Mark Didas - Securing Innovation http://www.securinginnovation.com/mark-didas.html is the Director of Marketing at IP.com. Mark's primary focus is on the accumulation of unique and rare prior art content. His background covers marketing, corporate branding, business development, IT, technical development, and general management. He has extensive knowledge in creating dynamic user interface and custom web experiences. Mark graduated from Syracuse University with a degree in communications. en-us Copyright 2008 Mon, 28 Apr 2008 12:14:09 -0500 Tue, 19 Aug 2008 10:11:16 -0500 http://www.movabletype.org/?v=3.34 http://blogs.law.harvard.edu/tech/rss IP.com at Bio-IT World Conference in Boston Bio-IT World Conference & Expo at the World Trade Center in Boston showing off the latest version of InnovationQ. This release, version 3.1, adds several major new features to the InnovationQ platform.

InnovationQ

InnovationQ helps companies safeguard their intellectual property, derive more value from ideas, and speed the monetization of innovation. With streamlined processes and a secure system for managing innovation, InnovationQ effectively protects and enhances intellectual property from its earliest stages.

Version 3.1 incorporates collaborative features within the InnovationQ platform. With InnovationQ, users can now efficiently communicate as a team in an environment that secures their ideas as intellectual property. Combined with the workflow engine and document management capabilities, InnovationQ delivers full-featured innovation and intellectual property management solutions.

Next month, we'll be at the PharmaBiotech IP Summit in Philadelphia.

See what's happening here at IP.com in the weeks and months ahead, and where you'll be able to meet up with us between now and the Bio International Convention in San Diego in June.]]> http://www.securinginnovation.com/2008/04/articles/innovationq/ipcom-at-bioit-world-conference-in-boston/ http://www.securinginnovation.com/2008/04/articles/innovationq/ipcom-at-bioit-world-conference-in-boston/ Bio International ConventionBio-IT World Conference & ExpoIP.com, Inc.InnovationQPharmaBiotech IP Summit Mon, 28 Apr 2008 12:14:09 -0500 mdidas@ip.com (Mark Didas) Innovation & The University-Industry Interface "The day academia & industrialists can smoothly inter-connect, inter-operate & forge alliances of equals, will be the beginning of an era of smooth, continuous innovation." - Desmond Aubery

That's a perceptive observation pulled from the comments to a great article "Innovation and the University-Industry Interface" republished on Xconomy, which begins with this thought:

The buzzword of the 1980s and ’90s was “entrepreneurship.” This decade, the obsession is with “innovation” as the presumed path to riches for people and nations. Since the key generators of innovation are research universities and the key implementers of innovation are companies, there is an ever-increasing focus on making the university and industry interface more effective. But will the twain meet? It could be very difficult.

I thought the article was well worth reading again and, as I'm preparing to head off  to "Changing Horizons", the 2008 Annual Meeting of the Association of University Technology Managers (AUTM), the following quote from the article caught my attention:

Academic institutions have huge reputations and visibility, but a very small or dedicated core staff. For instance, MIT is huge in reach, breadth, impact, and reputation. Yet its core faculty has hovered around 900 since 1950. Contrast this with IBM at some 350,000 employees.

IP.com works with major companies, helping businesses manage innovation, and recently we've been talking with technology managers at universities about leveraging our innovation management applications and technologies to create a customized interface between academia and big business. As noted in the New York Times:

The obsession with marrying research and markets, while generally a strength of American capitalism, leaves some needs unmet. To fill them, “companies need boots on the ground at universities,” says Henry Chesbrough, a business professor who studies innovation at the University of California, Berkeley.

We're really looking forward to meeting with the intellectual property professionals at  AUTM, a nonprofit professional association with membership of more than 3,600 intellectual property managers and business executives from 45 countries.  This looks like an especially interesting part of the conference program:

Innovation Showcases: academic and government technology transfer offices, along with university-based startup companies, present the latest and greatest technologies in life sciences and physical sciences to affiliate members in these rapid-fire, business-oriented sessions. The Showcase will be followed by AUTM's new "Getting Down to Business" Social Hour, a reception for academics, company representatives, investors and other service providers an opportunity to get to know each other in a relaxed social setting.

Who knows what new technology developed at universities will be showcased? I wonder if there will be anyone from the University of Michigan to talk about the new Hercules laser announced this week. Wow!

If you're planning on attending the annual meeting of the Association of University Technology Managers in San Diego from February 28th to March 1st and would like to get together and chat about what we can do to bridge the technology transfer gap between universities and corporations, please give me a call or email and we'll set something up. Perhaps we can connect you with the people at our corporate clients that share the vision for an innovative university-industry interface.]]> http://www.securinginnovation.com/2008/02/articles/innovation-management/innovation-the-universityindustry-interface/ http://www.securinginnovation.com/2008/02/articles/innovation-management/innovation-the-universityindustry-interface/ AUTMAssociation of University Technology ManagersInnovation Managementtechnology transfer Wed, 20 Feb 2008 13:36:06 -0500 mdidas@ip.com (Mark Didas) Verified Publication and Prior Art PubMed Central (PMC) is a free digital archive of biomedical and life sciences journal literature at the U.S. National Institutes of Health (NIH), developed and managed by NIH's National Center for Biotechnology Information (NCBI) in the National Library of Medicine (NLM).

Recently, on the Patent Information Users Group discussion list, we picked up an email conversation among registered users of the PIUG that raised questions and concerns that re-publication on PubMed Central, while a valuable additional source for online access to information that might be evidence of prior art, does not help establish with any authority the "publication date" or the "public availability date" of the information published in participating journals. As one industry specialist observed:

Websites are notorious for not posting availability dates or publication dates, or for posting dates that later get revised with reloads. Just as masters theses are often problematic prior art documents, not just from a retrieval perspective, but from proof of publication or public availability dates. Universities vary widely in their treatment of their own Masters theses. Some are accessioned like standard publications, get date stamped, cataloged normally,etc., but others merely sit on special collection shelves with no way to prove public availability until someone checks them out!
It is certainly difficult, if not impossible, to verify publication dates of online content. That is why many companies and individuals publish their documents not only in a specific trade journal, but also in secure online environments such as the IP.com Prior Art Database to provide a non-refereed destination for technical disclosures and other documents which need verifiable dates of publication.

If participants in this discussion on the PIUG discussion list and other readers here would like to share thoughts and experiences verifying dates of publication of online documents, we'd be very interested in your comments.
]]> http://www.securinginnovation.com/2008/01/articles/prior-art-database/verified-publication-and-prior-art/ http://www.securinginnovation.com/2008/01/articles/prior-art-database/verified-publication-and-prior-art/ Defensive PublishingPatentsPrior Art Database Sun, 27 Jan 2008 19:46:18 -0500 mdidas@ip.com (Mark Didas) Publishing to IP.com's Prior Art Database
Companies which prefer to set up corporate accounts that share a pool of vouchers can contact an IP.com representative at 1-585-427-8180. Limited free searching of the Prior Art Database is available. Full access and robust searching such as patent examiners enjoy, including unlimited downloading of documents, is available for an annual fee. Our search facility allows for full text, concept or fielded Boolean searches.

Content of a technical disclosure

Submission of your technical disclosure for publication via the IP.com website is accomplished by a simple series of steps, each of which has instructions and links to get further information if necessary. The most significant element that is required by the disclosure submission process is the primary document - the document containing the technical disclosure itself. Your primary document should contain the full text and, optionally, any graphics associated with your disclosure. Many standard formats are accepted, including Microsoft Word® (DOC), Microsoft PowerPoint® (PPT), PDF, HTML, Rich Text Format (RTF), and clear text (ASCII) files.

