much rather that it had been carefully nurtured prior to acquisition.

Those of us charged with working in or with large and well resourced entities have an opportunity to make a substantial impact by leading the development of these tools.

[Photo credit: Clint M Chilcott and inventor of 'Light Emitting Diode Persistence of Vision Helmet']

About the author

Duncan Bucknell is an IP Strategist, lawyer, patent attorney and a veterinarian. He is a Fellow of the Institute of Patent & Trade Marks Attorneys and a Principal Fellow at the Melbourne Business School where he co-teaches ‘Strategic Management of Intellectual Property.’

Duncan is also an Associate of the Australian Institute of Company Directors and an Associate Fellow of the Australian Institute of Management.

Duncan is also one of three co-founders of Remarqueble, a provider of outsourced online trademark registration services.

L.L.B. (Hons), B.V.Sc. (Hons), B.Anim. Sc. (Hons)
FIPTA, AAICD, AFAIM
Phone: +61 (0) 427 003 423
Fax: +61 (0) 3 8640 0843
Email: duncan [at] duncanbucknell [dot] com

It's great to see this worldwide collaboration among the top patent blogs; bloggers who have learned the art of guest blogging and are showing others how it's done.

Here on Securing Innovation, IP.com is committed to a collaborative IP blog that is an integral part of the community of intellectual property professionals, attorneys, patent agents, examiners, strategists, and advisors. It's with a spirit of collaboration and mutual support that we've designed our corporate blog to feature a Guest Blogger with a prominent placement, rather than following the standard practice of including the guest blogger among the regular posts. This design gives the Guest Blogger a higher profile for a longer period than is usually the case on other blogs that publish guest authors. Contributed articles on Securing Innovation are also included in the permanent Guest Blogger Archives with a distinctive RSS feed for these featured articles. Looking at the lineup of featured guest bloggers, it makes a lot of sense to subscribe to this Guest Blog and add it to your favorite feed reader.

So far, we've featured the following Guest Blogger articles on Securing Innovation:

Remember Mr. Murphy When it Comes to Protecting Intellectual Property by Jason Shinn

Saving Your Intellectual Property by John Avellanet

Are Patents A Driver of Innovation or Just a Tax? by Stephen Albainy-Jenei

Should Management Be Involved In Patenting Decisions? by Clifford D. Hyra

Vote for the Top Patent Blogs by Gene Quinn

Technology Transfer Office Uses Workflow Software to Boost IP Management, Marketing by the Editor of Technology Transfer Tactics

August Carnival of Trust by R. David Donoghue

We're open to suggestions from bloggers who would like to be featured as a Guest Blogger here on Securing Innovation, the corporate blog of IP.com Inc. While we're not Patently-O and can't boast the traffic of, say, Patent Baristas, we are always keen to collaborate with IP Bloggers who have something interesting they'd like to share with readers of Securing Innovation and clients of IP.com who follow our corporate blog. We expect that several of the executives of our clients and customers, some of whom don't even have blogs, will want to publish an article in this forum of intellectual property professionals.

Got an idea for a post that you'd like us to publish or cross-post on Securing Innovation? Send an email to blog@ip.com and we'll be happy to discuss it with you. Nice people, we love cats and dogs.

You have to build your own credibility within your organisation as someone who reliably gets the job done. As you build trust with those senior to you, then your (ongoing?) commitment to communicating the value that can be added using intellectual property will become more prominent.

Make some (achievable) promises and then deliver. The more that you do this, the more credibility will be given to the IP function, and the greater awareness those senior to you will have. Some would call such a person an ‘IP Evangelist’ – I would say that they are just doing their job. People executing on difficult tasks bit by bit has always been what success is about.

As usual, Bucknell's analysis is excellent. A person's respect within an organization is at least as important as their title.

Running an organization is all about building trust.

