Sharp Innovation

Northeast Wisconsin Innovation Event: NEW END

2011-05-05T08:45:00.000-07:00

Hundreds of Wisconsin entrepreneurs will attend NEW END:
One day event for start-up businesses to focus on creativity and networking

On Wednesday, June 22, 2011, hundreds of entrepreneurs will join together in a one day event to celebrate innovation and job creation in the "New North" of Wisconsin. Northeast Wisconsin Entrepreneur Networking Day—or NEW END—takes place at Fox Valley Technical College, Appleton, WI. The event is dedicated to the specific needs of entrepreneurs and small business owners by packing networking, education, and collaboration into one day.

This is the seventh year for the influential business meeting which has been attended by hundreds of entrepreneurs annually. NEW END features nationally known author, speaker and entrepreneur, Barry Moltz, who will conduct a workshop specifically designed to get business “un-stuck.” Moltz has been a featured speaker at NEW END in the past, but this year’s event will provide more one-on-one learning with Moltz.

“Entrepreneurs are not used to taking the easy path,” Moltz said. “But when they get stuck either in an existing business or a new venture, sometimes they just need to change perspective—that’s what this workshop will do,” Moltz said.

NEW END is sponsored by the FVTC Venture Center, the leading entrepreneur center in Northeast Wisconsin. In the last five years. The Venture Center has helped launch more than 200 businesses through the E-seed and Pro-Seed programs. Executive Director Amy Pietsch says this event is not only popular with entrepreneurs, but is a critical element of their business plan.

“For years, one of the most popular events at NEW END has been the ability to network in person with other entrepreneurs and business resources,” Pietsch said. “Entrepreneurs who attend will connect with the people and information they need to be successful.”

New for NEW END 2011, the “Pop-up-Pitch.” Entrepreneurs may register to be part of this competition in which they could win $2500 by telling a panel of judges in only 60-seconds who they are, what their business is, and how they will use the $2500 to advance their enterprise. Entrepreneurs are encouraged to come prepared for the “Pop-up-Pitch”. A limited number of registrants will be presenting their ideas in front of the entire NEW END conference and are urged to register early.

“Start-ups are constantly pitching their business idea to investors, partners or lending institutions,” Pietsch said. This is a fresh, creative way for them to hone their pitch into a short, specific message.”

In addition to the Pop-up-Pitch, NEW END 2011 will feature:

Day long workshop with Barry Moltz
Afternoon Networking session with business owners and other entrepreneurs
Taste of Entrepreneurship featuring area food entrepreneurs and their finest fare

Cost for the day-long workshop with Barry Moltz is $100/person; attendance is limited. Cost for the evening NEW END networking, Pop-up-Pitch and Taste of Entrepreneurship event is $39/person. To register, please visit www.newend.biz or www.venturecenterwi.biz.

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MEDIA ADVISORY:
Barry Moltz is available via phone for personal interviews. Visit his website for more information www.barrymoltz.com

The Venture Center can provide interviews with regional entrepreneurs who have been involved in NEW END.

For more information, contact Mary Schmidt, mkschmidt at centurytel.net, 920-284-7165

More Dangers of the Patent Reform Bill Identified

2011-04-22T15:18:00.001-07:00

Sometimes doing nothing isn't such a bad thing. Our patent system could use a few fixes, but not the kind Congress is now pursuing. Folks, if Congress or the Administration really wanted to fix the patent system to BENEFIT innovators and advance the cause of the useful arts, they would NOT imposes a $100 million tax on patent seekers by diverting the money they pay in fees to the USPTO to feed their big spending habits in unrelated sectors. That's right: the inefficiencies and costly delays in our patent system are due, at least in part, to Congress taking away the money that the USPTO receives from inventors. It's a tax on innovation, a ridiculous innovation fatigue factor. Let the USPTO keep and spend the money it receives to advance patent searching and prosecution. Tax tobacco, not innovation and innovators. Our economic recovery needs more innovation, not less.