If you so choose, you can put supporting materials into the attachment - a secondary file that may be uploaded during the submission process. Files of arbitrary format are accepted as the attachment, allowing you to publish output from CAD programs, graphics programs, or virtually any other program that you use. It is possible to publish a disclosure with multiple attachments by bundling the attachments using various technologies. If you use a ZIP utility for bundling, the disclosure publishing process will optionally unpack the ZIP file into individual attachments.

Solving Business Problems and Managing Risk with Technical Disclosures]]>
In the process of publishing a technical disclosure, you will be prompted for the following elements, many of which are optional:

  • Title for primary document in English (required)
  • Abstract for primary document in English (highly recommended)
  • Information on author/s and related persons, including name/s and relationship/s to document (optional)
  • Copyright statement (optional)
  • Country of origin (optional)
  • Primary language of document (recommended)
  • Classification (optional)
  • Information on related documents - type, citation, etc.(optional)
  • Filename/s and location/s (on your computer) of the primary document(required) and attachment (optional)

Anonymity

In addition, the IP.com publication process will allow you to choose whether the document should contain authorship information. If you select "no authorship" early in the publication process, several steps will be taken to help you assure yourself of anonymous publication, including:

  • Your primary document will be renamed and translated into an Adobe PDF file, to remove hidden fields (such as author or company name) that are in certain formats
  • This PDF file, and not your original document, will be included in the publication
  • Steps in the submission process that request your contact and copyright information will be skipped

Of course, you need to be careful not to include information in the clear text, headers, graphics, or other viewable elements of your document that can be used by competitors to identify you as the author of your disclosure. Obviously, IP.com cannot remove this sort of information.

Publication of your disclosure

After you enter the bibliographic information that you decide to publish, and after you upload the primary document and (optionally) the attachment, your part of the publication process is complete. Automated processes then perform the operations necessary to digitally fingerprint the documents, package the full disclosure (bibliographic data, primary document, attachment, and fingerprints) into a zip file, assign a unique IPCOM ID to your disclosures, notarize the entire package, index the bibliographic information and the full text of the primary document, and make the full disclosure available to searchers on the web. You receive notification of the publication of your disclosure via e-mail, usually within a few minutes of your submission.

For an additional fee you can also have all or a portion of your disclosure printed in the monthly paper publication, the IP.com Journal. This Journal is distributed to libraries throughout the world, including the Library of Congress. It is also distributed to many major patent offices worldwide.

The IP.com disclosure submission process is uncomplicated, yet sufficiently flexible to be more than adequate for all your technical disclosure needs. Additional information is available on our website, but if you have any questions that remain unanswered, or want to set up a corporate account, please feel free to contact us.]]> http://www.securinginnovation.com/2007/12/articles/prior-art-database/publishing-to-ipcoms-prior-art-database/ http://www.securinginnovation.com/2007/12/articles/prior-art-database/publishing-to-ipcoms-prior-art-database/ Defensive PublicationDefensive PublishingPrior Art Database Sun, 02 Dec 2007 05:04:18 -0500 mdidas@ip.com (Mark Didas) Writing Technical Disclosures
Flexible, controllable technical disclosures

Anonymity - Published technical disclosures have several unique advantages relative to other publications. For example, unlike conventional publications, disclosures can be published anonymously, allowing an author to safely disclose information that might otherwise be useful to a competitor's intelligence function or that could be offensive to a business partner. Clearly, certain instances of the customer/supplier control tactics might be quite problematic if your publication could be linked back to you.

Speed - Another advantage of the published technical disclosure is that it can be published extremely rapidly (relative to peer review publications). In fact, technical disclosures can be published in minutes, as opposed to weeks or months. Every day counts in matters pertaining to publication of inventions and patentable technology, since the outcome of patent prosecution and interference actions often depends on differences of days or weeks.

Format Flexibility - Even the formats of published technical disclosures can vary significantly, depending on the particular goals of the author and the complexity of the disclosed technology. The length of disclosures ranges widely, and many can be found that are less than a page long although some are many pages. A typical disclosure is one or two pages in length and often contains nothing other than a title, an abstract, and a description of the invention, although it may also contain graphs, chemical structures, process charts, citations, tables of data, etc.

Content Control - Finally, since they are not subjected to peer or editorial review, the author has full control in determining the content. This should be used to your advantage in your writing. For example, you can choose which pieces of an invention to disclose and which to keep secret. Or you can provide market information regarding the potential value of the invention if your purpose is to advertise your pending patent. You can choose your context and citations based on how you want readers to think about your technology, or you can suggest wide ranges of applications. It all depends on your goals in writing the disclosure, as the next section describes.]]> Solving Business Problems and Managing Risk with Technical Disclosures

Technical disclosures fall into one of three general categories, based on the goal behind the disclosure:

a) Impacting future patentability of an invention via anticipation or lack
of novelty
b) Impacting future patentability of an invention via obviousness
c) Not aimed at impacting patentability (for example, disclosures aimed at
promoting technology for licensing)

a) Impacting patentability via anticipation

In order for a publication to anticipate an invention, the publication must be "enabled" and must describe the exact same invention. But what is enablement? For your disclosure to be considered "enabled," it must describe the invention in sufficient detail to enable a person having ordinary skill in the art to carry out the invention without undue experimentation.

To provide enablement, certain characteristic content is usually included in a technical disclosure. For a composition of matter invention, writers often include relevant synthetic procedures, formulas, equations, experimental conditions, compositions, etc. For a method or process invention, it is often useful to include flow charts, diagrams, or chemical equations. A disclosure describing a machine invention will usually contain diagrams and figures showing the essential elements of the invention. An article of manufacture invention will normally contain figures of essential elements. In lieu of including these items, it is permissible to include citations to these enabling items if they exist in other publications.

Generally, there is no compelling reason to publish this type of disclosure with full authorship. Indeed there are reasons to argue in favor of anonymous publication, including the possibility of straining important business relationships if the disclosure catches the attention of customers or suppliers, and the possibility of facilitating competitive intelligence against your company.

b) Impacting patentability via obviousness

A patent will be rejected if prior art makes the invention obvious. The wording of section 103 of Title 35, United States Code, is typical, indicating that a patent should not be issued "... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains..." Disclosures aimed at an obviousness rejection are the most common type. A patent examiner can combine multiple prior art references to arrive at a rejection based on obviousness. Therefore, brief disclosures that do not contain a lot of detail, and are not enabled, can still be effective in preventing a future patent. The possibility of an obviousness rejection gives rise to many short technical disclosures that are little more than a brief description of an idea. However, patent rejections based on obviousness may be somewhat easier to

Solving Business Problems and Managing Risk with Technical Disclosures defeat than those based on novelty. The reason for this is that in the case of obviousness rejections, certain secondary considerations can be taken into account to demonstrate non-obviousness. These secondary considerations include indications that others have previously failed to solve the problem solved by the invention; the invention solves an unrecognized or otherwise insoluble problem; the invention enjoys rapid commercial success; the invention solves prior inoperability; or the invention solves a problem in a way that is contrary to the prior art's teaching.

Thus, it is fair to say that in terms of potential for preventing a patent, a more detailed disclosure is generally better. Nevertheless, the extra effort involved in writing a fully enabled disclosure and the additional amount of information disclosed to competitors must be carefully weighed against the benefit. Since an examiner can combine multiple references to arrive at an obviousness rejection, it can be beneficial to include references and/or citations in your disclosure to increase the likelihood of an examiner finding related prior art. However, this is far from being a requirement, since the examiner may combine your disclosure with prior art you don't reference, and in ways you can't currently imagine.