The patent community focused much of its attention this week on the confirmation hearings for David J. Kappos, nominee for Director of the US Patent & Trademark Office. Click here for Patentability's summary of the hearing highlights and here for a copy of Kappos's statement at Patently-O. The hearings were relatively short, likely because there appears to be widespread trust in Kappos's background and abilities. And although much of the hearing focused on procedural patent office issues, Kappos showed he deserved that trust by focusing his statement on his plans to earn trust with all of the stakeholders in the patent world. He specifically addressed concerns that his corporate background could disadvantage individual inventors or academics:

I am mindful that the USPTO serves the interests of ALL innovators in this country, small and large, corporate and independent, academic and applied, and – most importantly -- the public interest. While I have spent my career to date at a large corporate enterprise, I am familiar with the concerns and issues of all USPTO constituents - including small and independent inventors, the venture and start-up community, public interest groups, the patent bar and many others - and will reach out to all of them.

Kappos addressed his plans to build trust with his employees at the USPTO:

I am mindful of the incredible dedication of the thousands of USPTO employees, and the essential role they play to the success of the US innovation system. I will work every day with the USPTO employees and the unions that represent them to establish strong, positive relationships grounded in professional treatment for these workers producing work product based on professional judgment.

He addressed the need to build global trust and relationships:

I am acutely mindful that innovation today is global and that IP policy is of paramount importance, not only in our country, but also in the EU and Japan, in China, India, Brazil and many other developing countries. I will use my international experience and my understanding of global IP trends to help this Administration represent, advance, and protect the interests of American innovators in the global arena and to lead the world in developing strong, balanced, inclusive intellectual property systems that advance the well-being of all participants.

And he addressed the need to build trust with the Administration he seeks to join and the American people the Administration serves:

Finally, I am mindful that the office for which I am being considered, working as part of Secretary Locke's team and within the Administration's agenda, must be intensely focused on how to serve the American people at this time of economic uncertainty.

Gene Quinn provides proof that Kappos's trust-building efforts worked in his IPWatchdog post about the hearings (click here to read the post):

In all, what Kappos said was certainly reassuring, and he should have absolutely no problem getting confirmed. If he does stay mindful of the needs of all those who use the USPTO, small, large and in between, and the interests of the diverse industries who sometimes need contradictory things in order to thrive, he will not only be a good leader, but he will be an exceptional leader and might really reform the Patent Office into the entity it can and should be in order to foster economic development and job creation in the US.

Walter Cronkite personified trust.

The passing of Walter Cronkite last month does not have much to do with intellectual property, but I could not do this month's Carnival of Trust without mentioning Cronkite. To me and so many others, Walter Cronkite embodied trust. Cronkite was the person so many turned to in times of national tragedy, like war, and in times of national triumph, like the Apollo XI moon landing. Naturally, Cronkite's passing caused numerous reviews of present-day news personalities and almost as many questions about whether times have changed so much that we cannot have another Cronkite. In the Chicago Reader blog, Whet Moser decries a poll that found the Daily Show's Jon Stewart to be the most trusted newsperson on the air today – click here to read the post. Frankly, the poll does not appear to be scientific and, therefore, not very trustworthy. But I have trouble arguing with the results. I love news. Three newspapers are delivered to my door every morning, and I read each one. Okay, I at least skim each one. I grew up watching the nightly news, but I now finding myself turning to Stewart for news programming more frequently than I turn to Couric, Gibson or Williams. I like and even trust all three. But Stewart has built a more powerful trust with me by calling out the problems with the 24-hour news cycle and by making me laugh. Stewart has some obvious biases, but he makes sure they are obvious and he creates even more trust by poking fun at both sides of most issues. Truth and laughter are powerful trust builders.

Cronkite deserves more than one entry in this Carnival, and the second comes from the Carnival of Trust's own Charles Green at his Trust Matters blog – click here to read the post. Green breaks down the components of The Most Trusted Man in America: 1) honesty; 2) selflessness; and 3) integrity. Green also explains that Cronkite's calm, baritone voice reinforced each of the three characteristics. I could not agree more. Hearing Cronkite's voice is an instant dose of trust.

