Mike Dillon, General Counsel of Sun Microsystems, has written an interesting blog in which he describes a new approach for a major company that files hundreds of patent applications every year. He says:

...at some point, a company needs to ask how many patents it really needs. And, that's exactly what we did about three years ago. Up to that time Sun was filing well over 1,000 patent applications per year. But, in 2005, we made the decision to reduce our patent filings to the point that we had about 700 patents issued last year. And this number may decline in the future. While this is still a sizable number for most companies, it is a significant decline for Sun and occurs during a period in which we have more innovation than at any point in Sun's history.

Why the change? Part of the reason is financial. On average, it costs more than $20,000 to obtain a U.S. patent and this figure grows significantly when you file around the world. Also, this amount does not include annual annuities required to keep a patent in effect. Being selective in what you patent can result in significant savings. However, the bigger reason for the change is that our focus has shifted from quantity to quality. To this end, we have completely re-architected the manner in which we determine the innovations we will patent. As part of this process, inventions are reviewed by a panel of the chief technology officers from across our different lines of businesses with input from distinguished engineers and other experienced innovators. We apply a significant amount of scrutiny to determine whether something is truly innovative before we submit it to the PTO. For us, it doesn't make sense to patent everything. Rather, our focus is on patents that represent significant technological innovation.

Makes a lot of sense. Companies that file applications for several hundred patents every year have to consider carefully which of many thousands of inventions by their employees are worth making a patent application for, and which innovations should be protected with a different strategy. Managing the intellectual property review process, especially in large companies with experienced innovators in many locations around the world, is critically important and sometimes challenging to control.

In many cases, companies rely on ad hoc, human driven processes for safeguarding ideas and making decisions about them. Subsequently, a lot of innovative ideas lie fallow or are lost. Since human processes are error prone, a lot of mistakes get made. This represents a significant risk for companies today. That's why many of our larger clients are employing the newest technologies from IP.com to help them organize their processes for intellectual property review in a secure environment customized for their special needs.

InnovationQ helps protect intellectual property by securing and authenticating it. Powerful tracking and reporting capabilities enable managers to see every event associated with an intellectual property asset, helping to detect synergies in their organization and guard against misuse.

The InnovationQ workflow engine also allows companies to automate intellectual property processes in an easy to use, yet deliberate fashion that helps to ensure error-free compliance.

If your company manages a lot of intellectual property, you might find interesting the white paper "Best Practices for Successful Innovation Management" that is available to download free here from our website. And if you'd like to talk confidentially about your special requirements, by all means give us a call and let's see if we can help you.

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John Cass, a marketer who writes about corporate blogging, PR communications, marketing, social media, and the Internet, reports better than average ratings for blogging Fortune 500 companies.

[Cass] developed a new chart for the Fortune 500 business blogging wiki. The chart shows the average scores for reviews conducted on Fortune 500 companies that are running a corporate blog.

You can review the chart on the about this wiki section of the website.

Using the businessandblogging.com methodology for reviewing blogs, which is a system of eight review factors to give a total of 80 potential points for assessing a company's blog,

Heaven forbid anyone might apply such rigorous analysis to our corporate blog, but at least that gives us some high standards to aspire to. We've long been fans of the blogs at Sun Microsystems, led by CEO Jonathan Schwartz. When we launched this corporate blog for IP.com Inc., I wrote about why we believe in business blogs, mentioning Sun blogs as leading examples of what we hope to achieve with this new medium for corporate communications. So we were especially interested when John Cass reported on PR Communications that one of the Fortune 500 blogs reviewed was Jonathan Schwartz's Blog.

Nigel Vanderford reviews the CEO of SUN Microsystem's blog, Jonathan Schwartz. Nigel gave Jonathan's blog high marks, 68 out of 80. He liked the frequency of posting, engaging writing and interactiveness with the rest of the blogging community. Nigel discovered Schwartz comments on other blogs.

I would have given Jonathan's Blog even higher marks--because his blog makes me aware of how much I have yet to learn about blogging. Hopefully, my team and I can learn from the good example set by Jonathan Schwartz and other senior executives like Mike Dillon who blog at Sun.

The goal isn't to get everyone at Sun contributing online, it's to become part of the industry conversation. So, if you are going to write, look around and do some reading first, so you learn where the conversation is and what people are saying. Remember the Web is all about links; when you see something interesting and relevant, link to it; you'll be doing your readers a service, and you'll also generate links back to you; a win-win.

That's what we like to do in our Quick Links in the sidebar to the left, where we share interesting blogs and articles we've found. We're learning, and sharing.