Now the same group who doesn't mind taxing innovators and adding to the delays at the USPTO have offered "patent reform" to "fix" our patent problems. Sounds great, right? Good intentions, no doubt. But as we warn repeatedly in Conquering Innovation Fatigue, there can be unintended innovation fatigue factors rising even from well-intended actions if policy makers aren't listening to the voice of the innovator. That's the voice of the innovator, not the voice of the largest campaign donors. They might do OK with the reforms being pushed through Congress. It's lone inventors and small companies I'm most worried about. You should be, too.

David Boundy offers a summary of the problems with the patent reform legislation over at Patent Docs. I agree with much of his analysis. From my work in the innovation community, I've seen that the year grace period inventors have in the U.S. from public disclosure to filing a patent really is valuable for lone inventors and small companies, and eliminating it will greatly increase costs and risks. It could be a crushing blow for some.

Read David's article. I look forward to your comments, there or here.

Intellectual Assey Strategy That Leads Innovation

2011-04-15T09:11:00.000-07:00

The primary problem with most IP management efforts is that they are reactive only. These systems typically focus on incoming invention disclosures and existing patent applications, leading to recommendations on which disclosures to file, which countries to file in, and which existing applications to abandon for cost control. These are vital components for intellectual asset (IA) management, but they fall short in providing strategy that can inform prospective inventors about what kind of inventions are needed.

Effective IA management begins not with the processing of existing documents, but with the development and articulation of vision to guide the process of IA generation and acquisition. It begins with a roadmap of what the corporation needs to own and protect, and that roadmap can then be infused into a written IA strategy statement that guides the IA-generating community to know what they need to create, and also guides IA committees to know what they should be approving.

Written strategy statements can help innovators be more successful and decision makers more disciplined, though there must also be leeway for out-of-the-strategy-box inventions that could lead to unexpected opportunities. However, most IA generating work in a corporation can and should be targeted and focused on specific objectives.

Once a clear vision is communicated regarding the IA needs of the corporation, IA generating activities can be used to supplement normal new product development and R&D. These exercises can be driven by the IA management team to achieve low-cost IA estates in targeted areas for specific objectives, such as averting a disruptive threat, laying a foundation for future IP in a potentially disruptive area where R&D investment is not yet available, weakening the IP potential of a competitive merger or acquisition, etc. At least a portion of the IA generating efforts of a corporation should be driven from the top with a clear objective in mind, rather than waiting for random invention disclosures to trickle up during the course of normal R&D activities. IA strategy should lead innovation.

Conducting Innovation Sessions to Generate IP: Preparation is the Key

2011-04-11T12:17:00.000-07:00

At Innovationedge, one of my favorite activities is working with a team in what we call an "Edge Session" to create new intellectual assets. It's not not brain storming, where a flood of bad ideas are welcome, but an iterative process in which the goal is enabled, good concepts that are fleshed out enough to support drafting of a meaningful invention disclosures. A key part of the Edge Session is refining problem statements, moving from broad, vague questions to more specific problem statements that guide inventors on what is needed. We introduce stimulus elements that are coupled with the problem statements to stimulate thinking. The stimulus elements can be used in addressing a problem directly or as associative thinking tools to change the way people look at the problem--all part of the steps along the way to creating records of an enabled invention that, in turn, can readily support IP generation such as drafting a patent application, documenting a trade secret, or preparing a defensive publication.

Preparation has been the key for success. A big part of the preparation is ours as we dig into the literature, patents, and competitive intelligence. Sometimes we conduct pre-workshop interviews to get a landscape of what the client already knows so that we can better begin with that starting point as we help them create and document more.

The preparation by the client is also critical. One key part of their preparation is the selection of team members. Groups of about 5 to 25 people work well, with maybe 7 to 15 being the preferred range. The group works well if there is sufficient diversity in experience and background. For example, even in dealing with highly technical problems, I like to have at least one marketer in the team, someone with great hands-on experience dealing with consumer insights or other sources of marketing information. The perspective a good marketing person can bring is often vital for the success of an IP-generation project.