As with disclosures aimed at impacting novelty, there is generally no compelling reason to publish this type of disclosure non-anonymously.

c) Not aimed at patentability

Many technical disclosures are published that are not aimed at preventing future patents by others. Goals of disclosures that fall into this category include promotion of licensable technology, luring competitors into adopting your patent pending or patented technology, or promotion of a technical standard. Due to the diverse nature of disclosures in this category, it is not possible to provide guidelines on format or style, since the specific goals and subject matter will dictate the appropriate format and content.

Clearly, if the goal is related to overt promotion of technology for licensing, it is important to publish non-anonymously and include contact information in the appropriate bibliographic fields during the publication process. In this sort of situation, it is also important to use an industry-standard lexicon to help interested searchers find your disclosure. For the same reason, it is useful to include references to appropriate categories and/or product names.]]> http://www.securinginnovation.com/2007/12/articles/defensive-publishing/writing-technical-disclosures/ http://www.securinginnovation.com/2007/12/articles/defensive-publishing/writing-technical-disclosures/ Defensive PublishingPrior Art DatabaseTechnical Disclosures Sat, 01 Dec 2007 05:02:12 -0500 mdidas@ip.com (Mark Didas) Getting Started With Technical Disclosures
Check off the easy tactics

If you've never utilized technical disclosures before, it's clear that you'll need to make some changes in order to integrate these new methodologies into your existing processes. This doesn't, however, mean that it will take a long time to start utilizing the power of technical disclosures. Luckily, there are some tactics that are easy to implement, require little or no additional processes, and yet provide substantial benefits for very little cost. These are ideal situations in which to apply the power of technical disclosures immediately.

Information that is already in the public domain (albeit in an obscure publication) is an excellent place to let technical disclosures start to work. Re-publishing existing materials with the express intent of making them more accessible to examiners can help ensure that bad patents do not issue on disclosed information. The act of publishing this information requires no strategic consideration on your part, as there is no question of the suitability of any particular innovation for public release. Typical items that should be published, or more accurately, re-published in this manner, are:

  • conference proceedings
  • product information
  • product manuals
  • marketing literature
  • advertisements
  • journal articles
  • obscure prior art relevant to your IP domain
  • rejected patent applications (with reasons for rejection)

All these should be disclosed as they become available. In addition, recent instances of these documents are likely to be easily located and published. For many companies, even older documents can be located and disclosed for the protection they afford.]]> In addition, those companies with active licensing programs will find benefit in early publication of a pending application. Doing so is easy and makes good sense in nearly all cases where licensing is the goal.

Look for high value

Ease, however, should not be the only consideration - certain high value tactics should also be considered when deciding where to begin, including the following:

  • Protecting your patents from picket fencing by ringing your own patents with technical disclosures
  • Disclosing your patent applications to overtly or covertly encourage technological dependence and therefore licensing revenue, or to prevent issuance of similar patents (by a different examiner or a different
  • patenting authority) which could result in costly interference actions
  • Publishing your incremental inventions and new uses of existing patents
  • Retaining your freedom to practice innovation you decide not to patent, whether the innovation is rejected by the patent review committee or by the inventor him/herself

These actions provide real strategic IP value, but require that inventors and invention review committee members recognize the value of choosing technical disclosures. When used properly, technical disclosures should outnumber patent applications significantly in an enterprise. Some of the more advanced tactics may not be used daily, but they can have
enormous business impact. These include:

  • Customer/supplier control
  • Technology standard promotion
  • Pied Piper (covert standards promotion)

Whereas these are unlikely starting points for your use of technical disclosures, you should be sure to educate researchers, product managers, business managers, innovators, and IP legal staff of the applications of technical disclosures in their workflow - and certainly everyone on intercompany collaboration teams should be aware of the inherent risks and of the opportunities available through technical disclosure.

What's the bottom line? Start today with what is at your fingertips, and then begin to look at how you can change old processes and institute new best practices that will provide you with maximal value for your IP dollar.
]]> http://www.securinginnovation.com/2007/11/articles/defensive-publishing/getting-started-with-technical-disclosures/ http://www.securinginnovation.com/2007/11/articles/defensive-publishing/getting-started-with-technical-disclosures/ Defensive PublishingPrior Art Database Fri, 30 Nov 2007 04:41:32 -0500 mdidas@ip.com (Mark Didas) Solving Business Problems and Managing Risk with Technical Disclosures
For our purposes, the invention review process represents an organization's work process for assessing what should be done with new inventions and defining the scope of any patent application. It is typical for an IP management team (with input from appropriate R&D, business, and legal management) to handle this work process. It is in this domain that a clear understanding of the power of technical disclosure can save hundreds of thousands (or even millions) of dollars in fees associated with patenting technology that you might eventually discover is of marginal or no value. Retain your right to use your non-patented innovation At the time of invention review, you have some tough choices to make. The prohibitive cost of obtaining patents will force you into separating innovation between those which are deemed to be critical to your business and those which are not. Resources are limited - you have to make sure you fight the right fight!

Nevertheless, you have to be careful. Although the innovation you don't patent is deemed non-critical to the operation of your business, it doesn't mean that it wouldn't cause inconvenience and expense if you were prevented from using these inventions due to a competitor's patent. If a competitor obtains a patent on an innovation you failed to patent, you have three options. You can try to invalidate the patent, which will lead to a costly trial (in terms of both time and money). You can continue to use the innovation (and pay licensing fees). Or, you can devote time and money into developing ways to work around the patent.

The far simpler and more cost effective way is to prevent a competitor from obtaining a patent in the first place. At the time of your invention review, release your non-critical innovations to the public via a technical disclosure. This will establish your innovation as public domain, and prevent others from obtaining patents that can block your use.

When trying to decided whether to patent or publish, there is one highly effective question that can help you decide which is the better course: "If someone were to infringe this patent, would it be worth my while to defend my patent rights in court?" Certainly, it is unwise to spend more in litigation than you could hope to gain in judgments, royalties, and licensing fees from an infringer. And if your patent is not worth the millions you would spend defending it, is it worth the tens of thousands you would spend to acquire and maintain it in the first place? These questions are worth asking, since for a small fraction of these costs you can protect your freedom to practice your invention by publishing a technical disclosure.]]>
Patent enhancements and new uses

Your research and development program not only creates core innovative technology, it also matures the use of the technology in the context of products. Many of the innovations discovered in this innovation development process are patentable, even though they are only incremental in nature and fully dependent upon the core innovation. If you do not protect these inventions, picket fencers might patent them and negatively impact your freedom to practice your own innovation. A well-designed picket fence can even block your approach to the marketplace. But does it make sense to spend tens or hundred of thousands on application and maintenance fees for innovations that don't really need individualized protection?

A more cost-effective approach is to patent fundamental technological advances and then use inexpensive technical disclosures for incremental innovation. This standard defensive disclosure tactic can prevent the patents others would use to build picket fences around your patents. By surrounding your core patent with disclosures you effectively lock out all others and leave your patent as the only exclusive technology in the space. In effect, you expand the scope of your original patent by making it obvious how to use the protected technology in actual applications.

As with incremental improvements of fundamental technology, you can publish all new uses of an invention to protect your freedom to practice. This ensures that your original patent extends its protection into areas of new application. Using technical disclosures as a barrier against picket fencing also improves your position in licensing negotiations. Since your patent is well protected, forced cross-licensing can be prevented, and you can dictate the terms. During your invention review, you should ask yourself the question, "If I could be sure that nobody else can patent this invention, would I actually need a patent?" If your other patents provide you the leverage you need, then publish a disclosure to protect your freedom to practice, and save yourself many thousands of dollars in the process.