For those not fortunate enough to develop their own "personal," trust relationship with Cronkite through his news programming, check out this NPR obituary to get some measure of the man and his history.

Credentials can generate and regulate trust.

At the Mediation Channel, Diane Levin makes a strong argument that legal mediators need to develop an accreditation system – click here to read the post. And IP mediator Victoria Pynchon responds at her Settle It Now blog with her own arguments for credentialing mediators for the good of mediators, the mediating parties and society's trust in the mediation system as a whole – click here to read the post.

How can companies build trust?

Building trust can be a slow and sometimes uncertain process. At his Touch Points blog, Steve Finikiotis cites a study suggesting that trust in corporation in the United States and other developed countries is at its lowest point ever – click here to read the post. In order to remedy the decreased trust, Finikiotis provides four trust building steps: 1)Focus on understanding and meeting customers’ preferences; 2) Under-promise and over-deliver; 3) Transparency; and 4) Encourage and foster feedback.

And although Finikiotis did not focus on this example, last month Amazon showed just how those steps do build trust. Amazon was accused of copyright infringement when a digital book seller used a self-service program to sell unauthorized copies of several books, including George Orwell's 1984, to Amazon Kindle users. When Amazon learned of the alleged infringement, it erased the books from its customers Kindle accounts. As you might expect, there was a public outcry. Kindle users were upset to learn that books they purchased and felt they owned could be removed from their devices and accounts. And Amazon sprang into action following Finikiotis's four steps:

1. Amazon listened to its customers' frustration at having the books removed and the possibility of future removals;

2. Amazon replaced the books;

3. Amazon's founder and CEO, Jeff Bezos, issued the following very direct and honest apology:

This is an apology for the way we previously handled illegally sold copies of 1984 and other novels on Kindle. Our “solution” to the problem was stupid, thoughtless, and painfully out of line with our principles. It is wholly self-inflicted, and we deserve the criticism we’ve received. We will use the scar tissue from this painful mistake to help make better decisions going forward, ones that match our mission.

With deep apology to our customers,

Jeff Bezos
Founder & CEO
Amazon.com

4. Through its response and apology, Amazon fostered feedback.

Amazon turned a negative situation into a very positive one. As a Kindle owner (and lover), I was very happy with the response and it has made me an even more loyal Kindle customer. And others agree. For example, Amazon's response helped convince PublicOrgTheory blog to go ahead with a Kindle purchase – click here to read the post. And In Propria Persona has qualms with copyright law, but saw the apology as good customer service and said it improves the likelihood of him purchasing a Kindle – click here to read the post. Finally, the Below the Line marketing blog says that "Amazon shows how to apologize," and notes that customer comments on the Amazon site have been largely positive since the apology; proof that Finikiotis's steps work. Nice job to both Finikiotis and Amazon.

And with that story of trust done well, thank you for reading, whether you are a regular reader of this blog or a Carnival of Trust groupie.

About the Author

R. David Donoghue is the creator and author of the Chicago IP Litigation Blog. But blogging is only one facet of Mr. Donoghue's legal practice. Mr. Donoghue is a litigator focusing on intellectual property disputes, with a particular focus on patent litigation. He practices in Chicago as partner with Holland & Knight. More specifically, Mr. Donoghue is actively involved in both asserting and protecting his client's intellectual property assets. His practice spans diverse technology areas including cellular telephony, computer software, automotive technologies, satellite radios, electrical and electronic products, television production equipment, nutritional supplements and numerous medical devices. He also has extensive intellectual property licensing experience.

Mr. Donoghue was previously with Delphi, the world's largest automotive supplier, where he was a founding member of Delphi's Technology Licensing and Litigation group and handled substantial international intellectual property litigation and licensing matters.

Mr. Donoghue served as an Adjunct Professor at the Loyola University Chicago School of Law, teaching Legal Research and Writing and Introduction to Intellectual Property. And at the beginning of his legal career, Mr. Donoghue served as a law clerk to the Honorable Gordon J. Quist, Federal District Judge for the Western District of Michigan.