Teams also can be more effective when the prepare by reading the materials we provide on the prior art, competitive efforts, etc. We recognize, though, that many times team members won't have had adequate time or motivation to prepare other than showing up. We can still squeeze good information from the unprepared, for much of what they have to contribute creatively is already in their heads. It just may take a little more effort to get it out and documented,

Chemical Patent Practice: Resources for Drafting Chemical Patents

2011-03-22T08:09:00.000-07:00

Chemical patents pose a number of unique challenges. Many times significant additional work is needed to help the inventor understand the scope of the invention. A successful reaction with a few chemistries could lead to a narrow chemical patent limited to the reactions pursued if the drafter of the patent doesn't appreciate the big picture in which the chemical species examined are members of a much larger genus. Providing a reasonable generic description of a chemistry that does not become overly speculative and unpredictable (as in not enabled) while still providing useful coverage for the inventor is a complex task requiring searching and good knowledge of chemistry.

One of the best IP courses I took was Chemical Patent Practice from Patent Resources Group. The course notes were extensive and thorough in terms of case law, but not, of course, in the chemistry itself. I still recommend PRG's courses, though they are expensive.

Other resources to consider include:

Chem. patent searching--Wiki page at the Univ. of Indiana

PatentWatch at the American Chemical Society

Derwent, major source of chemical databases for searching

CAS.org--includes SciFinder, an excellent search tool

PatBase.com, with good tools for chemical patents

I list a few of my own chemical patents on my biographical information page.

Dangers of "First to File" in Proposed Patent Reform Legislation: Kudos to Dr. Ron D. Katznelson

2011-02-09T14:42:00.000-08:00

In "Will first-to-invent always frustrate patent reform?," Dr. Ron D. Katznelson offers an important perspective about the dangers of proposed first-to-file systems in pending US patent reform legislation. He argues that the real agenda of its proponents will be to ultimately include prior user rights in the patent system that will replace the public covenant of the patent with rewards for not publishing knowledge, jeopardizing the value of patents altogether--and the march of progress through public disclosure.

The problem with PUR lies in a perilous deviation from the basic exchange that takes place under the patent bargain -- in exchange for making a new, novel invention public, the government grants the inventor a limited exclusivity over the invention for a fixed period of time. Upon invention, the inventor has three basic options to consider: 1) participate in the patent system’s quid pro quo, teaching and sharing the invention with the public, 2) forgo patent rights, but simply publish the invention (called "defensive publishing") so that others will learn about the technology, thereby creating prior art so that others cannot patent the idea, or 3) keep the invention secret, but risk someone else inventing a similar invention and obtaining patent protection and the exclusive rights that come with it, creating a disincentive for keeping inventions secret.

PUR as contemplated by the FTF proponents would fundamentally alter this dynamic as it would allow an accused infringer to demonstrate their prior use of the patented technology to avoid infringement of a subsequently patented invention, even if the accused had not disclosed the invention to the public. It would transfer enormous risks to those who participate in the patent system from those who do not (for there would be no way of knowing who was hoarding what secrets and where). It would fundamentally shift the "reward" from those who make their inventions public to those who keep their ideas secret. The patent bargain would be broken, as no exclusivity would be assured in exchange for disclosure by the patentee.

Arguments of "fairness" to those who make substantial investments in secret are simply a non sequitur. Means for achieving fairness have already been established by society’s acceptance of the patent bargain. One cannot have it both ways.

In essence, PUR would make prior use akin to prior art -- equating, wholly illogically, a secret with a public good. And worse, proponents of PUR actually want (and have tried pushing for) PUR to go further -- considering it as prior art in validity analysis of the patent. Doing so would allow the secret to be used not only to avoid infringement, but to summarily invalidate an otherwise properly granted patent! This would allow private and secret prior use to destroy a public patent right -- and eliminate the patent holder’s rights to that patent not only with respect to the prior user, but with respect to the rest of the world.

Read the whole article. Good points. Kudos also to Greg Aharonian who shared the essay in his outstanding PatNews newsletter today.