Old or obscure prior art

Opportunity for this tactic often arises when obscure prior art is identified during a prior art search performed in preparation for filing a patent application. It is particularly pertinent in situations where such prior art causes you to reduce the scope or even give up the idea of filing a patent application. In this situation, it is essential to make sure that patent examiners can find the obscure prior art that you found as they consider applications from your competitors. Essentially, this takes the legacy document best practice one step further to include old prior art anywhere in the world. The fact that prior art is already in the public domain does not mean an examiner can find it during a prior art search. A hidden reference is of absolutely no value in preventing a bad patent from issuing. Rather than risk the time and expense to fight such a patent, a technical disclosure of old prior art (including the date of the original publication as well as a reference to it) will bring the old prior art to the attention of examiners. If copyright is a concern, a summary of the prior art reference can be published in the disclosure with a reference to the original. A common example of this tactic is publishing summaries or translations of foreign-language prior art references. Awareness of such a foreign language document may have caused you to abandon hopes of patenting a given technology, yet it is likely that others, including examiners, wouldn't find the same document during their prior art searches, and thus a competitor could patent the technology. "Since I cannot patent this technology, shouldn't I make sure others can't as well?"

Technical disclosures originating at the patent application and prosecution stage

As a point of reference, the patent application and prosecution stage begins with preparation of new patent applications, and includes the application prosecution stage. It includes decisions made during the application drafting stage as well as those made based upon developments that occur during prosecution of the patent application. Many of the best practices in this section increase the value of your patent while others help you maintain your freedom to practice the ideas.

Dream patent

Very often, the patent you want is much broader than the one the examiner will allow. You start things off by applying with the broadest claims you think you can get, and the examiner fires back, requiring you to narrow them. Perhaps you iterate a few times before coming up with claims that are as broad as you can get, yet narrow enough to satisfy the examiner. And sometimes, you find it useful to break an original application into several splinter applications that cover various fractions of the original innovation. This process is necessary, but it often leaves you with much less protection than you originally expected, and it also leaves you with a decision. Indeed, it is possible that there are elements of your original idea that remain unprotected by your patents and are exposed to patenting by a competitor, either in the original patenting jurisdiction or in another. Perhaps this is even intentional - you decide it is too expensive to pursue all of the splinter applications. Thus a defensive tactic in such a case is to create a dream patent for the purpose of publication. "If I could claim everything in one application, what would I claim?" The dream patent could be the original application, or it could be even broader. By publishing this dream patent, you assure yourself that there is no component of the idea that could be patented by a competitor who thereby invades your turf and turns your development effort into an IP nightmare.

Early publication of patent applications

In most cases, patent applications are published 18 months after filing, and in the United States, applicants may request early publication. Nevertheless, in all cases there is a significant lag time between your submission of an application and the time that it becomes searchable and effective as prior art. There are several cases where it is advantageous to publish new applications immediately, rather than waiting for them to be published by the patent offices. For example, immediate publication of your application helps to ensure that a foreign patent cannot be granted during the time that your application is held in secret by the first patent office. Otherwise, it is possible that a foreign patent will be granted to a competitor, and your only recourse would be expensive litigation to invalidate the competing patent. Since you already filed for patent protection, your bar dates will not be effected, but you receive immediate protection from the risk of the expense of foreign litigation or interference actions.

Secondly, early publication can be desirable in cases where you wish to promote the patent-pending technology for licensing. The early publication can be used to inform potential licensees of the existence of your technology and the associated pending patent, long before they would find it by searching patents. This can be especially useful in areas where possible licensees are not necessarily known by the inventor and cannot be easily located. This practice is extremely useful to universities that wish only to attract licensing revenue, rather than to create products based on the technology themselves. In another strategy, often referred to as the "Pied Piper" tactic, one can publish technical details of pending patents (this time without disclosing that there is a pending patent) in order to influence other companies to adopt the technology before the patents are granted or the patent applications are published. Once these companies have adopted the approach you suggest in the disclosure, they will be committed to the technology claimed in the patent applications. When the patents are finally granted, the early adopters will have very little leverage in licensing negotiations.

Publish patent rejects

If the patent office rejects your patent and you decide not to pursue it further, you may be at risk of a competitive patent issuing under a different patenting jurisdiction or merely under a different examiner.

You can mitigate this risk by publishing a technical disclosure containing the rejected application, optionally along with the examiners comments describing the reason(s) for the rejection. By publishing the reject, any subsequent patent has to be novel and non-obvious in light of your application and the examiner's
comments and citations as well.

Technical disclosures originating in technology/business review

Technology/business review represents the ongoing process of managing R&D, new technology, innovation, and the competitive technical landscape. Examples of disclosures originating from this point include technical disclosures initiated by:

• Research scientists or production engineers during the course of routine work
• Cross-functional groups in business units during status update meetings on ongoing R&D projects
• Marketing managers who notice threatening patents by competitors

Many other examples exist; these are intended to be illustrative of the broad nature of the technology/business review category. Also, due to the breadth of this category, many of the tactics in the other sections will be applicable during technology/business reviews.

These tactics can substantially alter the texture of a marketplace by influencing the balance of power among your business partners, your competitors, and yourself.

Supplier control

There are two types of competitors to a business. First are the traditional competitors that compete with you for market share. Second are the complementary product developers - those who you might partner with to create value but with whom you also negotiate to maximize your share of the revenues. Patent ownership provides a key leverage point for relationships with complementary product developers (such as your suppliers, partners, or those you supply to)
since patent holders can turn themselves into sole-source providers. However, an innovation that your partner could patent to your detriment is often not the sort of invention that you would want to patent. Perhaps your getting a patent on the technology would damage your relationship. Or perhaps the invention is merely in an area in which you have little direct interest. Such innovation that is created in connection with complementary product developers or partners should be immediately (and perhaps anonymously) placed into the public domain. A well-placed technical disclosure will prevent your supplier or partner from patenting the innovation and thereby obtaining a sole-source position.

For example, you co-design a new type of packaging material for your product that you would like your packaging supplier to develop and provide to you. If you publish the various aspects of that invention, you can prevent your supplier from obtaining a patent. Publishing the invention does not prevent your supplier from using the invention, yet if the supplier fails to deliver for other reasons, you would still be free to obtain the packaging from another supplier willing to use your invention. In some instances, you'll want the exclusive protection granted by a patent. However, in many situations, if the innovation is something you don't intend to produce yourself, or if you did not invent it yourself (i.e. the supplier invented or assisted in the invention), you only need the assurance that you can use the innovation freely.

Bottom line, sometimes patents will be necessary, but when your motivation is to secure your freedom to use the innovation, technical disclosures fit the bill and the budget.

Customer control

As is clear from the previous tactic, IP can provide serious leverage to your supplier, and you need to protect your interests. Looking the other direction
along the supply chain (i.e. toward firms for whom you are the supplier), we
find additional danger and opportunity.

A customer who patents profitable uses or new applications of your products can control the market for your product. A customer that patents lucrative products based on new uses of your components can increase his or her profits and decrease your product outlets or limit your market.

Your only choice is to partner with your customer (who now has premium bargaining position) or forego the opportunity as they partner with vendors who produce similar products to yours. In either case you lose while you watch your competitor get the lucrative contracts that should have been yours. Would you like to avoid being controlled by one of your customers and retain multiple conduits to the ultimate market? You could keep ahead of your customers by patenting applications of your products, but this could be considered offensive to your customer and seriously interfere with your relationships. Besides, is it really necessary? For far less cost you can create and anonymously publish technical disclosures that keep your marketplace free and allow you to avoid being controlled by your customers. Then you can leverage your core competencies as a dominant manufacturer, a well-connected distributor, or a well-branded marketer to compete and succeed in the marketplace.

Review your products and the customers they service. Are there patentable innovations that could limit your conduits of output? Publish the innovations before someone else patents them. Is a customer of yours serially patenting innovation based on your products, keeping potential clients out of your market space? Open up the space (and your market) via a broad, visible, (and possibly anonymous) technical disclosure.