Mr. Donoghue earned his B.S.E. in Aerospace Engineering magna cum laude from the University of Michigan and earned his J.D. cum laude from the Georgetown University Law Center. While at Georgetown, Mr. Donoghue served as the Current Developments Editor for the Georgetown Journal of Legal Ethics.

Inteum and similar systems are really a final destination for patent information, where TTOs can manage licenses, agreements, and payments, says Mark Didas, director of marketing for IP.com in
Amherst, NY. “InnovationQ works upstream and downstream of Inteum to assist TTOs in making better, more efficient decisions about disclosures and to provide a workflow that can help create nonconfidential summaries for the marketing team. Ultimately, we want to co-exist with Inteum -- and be able to funnel information in and out.”

The university is conducting a five-stage implementation:

• Stage one is organizing the foundation of InnovationQ and setting up a secure repository. This essentially involves the InnovationQ team “looking at the types of data you have and what data you are seeking to collect,” says Didas. On the security front, InnovationQ locks down files to maintain integrity and provide a defensible background, says McCoy. The IPMO chose to store data on its own secure servers, but InnovationQ also generates a digital fingerprint (date stamp) for
every version of a document within the system. And the system allows TTOs to give certain departments or individual users either full or limited access to specific documents, says Didas. “For example, some might have ‘read only’ access, where they can preview MTAs or licensing agreements.”

Increased transparency

• Stage two is one of two workflows currently in development, says McCoy. InnovationQ uses a web-based portal to achieve a completely automated invention disclosure filing workflow that allows inventors to collaborate online.

The current disclosure process at Oklahoma works like this: Inventors download the invention disclosure form from the IPMO website. They fill out the form, print it, sign it, and then send it to
IPMO. Tech transfer staff must scan the disclosure form to enter it into their system. “In doing so, the document becomes a picture, and none of the data is available to us for searching,” McCoy points out.

With InnovationQ, “an inventor will be able to log in and complete the entire disclosure process online,” says McCoy. “This not only offers convenience to our inventors, but it gives us a produced
document that is searchable. We are then able to pull search terms out of that document to use in our process of marketing the technology.”

An electronic submission process should ensure that “a TTO is getting consistent disclosures: disclosures that have the same format and that are capturing the same type of data,” adds Didas.
Researchers also can stay in the loop, he points out. “The researcher or the person who authors the disclosure can elect to receive a notification every time their disclosure passes a key milestone in the invention disclosure workflow.”

One of IPMO’s basic goals is “to become more transparent,” says McCoy. “The online functionality of InnovationQ should provide a significant step toward achieving that goal. We will be able to open
the doors and let our researchers see what we are doing and when we are doing it. In turn, they will be able to have more input into the process -- and we can have better communication with them.”

• Stage three sets up another workflow designed to work in sync with the invention disclosure workflow. Specifically, InnovationQ automates the disclosure analysis, “allowing a technology manager and all appropriate resources to together move a technology through the decision processes after the disclosure form is completed via the online process,” says McCoy.

InnovationQ is well established in corporate settings, but only entered the university TTO market about a year ago. As an early adopter, the Oklahoma TTO has worked with IP.com to define standardized “best practices” in disclosure analysis that will meet the needs of most TTOs, says McCoy. “At the same time, the workflow is flexible enough that it can be customized to the processes of individual TTOs.”

The InnovationQ workflow includes collaborative tools. For example, during the disclosure analysis process, a number of questions typically go back and forth between TTO staff, the inventor, and a patent law firm. “These conversations usually take place via Microsoft Word or e-mail systems,” says McCoy. “Currently, TTO staff can leave a note in Inteum referencing the conversation, but really none of these conversations gets tracked.” InnovationQ fills that gap, allowing staff “to have fully tracked and recorded conversations within a secure environment,” he explains. “This is really useful from both a defensibility standpoint and a functional standpoint.”