Due Diligence for Licensing Outside Technologies

2011-02-08T11:52:00.000-08:00

Open innovation often leads to licensing external technologies. In-licensing is fraught with pitfalls, many of which can be avoided without too much pain if good diligence is done up front. How do you know if the partner you are looking at really has something of value that they can license to you? How do you know they are for real and can be trusted? There is always risk, but due diligence can help contain the risks and lead to moving forward with more confidence.

Joshua B. Goldberg of The Nath Law Group offers a useful summary of important steps for due diligence. "An Introduction to Intellectual Property Issues Associated With the In-Licensing Due Diligence Process" on the LES (Licensing Executives Society) website lists some of the basic documents that will be needed early in this process:

Documents You Should Expect to See
The first step in conducting a complete due diligence analysis is obtaining all necessary documents from your potential licensing partner. The critical documents you should want to see include any patent and patent application files; all supporting documentation (e.g., Assignments); any previously executed agreements (such as licensing, material transfer, consulting, research and development, manufacturing, and/or key employee agreements); laboratory notebooks; scientific publications by inventors/employees; SEC documents; and the results of any previous prior art searches.

You may also wish to explore public documents showing litigation, bad press, or other problems your prospective partner has faced. Word of mouth input from those who have done business with the company can also help. Character matters, and sometimes (not always), reputation is a reflection of that.

After conducting searches to assess freedom to operate and patent validity, there is still more that should be pursued. Joshua also makes these wise recommendations:

Looking for Others Who May Have Rights to the Technology
Another important area to look at is whether the potential licensor has had any previously terminated relationships. Any such relationships should be closely scrutinized, as the previous partner may still own residual rights and obligations, or may possess unexercised options to the technology. In addition, any patent applications filed after the previous agreement was first executed may be in question, as there may be issues concerning the source of any data, and whether the proper owners and/or inventors have been named. Lastly, you may want to look into why the previous relationship is terminated before you enter into an agreement with the licensor. After all, it is good to know who you are "marrying"!

Another important issue to investigate is whether the invention arose from a university. If the company you are talking with is a university spin-off, there may be some uncertainty or disagreement between the university and the spin-off as to who owns all of the patent rights. This is an important issue to resolve early on; otherwise you may just be buying another headache.

As you move forward, make sure you have considered a wide variety of scenarios, such as the company being acquired, being sued, going bankrupt, spinning off a unit, going global, losing the management team you have worked with, having patents or claims ruled invalid, etc. Standard terms may address all these issues, but run through these scenarios and make sure the agreement is adequate. However, avoid getting the agreement bogged down to explicitly cover numerous scenarios unless you don't mind taking forever to get the agreement through. Ultimately, it's about trust. If you can't trust the partner, don't work with them. But even trusted partners change as people change positions or outside forces change companies, so yes, you need a flexible agreement to mitigate some of these risks.

Prior art searching is one of the painful parts of due diligence. It's painful because it requires a lot of heavy lifting and never comes to a sure conclusion: there is always risk that you are missing the most important art, or that your interpretation of the art won't match that of a future judge or jury. Then there is the risk the patents of interest will be found invalid due to shifts in judicial whims that are impossible to predict. What is clear and definite today may be vague and indefinite tomorrow, or may not even be patentable subject matter after the next round of judges ruminates over the metaphysics of terms like "abstract" in patent law. We have to live with that risk all the time as we move ahead to take advantage of IP opportunities the best we can.

Unwise Shortcuts in Patent Preparation: Don't Trust "Cheap" Provisional or Utility Applicationis

2011-01-08T07:49:00.000-08:00

One of my favorite blogs, IPwatchdog, has a new post on the costs of patent preparation: "Patent Application Costs: You Get What You Pay For." Well, you may not always get what you pay for, but you certainly aren't going to get what you don't pay for, unless you are working with very generous IP professionals.

Gene Quinn says this about the cost of preparing a patent:

[Y]you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings.... So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.