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The authors of  the outstanding "Patent Docs" blog are patent attorneys who hold doctorates in biotech and chemical disciplines, so it's a good place to keep track of all the upcoming continuing education seminars and conferences of interest to patent professionals in those industries.

IP.com Inc. will be represented at two of those upcoming conferences:

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

In addition to introducing InnovationQ to many prospective clients like these, hopefully, we'll get a chance during these conferences to meet with outstanding bloggers like  the Patent Docs and get together over coffee with the Patent Baristas. If you're going to be attending one of these upcoming conferences and would like to meet up while we're there, contact us and we'll set something up.

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The idea of expanding the scope of the Eco-Patent Commons under the auspices of the World Business Council on Sustainable Development by creating a new system of technical disclosure publication including eco-friendly innovations not yet patented, which we blogged about here and here, has piqued more interest following the article by IP consultant Nancy Edwards Cronin in her Strategic Thinking column on Greenbiz.com.

On the Green Patent Blog, covering intellectual property issues in clean technology, patent attorney Eric Lane follows up that article with a post headlined "More on Gratis Greentech: A Proposal for Expanding the Eco-Patent Commons" where he writes:

Whether or not you agree with her argument about issued patents, her idea of adding invention disclosures to the Commons would almost certainly benefit the initiative and its participants by increasing the value and utility of the available green technology. Of course, no independent or targeted donations to the Commons would be necessary because enabled invention disclosures are by definition in the public domain and available to everyone. Instead, to make the technology available to greentech firms, it would just need to be made accessible via the Commons. Broadly, Cronin’s idea could be implemented in one of three ways. Either companies who publish environmentally-beneficial technology in these disclosures could provide the publication information or citations to the Commons, the Commons itself could monitor the disclosure publications, or the publications could alert the Commons of relevant published disclosures. However it’s done, I can’t argue with increasing green idea and technology sharing.

Defensive Publishing denotes the disclosure of an invention with the purpose of creating prior art, and thus to prevent the granting of a patent. Regarding a worldwide initiative to "promote the progress" in the interests of the global environment, as envisioned by the the Eco-Patent Commons--beyond patents--including innovation and inventions not before patented, one must consider the different effects of "prior art" in various patent jurisdictions around the world.

In a  recently published Working Paper titled "Alternatives to the Patent Arms Race: An Empirical Study of Defensive Publishing", Joachim Henkel and Stephanie Pangerl note the differences between the European Patent Convention and US patent law.

US patent law is somewhat more restrictive in its definition of state of the art by excluding from patentability only those inventions that were “known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent” (US Patent Act, Section 102a). Public use in Europe would thus not be sufficient to establish prior art in the US. In addition, use or description of the invention must have taken place before the invention by the applicant or, as Section 102.b specifies, one year or more before filing of the application. This “first-to-invent” rule has an ambiguous effect on the attractiveness of defensive publishing. On the one hand, a DP may not pre-empt a patent application if the latter is filed less than 12 months after the DP and if it claims an earlier date of invention. In such a case, a DP might even trigger a competitor’s patent application. On the other hand, a DP can help to establish priority for an inventor, who maintains the option to file for a patent within the following year.

Consistent with the objectives of the Eco-Patent Commons, any similar system of technical disclosure publication should go beyond existing defensive publishing strategies to include a legally binding waiver of any option to file for a patent within the year following such publication.

We'd propose a definitive publication system for technical disclosures of eco-friendly innovations that would effectively relinquish all rights of the publisher to apply for a patent of the invention disclosed, anywhere in the world, anytime in the future.

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In her Strategic Thinking column on GreenBiz.com, Nancy Edwards Cronin recommends Growing the Eco-Patent Commons to Truly Promote Green Innovation. While lauding the objectives of this green initiative, she suggests that the Eco-Patent Commons itself is in need of some innovation if it truly hopes to accomplish its goal: sharing useful environmental technologies for "the greater good."

The problem is that the project includes only "patents" and not the undisclosed innovations and trade secrets within the intellectual property of companies and independent inventors that have not yet been patented. Many of those inventions might better be published now to promote the progress of science and the useful arts for a sustainable environment and ecology for the future.

To compensate for these drawbacks and make the Eco-Patent Commons as useful and powerful as it can be, the initiative requires expansion to offer truly recent inventions that have not spent years in the patent application process. This involves widening the scope of the initiative to include non-patented inventions that have yet to be marketed and made public.