In addition, the system includes delegation and consultative features. A technology manager who is responsible for approving a document can delegate his responsibility for that record only to a colleague with greater expertise on the specific technology,
explains Didas. Or the technology manager can ask one or more subject matter experts to provide feedback on the technology before he makes a decision. “So InnovationQ can break the traditional workflow and send the record to another person to make an approval or a recommendation. Then the record will proceed on the normal workflow path,” he says. In addition, any changes to the documents are made while also preserving the original or previous version, so “TTO staff can see a full history of the document,” McCoy notes.

A TTO dashboard

• Stages four and five “are both new developments on the InnovationQ core system resulting from collaboration between [the university] and IP.com,” says McCoy.

Stage four sets up a dashboard system that manages the daily workflow of IPMO’s technology managers as they progress in the patent process. Didas offers this example of how the dashboard works for a licensing manager who is responsible for 20 disclosures
or patents: Once logged into InnovationQ, the user has a starting point called a technology manager view. From here, the licensing manager can see all of his 20 disclosures (and the status of each) as a starting point. “The manager would be able to answer such
questions as: Do we have a nonconfidential summary? Is this technology exposed on our marketing portal? Do we have a patentability study?” says Didas.

Then the manager can drill down on each technology and get a detailed picture, he says. “For example, if a disclosure or nonconfidential summary for a technology is being publicly exposed on the marketing portal, the manager can see the metrics (e.g., how many times it has been previewed). So from a marketing perspective, they can make some general assumptions about marketability based on the eyeballs that the technology is attracting.”

The dashboard is a technology overview, providing TTO managers with access to a complete information trail or history for each technology they manage, explains Didas. “In addition, the system will send personal e-mails to the technology manager when key events occur related to these technologies, and the manager can align related technologies within their system.”

The next release of InnovationQ -- slated for this summer -- will incorporate market due diligence into the dashboard, he says. “It will permit a technology manager to take the patent or technical
disclosure, as well as perhaps enter in key words related to that technology, and the system will return a list of companies patenting in that space, almost like an infringement alert.”

This function also helps with marketability analysis, giving TTOs a ready-made list of targeted marketing prospects, Didas comments. “For example, if you have a patent on a technology that prevents corrosion in titanium tanks and you do a search of related key words, you will find other companies that have patents on titanium or something to do with corrosion.”

Dashboards eventually will also be developed “for all levels of a TTO, inventors, and even university administration,” adds McCoy. “This is important from a transparency standpoint.”

Stage five is a technology marketing portal. “The marketing portal should provide typical business web functionality,” says McCoy. “For example, it will have different types of search capabilities, whether that is a tag search, a browse through, or a word search. The portal also will give us RSS feeds on specific technologies or groups of technologies, and people will be able to bookmark or take action on different technologies.”

These interactive features tie directly into the online disclosure system, notes McCoy. Technology managers can create nonconfidential summaries from the searchable disclosures and then publicly expose the summaries on the marketing portal, Didas explains.

Progress so far

The IPMO has installed the InnovationQ core system and staff are current testing it. His ultimate goal for the system is to generate more licenses. “We should have some hard data on whether this is working sometime in the late fall or in early spring 2010,” says McCoy.

The return on investment generated by a secure portfolio, better communication, and efficient automated workflow processes can be difficult to quantify, acknowledges Didas. “However, the system is designed for TTOs to be able to defer unnecessary costs by vetting technology earlier in the development cycle. The goal is for universities to be able to save resources downstream in, for example, legal costs for opinions, comprehensive patentability searches, and filing fees when they don’t pursue technologies that they decide are not patentable.” Factors influencing the cost of InnovationQ include “the number of modules, the amount of customization, the level of integration with other systems, and the number of workflows,” says Didas. “Typically, these modules are staggered to disburse costs while easing users into the new functions.” Considering the cost of one patent filing, many TTOs could cover the price tag by simply deferring two or three patents, he notes.