At Innovationedge, we've done some non-provisional patents for much lower than $6k--when we are interested in taking the invention to corporations we work with for potential licensing or for other sound business reasons. Then it's in our interest to help the client get a strong patent and we're willing to put in a lot of extra effort at low cost to create intellectual assets that we think will lead to licensing success. But the many people who walk in and ask us to do a quick and dirty provisional on the cheap are usually sent away disappointed because I'm not willing to cheat them with a provisional that doesn't actually protect them.

We've had some real heartbreaking moments when a client showed us their cheap $1500 or even $4000 provisional application that was just three or four pages long and barely even described the invention. We've seen companies telling their investors that they had thorough IP for their new product when it was provisional garbage. The false security created by a bad provisional application can lead people to disclose their invention and lose rights thinking they have a priority date when the cheap document they have put their trust in may not even come close to an enabling disclosure.

We do provisional applications all the time, but I generally prefer to craft each one as if it were a utility application, ready to file as such with a full set of claims. I prefer to do a detailed search, then draft a detailed description with many alternative embodiments, considerations of how the invention will be used, recycled, marketed, etc., with implications across the supply chain, with regulatory considerations, etc., as needed to give broad enablement and to provide details and verbiage that can help respond to many unexpected twists and turns in prosecution. Especially for the utility application, a lot of work is required to come up with a reasonable strategy in claim construction and to build in the support disclosure. While our rates are low compared to many, the final cost is not going to be $1500.

If the cost of a good patent is too much, don't patent it. Trying to patent something for next to nothing will usually just give you nothing and waste your money in the end. It may feel good to have a patent filed, but if it is actually worthless, you have nothings (except, perhaps, the benefit of having taught the rest of the world something about your invention, such as how to make it).

Claiming a "System" in Your Business Method Patent? Think Apparatus: MPEP Reminder

2010-11-01T07:33:00.000-07:00

If you are claiming a computerized "system" of some kind in a patent application related to software or business methods, be sure to think of the claim in terms of how the PTO will examine it. Your system will probably be viewed as an apparatus and will need to have hardware and tangible elements built into the claims that support its novelty. The fact that the system is used for a novel purpose is great in method claims, but might not be of any help in a system claim unless you recite novel structure.

A friendly examiner at the USPTO recently explained that Section 2114 of the MPEP should be consulted when contemplating system claims. This section offers important reminders about how to claim an apparatus, and why a novel use of a prior art device (like a server) is not sufficient for an apparatus claim:

2114 Apparatus and Article Claims - Functional Language [R-1] - 2100 Patentability

2114 Apparatus and Article Claims - Functional Language [R-1]

For a discussion of case law which provides guidance in interpreting the functional portion of means-plus-function limitations see MPEP § 2181 - § 2186.

APPARATUS CLAIMS MUST BE STRUCTUR-ALLY DISTINGUISHABLE FROM THE PRIOR ART

While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART

A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material". The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure
of the mixer and thus the claim was properly rejected.).

A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM AND STILL NOT ANTICIPATE THE CLAIM

Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any structural difference. It should be noted, however, that means plus function limitations are met by structures which are equivalent to the corresponding structures recited in the specification. In re Ruskin, 347 F.2d 843, 146 USPQ 211 (CCPA 1965) as implicitly modified by In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994). See also In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (The claims were drawn to a disposable diaper having three fastening elements. The reference disclosed two fastening elements that could perform the same function as the three fastening elements in the claims. The court construed the claims to require three separate elements and held that the reference did not disclose a separate third fastening element, either expressly or inherently.).

Cheaper Drugs or Missing Drugs? Why Patents on Drugs Help Consumers

2010-10-22T07:05:00.000-07:00

Many voices are clamoring for abolition of patent protection on drugs or compulsory licensing of patent drugs at reduced rates. Some nations already demand this. The simple-minded thinking behind this is that by eliminating the high royalties that patent holders can command for their drugs or other products, prices will be lowered and the masses will be blessed. It takes only a little consideration to realize that this movement is more about gaining political power and popularity than it is about strengthening health care, for if the profit incentive is removed, there is no incentive to invest billions in drug discovery, development, and testing. There would be no incentive to take on the extreme risks of marketing a drug. In short, there would simply be far fewer drugs.