One way to make these inventions available is through enabled invention disclosures. An enabled invention disclosure (also called “defensive publication” or “technical bulletin”) is a written description of an invention that ideally has the same degree of detail as an issued patent. Therefore a well-written invention disclosure provides sufficient information to the reader to understand and use the invention.

Many companies successfully use enabled invention disclosures as part of their intellectual property (IP) strategies. Companies frequently have inventions that they do not wish to patent because the patent process is so expensive, including invention development costs, legal preparation and patent prosecution fees. However, companies also wish to prevent competitors from patenting those same inventions.

By using enabled invention disclosures to publish the invention, companies accomplish both goals: they save the cost of patenting but they also establish a “prior art bar” to obtaining the patent and make it impossible for competitors to claim it the invention as their own. Several Web site forums exist for publishing inventions, including www.ip.com and www.researchdisclosure.com.

The Eco-Patent Commons should be expanded to include these enabled invention disclosures. Many inventions that companies deem non-strategic for patent application and instead decide to publish may be excellent candidates to be donated to the Eco-Patent Commons. These published inventions would be truly new, fresh and useful -- a good first step to creating the true springboard for green innovation that the Eco-Patent Commons was meant to be.

We couldn't agree more.

As indicated in our original post about the Eco-Patent Commons, IP.com would really like to contribute to this very worthwhile initiative by providing the publishing platform to broaden the scope of the project to include innovations and inventions useful to the environmental movement well beyond those patents that have been contributed by the project's founding companies, some of which are already using the IP.com Prior Art Database. We've got technologies available that could very quickly take this green initiative to a whole new level of global participation.

Let's discuss.

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The Eco-Patent Commons is an initiative to create a collection of patents that directly or indirectly protect the environment. The patents will be pledged by companies and other intellectual property rights holders and made available to anyone, free of charge. The Commons is a resource for connecting those who have had success with a particular challenge in a way that benefits the environment and those who are facing similar challenges.

With the launch of the Eco-Patent Commons earlier this week, four companies -- IBM, Nokia, Pitney-Bowes and Sony -- joined with the World Business Council on Sustainable Development to do something almost unprecedented: they agreed to relinquish their control over inventions that could benefit the planet in order to spur innovation for the greater good.

Thus begins the transcript of a very interesting podcast interview with IBM's Vice President of Environmental Affairs, Wayne Balta, on GreenBiz Radio.

Wayne Balta: The Eco-Patent Commons is a first of its kind initiative under which we at IBM and some other like-minded companies are partnering with the World Business Council for Sustainable Development to create a place where patents related to the environment can be pledged by the patent holder so that others around the world can access them and use them free of charge.

The basic premise here is that in the environmental arena, sharing knowledge and technology has the great potential to better address the world's problems. That there exists no organized way today to do this on a global basis. That leading businesses may hold patents that are not an essential source of business income to them. And that by sharing them with others on a global basis, both developed and developing countries, it can help people develop in a more sustainable way. And for those who pledge the patents it might also need to lead to new opportunities for innovation and collaboration with others, whom you might not otherwise reach.

...you know, pledging patents for free use by others is not necessarily a common way companies think about their portfolio of intellectual property and we at IBM recognize that. Now, we at IBM probably have as much or more experience as anyone with this because we have also done prior patent pledges. So we recognize that as we've spoken to others about the idea that it isn't something that you're innately thinking of doing. But as people think through the best use of some of this IP and the opportunities that could come out of a commons like the one we're creating, many have realized and others I believe will realize that it can be a win-win situation.

It can be a win for innovators in other parts of the world, who might look at these ideas and further them and use them as the basis of additional solutions. And it can be a win for those who pledge because it could open up opportunities to collaborate with people that you might not otherwise have collaborated with.

In a joint press release, other member companies of the Eco-Patent Commons today issued the following statements:

Donal O’Connell, Director of Intellectual Property, Nokia, said, “Environmental issues have great potential to help us discover the next wave of innovation because they force us all to think differently about how we make, consume and recycle products. From Nokia we have pledged a patent designed to help companies safely re-use old mobile phones by transforming them into new products like digital cameras, data monitoring devices or other electronic items. Recycling the computing power of mobile phones in this way could significantly increase the reuse of materials in the electronics industry.”

Angelo Chaclas, Vice President & Deputy General Counsel, Intellectual Property and Technology Law at Pitney Bowes, said, “The Eco-Patent Commons offers an effective framework to develop and make available technology that helps combat climate change and reduce the release of carbon dioxide. Our objective for the Eco-Patent Commons is to promote the spread of environmentally conscious technologies that make conservation and preservation a priority.”