Extend the reach of your patents by covering new uses of existing technology

Your patents were carefully constructed to give you the most extensive coverage you could imagine - at the time of application and within the limits of existing prior art. At the point of a technology review, your innovation has been in the marketplace for a while and you've learned more, but your patent remains the same. Every day your patent is at risk of losing potency as competitors have the opportunity of patenting new uses for your technology.

Suppose, for example, you have created a new jet engine, designed for increased thrust. Your field-trial engineers note that the newly designed engine uses very little fuel while idling. A disclosure that references your patent and shows how to leverage the invention in a significantly enhanced turbine for an army tank could extend your patent into a lucrative licensing area, since defense contractors need your technology. On the other hand, if you don't publish this new use, a defense contractor could patent around your invention (for his own uses) and seize the upper hand in licensing this technology in his own domain.

Thus, at various stages of review, you should take the opportunity to update the scope of your patent by conceiving and publishing new uses of your technology as technical disclosures. Ask yourself, "What could someone use my technology for?" This tactic provides the mechanism to ensure that the only patented (and licensable) technology within your domain is your original innovation itself.

Create/support a technical standard

Many companies benefit from the existence of established technical standards. Disclosures can be used effectively to create or promote technical standards, thereby allowing you to benefit. Typically, there are two types of entities that benefit from the existence of a technical standard. The first type is the company that is, or could be, the creator or producer of the technical standard. The second type relies on the technical standard for development of products that will be more readily adapted by the market.

If you have created a technical standard, an effective use of technical disclosures would be to make freely available any innovation that makes your technology easier to adopt, cheaper to implement, or more useful to end users. Patents in this area could be counterproductive, as third parties may see the space as being too locked up to facilitate development, and they may then choose to support other competing standards.

If you rely on a specific technical standard, you can publish technology that increases its foothold, thereby potentially increasing your overall customer base. This is the principle that has driven much of the development in the Linux open-source community, where software developers produce tools to promote the operating system in order to increase the potential subscriber base for their other software. Again, patenting in this space may deter others from adopting the technology, and actually do you more harm than good.

In either case, technical disclosures can provide a mechanism for increasing your market share in a space with defined technical standards. Unlike patents, the anonymity that is possible with technical disclosures allows you to develop and promote up and coming technical standards without alerting others to your related efforts. This can be a powerful tool in developing new technology without suffering losses in competitive intelligence.]]> http://www.securinginnovation.com/2007/11/articles/defensive-publishing/solving-business-problems-and-managing-risk-with-technical-disclosures/ http://www.securinginnovation.com/2007/11/articles/defensive-publishing/solving-business-problems-and-managing-risk-with-technical-disclosures/ Defensive PublishingPrior Art DatabaseTechnical Disclosures Thu, 29 Nov 2007 04:38:33 -0500 mdidas@ip.com (Mark Didas) Best Practices Using Technical Disclosures
As you no doubt guess or will soon see, the placement of each best practice into a single category or subcategory is an oversimplification, since many of them can originate from various stages in your invention process. It does, however, provide us with a starting point to discuss ways in which to integrate technical disclosures into your current IP strategy.]]>
Since such technology is already in the public domain, the motivation for these tactics is largely to assist the overburdened examiner in locating your prior art. These are among the simplest yet most overlooked tactics. You have decided to place this information into the public domain, but by failing to publish it in a location searched by examiners you eliminate the single greatest benefit of your decision to disclose, while retaining one of the largest risks (i.e. preventing invalid patents from issuing).

Conference presentations and journal articles

Your company controls the flow of information to be released at industry trade shows, scientific conferences, etc. Before you even get to the convention the decision has already been made that the information in your presentation will be disclosed to the public.

As legal prior art, your presentation should prevent your competitors from getting patents related to innovations you present in your talk. However, patent examiners have only limited exposure to the information you present - they can't be at all the conferences, and even the conference proceedings are rarely indexed so as to be readily accessible. Unless you create a technical disclosure, it is unlikely that your legal prior art (i.e. your presentation) will be sufficient to stop your competitors from using your research to enhance their portfolios by obtaining patents on that same innovation (whether invalid or otherwise).

Sure, you can use your conference paper to support your invalidity defense at trial (or force a reexamination), but it will cost you: legal fees, innovators' time, injunctions, etc. But why incur that expense? What's more, you need to be sure you can prove in court that you presented the information at a particular conference on a particular day. Do you still have all your documentation from presentations given three years ago? Could you prove the date irrefutably? Most presenters don't and can't.

A much safer and easier approach is to publish your presentation materials in a technical disclosure to make sure that you can prove what you disclosed and when you disclosed it. This would come in very handy should you find yourself in court trying to invalidate a related patent. More importantly, examiners will have easy access to your disclosure to prevent competitive patents from interfering with your business.

Let's face it, your presentation has already been placed into the public domain. Publishing your presentation gives you the protection necessary to prevent others from unfairly capitalizing on your hard work. Protecting your freedom to practice is as simple as publishing your presentation as soon as it is approved (or at least one day before your presentation, just to be safe), being sure to include your abstract, your notes, and the presentation itself. Similar considerations apply to journal articles. Often, new information is disclosed in journal articles, but these are rarely searched by patent examiners due to the limited time available for each application, coupled with the everexpanding growth of potential content sources. By placing your article into a searchable database that is made easily available to patent examiners, you increase the odds of preventing a bad patent from being issued to a competitor utilizing your innovation.

Simple, inexpensive, but very valuable, technical disclosures can save a huge amount of effort and expense downstream for each piece of unpatented technology. Ask yourself, "Am I absolutely sure that this cannot be patented by my competitor to impede my freedom to practice, to slow me down or harm my business?" If not, you should publish.

Product descriptions and marketing literature

Products you make for public sale are obvious indicators of your innovation. By law, a product or service that is sold or offered for sale in the United States can serve as the basis for rejection of a patent application (i.e. prior art). But will patent examiners know of the existence of your product when determining the validity of a pending patent application? Further, marketing literature, product manuals, advertising material and so on often contain information about your technology, processes, and ideas that may not be covered by a patent.

From a practical standpoint, patent examiners do not have the time to scour the earth for relevant product information or product descriptions. Nor is there an easy means for them to do so, other than what gets published in the IP.com Prior Art Database.

Publishing the descriptions of your products and other related marketing material into a database that is searchable by examiners will ensure that examiners have meaningful access to your product or service descriptions. The result is an expanded region of protection around your products and innovations, which prevents competitors from acquiring new patents in your domain. Rather than risking millions in legal costs, lost market share due to preliminary injunctions, and potential losses in court, the prudent IP manager should be thinking, "By leveraging technical disclosures I can easily ensure my freedom to practice - what do I have to lose?" Needless risk can be avoided via the inexpensive publication of manuals, diagrams, and images, plus records of first sale or intent to sell, into one aggregated location for searching by patent examiners.

Legacy documents

Over the years, many products have come and gone, many conference presentations have been given, and numerous articles have been published. Of these, a fairly small percentage is indexed in such a way that patent examiners have a reasonable chance of finding them. Some of these are forever lost to cardboard boxes or to inoperative, out-of-date computer systems. These will be hard to find even if invalidation of a competitive patent becomes a business necessity. On the other hand, some of these can be located and re-disclosed so they can prevent the competitive patents before they are issued. A practical IP manager should not expect to unearth all of them, but they should secure the protection of a technical disclosure on all such legacy documents that can be found. In addition, if you have not implemented a technical disclosure program before, you probably have an archive of inventions neither disclosed to the public nor patented. Many of these inventions will exist because they had some potential utility to the inventor, therefore some potential utility to your company. Rather than allow these inventions to be wrongly patented by other companies in the future, they should be evaluated against your overall IP strategy to allow suitable documents to be published, thereby securing your freedom to practice that innovation.