Contact McCoy at cmccoy@ou.edu or 405-325-3800; contact Didas at mdidas@ip.com or 716-362-4562, ext. 109.

About Technology Transfer Tactics

Technology Transfer Tactics monthly newsletter was launched in early 2007 by BizWorld, Inc, a privately held national science and business publishing company headquartered in Naples, FL. The founder, President and Publisher is Dr. Leslie C. Norins. The audience for this periodical is, broadly, anyone who has an important role in discovering, encouraging, funding or promulgating the transfer or translation of research into useful, practical products which can yield wide benefits. The readership includes institutional directors and managers of technology transfer or translational research, laboratory chiefs, venture capitalists, corporate development officers, intellectual property attorneys, and licensing experts. Subscribers come from the nonprofit, for-profit, and government sectors, worldwide.

Click here to subscribe to the Technology Transfer Tactics monthly newsletter.

You may be used to people referring to a product and saying “that’s patented.” But, while products can be covered by patents, a patent should generally not protect a single product alone. A patent should protect your innovation. If you invent a new lamp, your patent claims should not just describe as your invention the exact lamp you plan to make and sell.

Rather, it should capture the full scope of your innovation- what is it about your lamp that is new and better than other lamps? Your patent should ideally cover any new product including your innovation, not just the particular one you want to sell or have in mind.

Jackie Hutter has written a good article emphasizing the importance of properly defining the scope of your innovation- and of getting management involved in the patenting process to make sure that happens.

A SVP at a large consumer products company recently expressed frustration that he cannot bring a patent infringement lawsuit even when his company holds 18 US patents (and many other foreign patents) on a product that closely resembles a competitor’s product… The competitor’s knock-off product has been successful because they have removed much of the cost from the product by using less expensive ingredients, while still being able to maintain its desirable performance aspects…

So why can’t the SVP go after the competitor by suing on one or more of the 18 US patents for which his company paid so dearly? Quite simply, the patents cover the INVENTION not the INNOVATION. The difference is subtle, but critical. The invention centered on the plastic composition of the product, that is, how much of each ingredient was present and how that composition manifested in the finished product. In contrast, the innovation centered on the performance of the product, irrespective of the plastic composition…

The reason for this situation is clear: the 18 US patents were prepared in a R & D/patent attorney “silo” where the “cool factor” was considered to be the attributes of the plastic composition, not the attributes of the final product…

After hearing my explanation for his frustration, the SVP wondered aloud how to learn from this costly patent lesson. I told him that the answer was easy: he must dismantle the patenting silo where his patent attorneys work only with his R & D team. Instead, his business team must drive the patenting process at his company by holding primary decision rights on what patent applications his company files and what those applications cover.

Management is sometimes better at keeping their eyes on the ball. The goal is to grow your business and make more money, not to accumulate patents. Jackie also endorses something I always recommend to my clients- a brainstorming session where you try to think of ways your competitors could knock off your product. The results of such an exercise can be a great help to a patent attorney in preparing your application with sufficient breadth to encompass the design-around attempts of your competitors.

By the way, this is another great illustration of the importance of relying on a good patent attorney. Claim/application scope is an art. If a large company with a big patent firm can make a mistake like this, just imagine what can happen when an inventor tries to put together an application on his or her own.

About the Author

Clifford D. Hyra, founder of Hyra IP, PLC based in Reston, VA, is a registered patent attorney with extensive experience in the intellectual property field. Located not far from the United States Patent and Trademark Office in Alexandria, Virginia, the firm specializes in intellectual property law, including patent prosecution in the mechanical, chemical, electrical, medical, computer software, biotech, and business method arts. Hyra IP is a national and international practice with a geographically and philosophically diverse portfolio of clients. Clifford has prosecuted hundreds of patent and trademark applications in the United States Patent and Trademark Office, negotiated the settlement of patent and trademark disputes, conducted trademark cancellation and opposition proceedings, appealed to the Court of Appeals for the Federal Circuit.