Hidemi Tomita, General Manager of Sony Corporation’s Corporate Social Responsibility Department, said, “To more effectively protect the environment, it is time for business to join efforts rather than tackling the issue alone. We truly believe this joint effort with our peers will mark a significant step and help transfer innovative ideas and technologies across industries and beyond to developing countries. We are excited to launch this platform to share technologies that will bring about positive changes in the environment.”

These ideas are exemplary of a new wave of thinking described in a recent blog post on Open Innovators. "Companies need to get a lot better at bringing external ideas and knowledge in from the outside, while at the same time allowing internal ideas not being used to flow outside the organization."

The World Business Council for Sustainable Development (WBCSD) is a CEO-led, global association of some 200 companies dealing exclusively with business and sustainable development. The Council provides a platform for companies to explore sustainable development, share knowledge, experiences and best practices, and to advocate business positions on these issues in a variety of forums, working with governments, non-governmental and intergovernmental organizations. Members are drawn from more than 35 countries and 20 major industrial sectors.

Get the FAQs and download the Brochure of the Eco-Patent Commons in pdf here.

At IP.com Inc., we'd like to get involved in support of the Eco-Patent Commons project to expand this initiative to include the sharing of innovative ideas and technologies that directly or indirectly protect the environment, which have not yet been patented but are otherwise in the prior art and knowledge of the member corporations, the scientific community, and academia.

IP.com's Prior Art Database technology could be made readily available, free of charge, as a customized repository of  global innovation in support of the Eco-Patents Commons. How amazing would that be?

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We've been following with some interest the inception of the Blog Council, "a community for official corporate blogs and bloggers that represent major global corporations" that was recently formed by some very large corporations, including AccuQuote, Cisco, The Coca-Cola Company, Dell, Gemstar-TV Guide, General Motors, Kaiser Permanente, Microsoft, Nokia, SAP, Starwood Hotels and Resorts, and Wells Fargo.

Conspicuously absent from that blog cabal are Sun and IBM, each with thousands of  employees who blog, and strong corporate commitments to blogging evident from notes on their respective company websites here:

Many of us at Sun are doing work that could change the world. We need to do a better job of telling the world. As of now, you are encouraged to tell the world about your work, without asking permission first (but please do read and follow the advice in this note). Blogging is a good way to do this.

and here:

As they'll tell you themselves, the opinions and interests expressed on IBMers' blogs are their own and don't necessarily represent this company's positions, strategies or views. But that doesn't mean we don't want you to read them! Because they do represent lots of business and technology expertise you can't get from anyone else.

IBMer Mike Moran adds on his Biznology Blog:

Many other companies use blogs to connect better with their customers through blogs. Blogs that are written by living breathing employees, not the PR department.

Our new corporate blog, Securing Innovation, was conceived by us as a group blog, with posts by all our employees who want to write articles and blog about their work for the company. As well, some of our executives have their own personal blogs about their special interests and expertise. Tom Petrocelli,  our Senior Vice President for Enterprise Software, has his own blog, Tom's Technology Take, where he shares his thoughts about a wide range of technology issues beyond those he writes about here on the company blog.

IP.com is not a large corporation with hundreds and thousands of employees, but more than a few great ones, and we count among our clients many of these large companies that are developing best practices in corporate blogging. Like them, we're pretty much learning as we blog, and hoping to get better with experience in this engaging new medium for corporate communications.

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We're pleased that our blog is on the roster of future hosts of Blawg Review, even if we have to wait until next September 29th to host that presentation with a theme for our corporate blog on managing intellectual property, patents, trademarks and trade secrets. Before our turn, patent attorney Stephen Nipper will be hosting Blawg Review on The Invent Blog on February 11th, which is National Inventors' Day in the USA in honor of Edison's birthday. It seems you have to be on top of your blogging game to get the best dates to host Blawg Review. Anyway, we're just thankful to be included in such good company and we'll do our best to put together an interesting presentation of  Blawg Review on September 29, 2008, which is Inventors' Day in Argentina in recognition of the birthday of the inventor of the ballpoint pen, László Bíró.

Even though we have to wait the full gestation period of a human for our due date to arrive, we are pleased to learn that being scheduled to host an upcoming issue of Blawg Review gives us an opportunity now to participate in the nomination of some of the previous presentations for Blawg Review of the Year 2007.

For our part, we'd like to nominate #137 by Colin Samuels at Infamy or Praise, #93 by Kevin Thompson at Cyberlaw Central,  #102 by George Wallace at Declarations and Exclusions, #106 by Brett Trout at Blawg IT, and #134 by Eric Turkewitz at the New York Personal Injury Law Blog, who have all set very high standards for innovative presentations of Blawg Review to follow. That said, we're really looking forward to the challenge of hosting Blawg Review.