With a small investment of time and energy, you can assure your freedom to practice in domains to which you are devoting significant amounts of research, development, and marketing efforts. Wouldn't it be better to be safe than sorry?]]> http://www.securinginnovation.com/2007/11/articles/defensive-publishing/best-practices-using-technical-disclosures/ http://www.securinginnovation.com/2007/11/articles/defensive-publishing/best-practices-using-technical-disclosures/ Defensive PublishingPrior Art DatabaseTechnical Disclosures Wed, 28 Nov 2007 04:34:34 -0500 mdidas@ip.com (Mark Didas) How To Protect Your Innovation
No one can argue against the power of a patent. Patents are integral to any technology company's IP strategy. But some would suggest that you patent all your innovations. In fact, as suggested by the statistics discussed earlier, some companies are currently pursuing this approach.

However, it is simply cost prohibitive to patent every idea. Even neglecting downstream costs such as maintenance fees, your initial cost (for legal and application fees) in a single patenting jurisdiction is $10,000-$15,000 for a relatively simple patent, and up to $25,000 for a patent of moderate complexity. If you want patent coverage in several foreign jurisdictions, you should expect to spend at least $35,000-$60,000, just for the first few years of coverage! At these prices it's important that you have a revenue or financial plan for each patent. There are some patents that are worth every penny of this figure, considering that they are fundamental to business lines worth millions in annual revenue. So go ahead and pay the $250,000 for worldwide, lifetime patent protection on these innovations.

The more challenging question becomes: are all your patents worth that much? Certainly the fundamental innovations that define your market and guarantee your margins are of huge value, but what about the incremental inventions, the new uses of your old technology, the many inventions that only build on your preexisting intellectual property? Perhaps you can patent everything, but is it really cost-effective and efficient? Is it really necessary?

Ignore your innovation?

Some firms do nothing with their innovation, but the risk associated with this policy is both obvious and enormous. Even so, most firms take this risky approach for a significant fraction of their inventions, and only 10-20% of their patentable ideas actually become part of a patent application! What happens to the other inventions? Deemed less important, or not worth the cost of a patent (correctly), or merely not very interesting to the scientist or engineer involved, the innovation gets shelved... and remains at risk. Such companies' survival depends on luck, or on their competitors sleeping at the wheel. The downside costs if you pursue such a policy can be huge! In using your own, unpatented technology, perhaps you infringe someone else's patent and are forced to pay damages and royalties - directly to your competitor. Or perhaps you discover the competitive patent yourself, and choose instead the pain of redesign, paying dearly in time to market, in R&D expenditures, and even in marketing costs for affected products.

Or maybe you were first to invent, yet your competitor got a patent anyway; then you would have to decide how much it is worth to invalidate the bogus patent... is it worth the $500,000 to $1,500,000 to get through the discovery phase, hoping to settle out of court? Is it worth the $1,500,000-$2,500,000 to complete the jury trial? And in the meantime, your business is stalled by temporary injunctions!

In today's IP climate, most companies recognize that doing nothing with their innovation is a recipe for disaster. Even postponing decisions on what to do with an invention creates significant, and often unnecessary, exposure. However, many companies still allow many inventions to be shelved - unpatented, unprotected, at risk.

Hide behind a trade secret

Another option is to try to keep your innovation as a trade secret. Trade secret law offers limited protection in circumstances where the innovation is not obvious to the public and where you can demonstrate that you put adequate effort into keeping it a secret. The value and enforceability of trade secrets is called into question by the significant increase in employee mobility and the ease of information transfer, coupled with a high legal standard for security measures and protective procedures, and the bent of the courts to protect employee rights. There is no trade-secret protection for innovation that can be reverse-engineered; a competitor can independently discover your invention and use it, or even patent it. In reality, with today's aggressive competitive intelligence tactics, your secrets of today may very well be your competitors' patent-pending products of tomorrow.

Trade secret protection is of value in a few situations, but it is simply inappropriate for the majority of your innovative efforts.

Publish a technical disclosure

So if doing nothing with your innovation is too risky, and trade secrets are unsuitable for widespread application, and patenting everything is cost prohibitive, what options remain? Fortunately, there is another way. Technical disclosures provide an inexpensive means to protect your freedom to practice your innovation, effectively reducing the significant cost of patenting and removing the huge risks of someone else getting a patent on your ideas. What is technical disclosure? Quite simply, it is the intentional and purposeful publication of innovation into the public domain. Thus, technical disclosures create prior art which can prevent a related patent from issuing, based on the typical requirements which demand that patentable innovation be new and non-obvious. With a technical disclosure (also called a defensive publication), your competitor cannot patent the invention, and you retain your freedom to practice your innovation.]]>
The next blog post in this series discusses some of the technical disclosure tactics that can be deployed as part of a successful IP strategy. Although many companies neglect this area of IP management, most would benefit significantly from integrating these best practices into their overall IP strategy. You will find certain strategies relate more directly to your business than others, and certain strategies will be appropriate more frequently than others. Be that as it may, it is clear that unless you make optimal use of technical disclosures, you are paying too much, not protecting enough, or worse yet, doing both - paying too much for too little protection.]]> http://www.securinginnovation.com/2007/11/articles/innovation-management/how-to-protect-your-innovation/ http://www.securinginnovation.com/2007/11/articles/innovation-management/how-to-protect-your-innovation/ Defensive PublishingInnovation ManagementPatentsPrior Art Database Tue, 27 Nov 2007 04:31:05 -0500 mdidas@ip.com (Mark Didas) Disclosures in the Competitive Landscape
Innovation has become a primary driving force in industry worldwide. Companies have been racing to develop their IP portfolios by scrambling to gather the most extensive patent coverage they can afford. New companies need to make their mark early, or they risk getting left behind, whereas established companies need to maintain and build upon their current IP portfolios if they want to remain competitive. This is reflected in the overwhelming 187,017 patents granted in the US patent office in 2003, an astounding 70% increase over 1993 (see chart below), and the USPTO expects these records to be broken each year. The trend in patent applications predicts that the escalation in patenting will continue. Applications in the year 2003 hit 366,043, a 94% increase over 1993.

Everyone agrees that patents are one of the cornerstones of free enterprise, but experts are beginning to raise concerns that the patent explosion is opening up opportunity for some very costly and serious problems down the road. Fortunately, new solutions based on the strategic use of technical disclosures are arising to combat those problems.

Overburdened examiners

The patent land grab is putting an extraordinary burden on the world patent offices, which try valiantly to absorb this explosive growth, yet are overwhelmed by sheer numbers. As a result, overly broad, and arguably bad patents are being issued every day, due in large part to the fact that examiners simply don't have the time to locate and review all the potential prior art before issuing a patent. Therefore, many of these patents would not hold up against an invalidity challenge in the courts. Indeed, thousands of patents are being contested, putting a heavy burden on the federal courts. In a perfect world, patents would never be issued on inventions previously placed in the public domain. Bad patents do issue, however, because examiners are simply unable to spend the time required to locate all relevant prior art in a given case. In fact, it is unlikely that innovation published to any number of disparate publications will ever be seen by examiners, much less be used to prevent the issuance of bad patents.

IP.com's introduction of a centralized database of published prior art, and IP.com's cooperation with the world patent offices to provide them with direct data feeds and/or web access, tremendously increases the chances that a particular piece of prior art will be found by examiners when needed.

Well-placed technical disclosures, therefore, are valuable on two points: first, to support examiners in preventing overly broad patents from issuing; and second, in cases where overly broad patents do issue, to be available and admissible years later at trial to form the basis for an invalidity defense in a patent case. When balanced against cost, it is far more important to prevent overly broad patents from issuing in the first place than to deal with postgrant consequences, such as litigation, millions of dollars in legal fees, lost time-to-market from adverse injunction rulings, downstream (post launch) product/service redesign, and loss of freedom to practice innovation.

Having an invalid patent get issued (to you) is worse than the application being rejected outright because it gives the holder of the patent a false sense of security. Invalid patents can cause the holder to make strategic and costly decisions that could later become fatal when the patent is overturned, and at great legal expense.]]>
The frantic patent race is worsened by an aggressive tactic called picket fencing. To understand this ploy, suppose you have patented an invention that is key in a particular market space. A competitor who wants a piece of the market can surround your patent with a series of his own patents, each of which excludes you from some extension of your patented technology - whether that be an incremental improvement, a new use, or a necessary step in the process of bringing your technology to market. In so doing, he forces you into a cross-licensing agreement and reduces your market share.

One way to combat the picket fence would be to aggressively patent everything around all of your patents, but this would require you to acquire many patents of dubious value. A far superior approach is to engage in your own picket fence defensive disclosure tactic, in which technical disclosures are written by you for innovations, new uses, and developments required to bring the technology to market or to expand the market. The disclosures obstruct competitive patenting. Since your patent is the "core" or enabler of the defensively published ideas, you effectively protect your patent and extend its protective scope as the technology, its development, and your products mature. Thus, not only do you defend your patent, but you also protect your freedom to practice, your market, and ultimately, your bottom line.

High priced security

The mad dash to the patent office has put an extraordinary burden not only on the patent offices, but also on corporations that have to bear the compounding expenses. The cost involved in processing even a single patent is exorbitant. To acquire and maintain worldwide patent protection costs on the order of $250,000 over the lifetime of a single patent. Considering that most corporate giants are patenting hundreds, even thousands of innovations each year, patent budgeting can become outrageous.

However, the high price for remaining competitive in the high-stakes IP game can be controlled through skillful IP and prior art management. Roger L. May, general counsel, president and CEO of Ford Global Technologies Inc., has affirmed that position in a recent review in Corporate Legal Times where he stated, "There is no difference between being a good intellectual capital officer and being a good businessman."

So how can you succeed in the frantic IP world of the new millennium? Certainly, continued innovation is required - indeed your survival depends on it. The question is never whether to innovate, but what should be done with your innovation to optimize the business result.]]> http://www.securinginnovation.com/2007/11/articles/prior-art-database/disclosures-in-the-competitive-landscape/ http://www.securinginnovation.com/2007/11/articles/prior-art-database/disclosures-in-the-competitive-landscape/ Defensive PublishingPrior Art Database Mon, 26 Nov 2007 04:27:16 -0500 mdidas@ip.com (Mark Didas) Passing the Buck on Prior Art Searching
At first we were surprised that the subscription search model wouldn't be actively embraced by ALL law firms; a lower per-search fee that could be spread across all clients. That is, of course before we began chatting with law firms about their billing processes. Now, we understand. You see, lawyers, paralegals and search professionals bill their time to clients. Pretty obvious. And, the nature of the billing process is that each minute must be associated with a specific client. Also pretty obvious. And, an annual search subscription cannot be easily broken out and charged to specific clients because each client has different needs??some clients don't even NEED prior art searching. Yes, yes... also obvious. Then why did we only have subscription-based pricing for law firms? THAT'S A GREAT QUESTION!

Anyway, now that we understand the obvious, we have come up with an obvious solution... a special transaction-based contract for law firms (or anyone else that would benefit from this approach). As of now, rather than only offering the annual subscription based model to law firms (which some still prefer), we have a contract that enables firms to pay on a per-search and per-download basis. This makes life easier for law firms, easier for their clients, and easier for us. Everyone is happy!]]> http://www.securinginnovation.com/2007/11/articles/prior-art-database/passing-the-buck-on-prior-art-searching/ http://www.securinginnovation.com/2007/11/articles/prior-art-database/passing-the-buck-on-prior-art-searching/ Patent SearchPatentsPrior Art Database Tue, 20 Nov 2007 11:46:34 -0500 mdidas@ip.com (Mark Didas) Rewards for Technical Disclosures
Similarly, today's leading edge companies need to implement an awards program that incorporates recognition for technical disclosures that become published as prior art. There are multiple and varied reasons for publishing disclosures. An awards program should take these possibilities into consideration in determining how to structure the program. Without a program to recognize the publication of technical disclosures as prior art, researchers will only be motivated to chase patentable innovation, however expensive it may be to sustain, regardless of how it helps advance the business goals of the company.

Awards for technical disclosures can be designated in any number of ways:
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  1. Provide awards for any published disclosure.
  2. Provide awards for disclosures directly related to an existing company patent.
  3. Provide special awards for developing picket fence disclosure strategies to protect critical or key patented technology for the company. This reduces the cost of protecting new applications of a patent while preserving the companies right to market and sell into those same markets. Since the companies core patented technology is fundamental to the products in these markets the disclosures are the most cost effective way to expand protection.
  4. Provide awards for disclosures that keep the companies supply chain open. For example, if you develop an idea for a supplier to build into a product they supply to your company, provide awards for the public disclosure of that technology so the supplier cannot leverage your idea against you at some future point. This enables you to change suppliers (if circumstances demand it) while ensuring you can get the product features and functions that you need.
  5. Put an award program in place to ensure that all marketing and product literature is published as part of a repeatable process. This information is already deemed "public," so why not ensure that it defeats any potential patents by your competitors.
  6. Provide awards for technical disclosures related to technical standards that your company is trying to seed into the marketplace.

As you can see, there are at least half a dozen ways to motivate your research staff to leverage the power and affordability of technical disclosures to achieve your business goals. Incorporating them into your IP awards program will help ensure that your company is gaining the maximum IP protection in the most affordable manner. If patents are the only way for researchers to gain financial rewards, then patents is all you will ever see from them, at great expense to your enterprise.]]> http://www.securinginnovation.com/2007/10/articles/defensive-publishing/rewards-for-technical-disclosures/ http://www.securinginnovation.com/2007/10/articles/defensive-publishing/rewards-for-technical-disclosures/ Defensive PublishingPrior Art Database Tue, 30 Oct 2007 01:42:02 -0500 mdidas@ip.com (Mark Didas) Strengthen Your Defensive Publications with Expert Commentary
Readers of your defensive publication have interests in that publication ranging from simple curiosity to the serious need-to-know. These readers may even have a stake in the success of your position. You could tap into the collective wisdom of these readers by providing them with a ready means to add commentary.

By combining the commentary of others with your invention disclosure, a patent examiner will find more prior art in one place than he or she would without the commentary. Because of the vast pool of relevant prior art throughout the world, coupled with the extremely limited amount of time an examiner has to search for prior art, such aggregation of relevant comments could block competitive patents that would otherwise issue. After a few experts have added their comments and thoughts, your disclosure would become immediately more important to examiners. This ongoing dialogue will also increase the visibility of your publication by expanding its relevance to a broader range of searches.

In addition to helping patent examiners block competitive patent applications, exposing your invention disclosure to comments from other experts could be personally valuable. You could actually create a forum and encourage interaction from all over the world on your innovative ideas for the purpose of advancing the technology. You might discover ideas that build upon yours. You might establish relationships with future co-workers or friends. Commentaries can lead to discussions which can lead to collaborations which can lead to earth shattering innovation!
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Once you open the forum, people can find your publication by searching on the IP.com Prior Art Database or standard Internet search engines such as Google. Once found, they can add commentary which will be seen by patent examiners and anyone else who finds the disclosure. They might refer to other relevant publications, discuss new applications for your technology, discuss their own experiences related to your technology, or how you can make your technology better.