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How do you prevent competitors from obtaining patents that could block you from using your own innovative ideas in your products and services? This critical question faces managers of innovation and intellectual property throughout the global economy, which is increasingly embroiled in a hotly contested patent race.

Issued patents can be deadly. Enterprises of all stripes face burgeoning risks that competitors will obtain blocking patents. Even strong manufacturers with worldwide distribution, well-branded products and adoring customers can be stopped dead in their tracks by broad competitive patents.

Just how deadly are competitive patents? Consider this, if your competitor is granted a patent broad enough to prevent you from making or selling products and services, you may be forced to litigate. Average legal fees to defend a patent case are over $1.5 million regardless of the outcome. Verdicts and judgments in patent cases can easily exceed eight figures. Even greater costs can be incurred in attempting to design around competitive patents after product launch, or being shut down by a preliminary or permanent injunction.

There are myriad methods for protecting innovation and intellectual property. One answer is to join the patent race. But be prepared to spend. Average legal fees to file one patent application in the U.S. are in the range of $12,000-$15,000. Multiply that by three or four to file applications in key locations throughout the world. Then add over $100,000 to maintain each patent in those locations throughout its life. All that cost for one invention. The problem grows when you consider that for most companies, the number of inventive ideas exceeds the number of budgeted patent applications by at least ten times.

To compound the "cost of getting a patent" problem, consider the recent Supreme Court ruling (KSR Int. v. Teleflex, Inc.) relating to an overwhelmingly important concept called "obviousness." This verdict has essentially made it harder to get patents and harder to enforce already issued patents. This means patent acquisition cost has gone up and patent value has gone down. In most cases, it is simply not cost effective to go through the patent process.

What are the alternatives to patenting?

If created and protected correctly, trade secrets can have real value. But, beware. In today's environment, protecting trade secrets is often unrealistic. Increased competition has driven more aggressive pursuit of information by competitors with access to previously inaccessible data sources and previously unheard of data mining tools. That, coupled with increased employee mobility and ease of communication has made it virtually impossible to keep secrets. Companies may not appreciate the risks associated with the use of trade secrets until after they see their ideas claimed in competitive patents.

How can defensive publishing be incorporated into an IP strategy?

With patenting on the rise, patent offices have become overburdened. This has resulted in patents for technology that has already been in the public domain, sometimes for years. Why? Because patent examiners have very limited time and resources to search prior art. As a result, many references that examiners could use to reject patent applications are never found.

The first reaction some have when considering these issues is to defensively publish everything. However, defensive publications can be a double-edged sword. If placed in the right prior art database, they can be powerful weapons for destroying competitive patents. But, they can also be powerful weapons for destroying your own patents. So, to get started it's a good idea to properly disclose innovation that has already been placed in the public domain, but isn't in a location readily or easily utilized by patent examiners.

Continue Reading...

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Ten years ago today, on December 17, 1997, Jorn Barger coined the word "weblog" to describe the daily list of links that "logged" his travels across the web. Having learned a lot about blogging over the past decade, he now shares his top 10 tips for novice bloggers in an article published in Wired Magazine.

A couple of his pointers make sense to me, now that we're blogging.

1. A true weblog is a log of all the URLs you want to save or share.

That's what we do here on Securing Innovation in a special section called Quick Links in the sidebar to the left of our posts. Now that we're up and running with our corporate blog, I see how important this feature is, and how right Kevin O'Keefe of LexBlog was when he advised us that we'd probably appreciate the Quick Links on our corporate blog even more than our own posts here.

Quick Links is where we share with our readers all the interesting stuff we discover surfing the web each day. And that's what Barger is getting at when he says his "intent for weblogs in 1997 was to make the web as a whole more transparent, via a sort of "mesh network," where each weblog amplifies just those signals (or links) its author likes best."

The other point Barger makes that really struck home with me is this:

 4. Being truly yourself is always hipper than suppressing a link just because it's not trendy enough. Your readers need to get to know you.

When we started this corporate blog, it wasn't really clear to me how much of my personal life I would share with clients and customers of IP.com Inc. beyond the business bio that outlines my professional background. As much as that corporate blurb tells readers what I do, as CEO, there's not a great deal in there about who I am, Tom Colson. It's not easy to talk personally on a website, but I'm learning that blogging is more like having a conversation with readers than writing articles in business journals. So, I'll begin this blog conversation as I would with new friends, by introducing you to the girls in my life and a girl named Pants.

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