So, when you are publishing a disclosure with IP.com, check the box! Doing so could bring your disclosure to life.]]> http://www.securinginnovation.com/2007/10/articles/strengthen-your-defensive-publications-with-expert-commentary/ http://www.securinginnovation.com/2007/10/articles/strengthen-your-defensive-publications-with-expert-commentary/ ArticlesDefensive Publishing Sun, 28 Oct 2007 12:20:55 -0500 mdidas@ip.com (Mark Didas) Writing Successful Technical Disclosures
Flexible, controllable technical disclosures:

Anonymity - Published technical disclosures have several unique advantages relative to other publications. For example, unlike conventional publications, disclosures can be published anonymously, allowing an author to safely disclose information that might otherwise be useful to a competitor's intelligence function or that could be offensive to a business partner.

Speed - Another advantage of the published technical disclosure is that it can be published extremely rapidly (relative to peer review publications). In fact, technical disclosures can be published in minutes, as opposed to weeks or months. Every day counts in matters pertaining to publication of inventions and patentable technology, since the outcome of patent prosecution, interference actions, and even patent litigation may depend on differences of days or weeks.

Format Flexibility - Even the formats of published technical disclosures can vary significantly, depending on the particular goals of the author and the complexity of the disclosed technology. The length of disclosures ranges widely, and many can be found that are less than a page in length, whereas others are many pages in length. A typical disclosure is one or two pages in length and often contains nothing other than a title, an abstract, and a description of the invention including a visual representation such as graphs, chemical structures, process charts, citations, tables of data, schematics, etc.

Content Control - Finally, since they are not subjected to peer or editorial review, the author has full control in determining the content. This should be used to your advantage in your writing. For example, you can choose which pieces of an invention to disclose and which to keep secret. Or you can provide market information regarding the potential value of the invention if your purpose is to advertise your pending patent. You can choose your context and citations based on how you want readers to think about your technology, or you can suggest wide ranges of applications. It all depends on your goals in writing the disclosure.]]> http://www.securinginnovation.com/2007/10/articles/defensive-publishing/writing-successful-technical-disclosures/ http://www.securinginnovation.com/2007/10/articles/defensive-publishing/writing-successful-technical-disclosures/ Defensive PublishingTechnical Disclosures Tue, 23 Oct 2007 12:32:54 -0500 mdidas@ip.com (Mark Didas) Why are more than 50% of defensive publications anonymous?
Published technical disclosures have several unique advantages relative to other publications. For example, unlike conventional publications, disclosures can be published anonymously. You may be wondering what advantages this offers? To start, this will allow an author to safely disclose information without identifying their name or company.

Anonymous publications can thwart competitive intelligence. This is a key consideration for companies who need the protection that a disclosure offers, but do not want to expose themselves to their competitors. This strategy can help companies avoid being ?cluster searched? even if their identity is within a document. Preventing intellectual property ?spies? will help to protect your freedom to practice, your market, and ultimately your bottom line.

In the past, many companies have chosen to publish innovation in obscure journals to prevent competitive intelligence. The thought being that this would provide the necessary protection to block competitive patents. The big problem with this method is that patent examiners are simply not searching these rare publications. If a patent is issued, the disclosure could be used as a silver bullet to invalidate the patent, but could cost over $1M in litigation fees for each country.

The number of anonymous publications continues to rise. As more and more companies are implementing defensive publishing strategies, the more they aim to protect their identity. They can still reap the benefits of a technical disclosure without having to directly disclose their latest innovation to competitors.
]]> http://www.securinginnovation.com/2007/10/articles/defensive-publishing/why-are-more-than-50-of-defensive-publications-anonymous/ http://www.securinginnovation.com/2007/10/articles/defensive-publishing/why-are-more-than-50-of-defensive-publications-anonymous/ Defensive PublishingInnovation ManagementPrior Art Database Thu, 18 Oct 2007 11:08:15 -0500 mdidas@ip.com (Mark Didas) Licensing Revenue and Defensive Publishing
For example, if you were somehow able to get a patent on the first "chair" (an apparatus for sitting comprised of a back; a seat, and one or more legs), you would have an extremely valuable patent. Everyone who wanted to make and sell chairs would have to pay you a licensing fee. You would control the negotiation. You could bang your fists on the table. You could make unreasonable demands, and charge exorbitant fees. It would be your way or the highway. But, if others began patenting around your chair, such as the chair with the headrest, or the footrest, or the armrest, or the wheels on the legs, or the built in squishy machine, suddenly, they would have leverage in the licensing negotiation. Because even though they would still have to license from you to make and sell chairs, you would have to license from them to make and sell chairs that your customers really wanted to sit in. Suddenly, your unilateral licensing mandate has turned into a cross license negotiation. Suddenly your licensing stream is reduced. And it all could have been prevented with a series of low cost defensive publications. For a few hundred dollars, you could have published all the incremental improvements and prevnted competitive patenting?you could have protected the value of your key asset; your chair patent.

Defensive publishing can also increase the value of your patents. While the term "licensing" sounds complicated, even important, it is really just the marketing and sales of technology. In any marketing and sales effort, rapid and low cost exposure to the relevant market is essential. In the case of for-license technology, publishing in areas where interested people are searching could mean the difference between generating licensing revenue, and watching your patented technology waste away until your patent expires and anyone can freely use your technology. Lost opportunity means lost revenue and lost R&D dollars.
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Since published technical disclosures can include both patented and unpatented inventions, without disclosing which is which, you have another interesting dynamic that can advance your licensing efforts still further. Publishing technical disclosures on pending patents, without disclosing that the underlying technology is patent pending, can encourage the adoption of your technology. Then, when patents issue, you will have ready-made licensing targets; companies that have adopted your technology without knowing the technology was covered by pending patents.

So, if you choose to avoid the huge costs associated with patenting, but still want to build licensing revenue for your technical know-how, or you choose to patent and want to prevent competitors from building a picket fence around your core patents, broadly describe your technology in a defensive publication and publish for the world to see.

Publishing is not expensive, but it can lead to powerful returns on the rest of your licensing efforts. It's something to consider when you seek to get the most out of your patent and technology portfolio.]]> http://www.securinginnovation.com/2007/10/articles/prior-art-database/licensing-revenue-and-defensive-publishing/ http://www.securinginnovation.com/2007/10/articles/prior-art-database/licensing-revenue-and-defensive-publishing/ Prior Art Database Fri, 12 Oct 2007 12:11:36 -0500 mdidas@ip.com (Mark Didas) Fear of Abandonment
  1. Submit a patent application
  2. Adhere to the rigorous requirements of trade secret protection
  3. Do nothing
What happens to the "Do Nothing" pile? In most cases, these inventions live out the rest of their lives in a drawer or on an isolated hard drive... never to be seen again (hopefully not seen in the future in a competitor’s patent portfolio). Over the years, as more and more disclosures are crammed in, the collection becomes an abyss - a black hole of paperwork. It's not searchable in an efficient way. Accessing anything becomes a logistical nightmare. All of the innovation and content becomes useless.

When the smoke clears, the issue is, “what to do with the abandoned disclosures?”]]>
For this reason, IP.com has launched a disclosure conversion service to help companies defensively publish more rapidly. IP.com manually converts existing invention disclosure forms into a standard format, digitally fingerprints, then uploads the file into the IP.com Prior Art Database. The publication is then completely searchable as prior art online and will appear in the printed IP.com Journal.]]> http://www.securinginnovation.com/2007/10/articles/innovation-management/fear-of-abandonment/ http://www.securinginnovation.com/2007/10/articles/innovation-management/fear-of-abandonment/ Defensive PublishingInnovation ManagementPrior Art Database Sun, 07 Oct 2007 11:00:40 -0500 mdidas@ip.com (Mark Didas)