Tamoxifen is one example. A brief summary of the issues is provided in a letter-to-the-editor today in the Wall Street Journal by Michael Murphy of Cambridge, Massachusetts:

Regarding the letters of Oct. 7, 15 and 19 responding to your editorial "The 'Pay For Delay' Rap" (Oct. 5): The underlying assumption seems to be that lower drug prices will always benefit consumers. However, this assumption is not just wrong; it has the potential to significantly harm consumers as well.

To demonstrate how, consider the story of tamoxifen, a drug originally developed in 1962 by ICI (now AstraZeneca PLC) as a contraceptive. Although this research was unsuccessful, an unrelated study at the time found another potential use for tamoxifen: treating breast cancer. However, ICI also considered abandoning its tamoxifen research because of economic concerns, most notably its ongoing inability to patent tamoxifen in the U.S. Fortunately, one of the scientists was able to convince ICI to continue development.

AstraZeneca was finally granted a U.S. patent for tamoxifen in 1985, but two years later this patent was challenged by Barr Pharmaceuticals (which wanted to market a generic version). In 1992 the patent was ruled unenforceable, which was likely a fluke ruling, seeing as the patent was upheld in three later challenges. But despite the likelihood that it would prevail on appeal, AstraZeneca instead agreed to a reverse settlement with Barr that preserved its patent while allowing Barr to immediately market tamoxifen at a slightly reduced price.

Though consumers paid less for tamoxifen as a result of this settlement, the Federal Trade Commission opposed it, believing this was a "weak" patent that deserved far less protection. Had ICI been aware of this in 1972, it may have abandoned its tamoxifen research after all. Instead, an estimated 400,000 people are alive today who otherwise would not be thanks to tamoxifen, and I doubt many are concerned that they overpaid.

Related reading: Barr's press-release about their patent victory resulting in lower prices for Tamoxifen. But if the patent pain ICI/Astrazeneca faced had been recognized initially, we simply wouldn't have had this drug today. We need patent protection to give innovators a chance of realizing significant gains for those few and rare drugs that puss through the increasingly difficult hurdles the FDA and other have put in the path to market. Without incentives, innovation dies--and so do those who could have benefited from the drugs.

Score One for the Big Guys: How to Trick a Future Nobel Laureate into Walking Away from a Patent and Giving Away His Rights for Free

2010-10-13T06:37:00.000-07:00

Tim O'Reilly (@timoreilly on Twitter) had a recent tweet about the Nobel Laureate Andre Geim who discovered graphene and many potential uses for the super strong two-dimensional diamond-like material. His tweet was "Puts the lie to the claim that patents help small inventors: Why Geim Never Patented Graphene http://bit.ly/9QrEC3". The link is to a discussion on Slashdot that begins with this observation about why Dr. Geim didn't patent graphene. Turns out he almost did, but chose not to after a conversation with someone from a big multinational company that could become a major user of graphene in the future. Here's the content that Tim O'Reilly and others feel shows why patents don't help small business owners:

gbrumfiel writes
"As we discussed on Tuesday, Andre Geim won this year's Nobel prize in physics for graphene, but he never patented it. In an interview with Nature News, he explains why: 'We considered patenting; we prepared a patent and it was nearly filed. Then I had an interaction with a big, multinational electronics company. I approached a guy at a conference and said, "We've got this patent coming up, would you be interested in sponsoring it over the years?" It's quite expensive to keep a patent alive for 20 years. The guy told me, "We are looking at graphene, and it might have a future in the long term. If after ten years we find it's really as good as it promises, we will put a hundred patent lawyers on it to write a hundred patents a day, and you will spend the rest of your life, and the gross domestic product of your little island, suing us." That's a direct quote.'"

While some people, including some in the anti-patent community, see this as a self-evident case for the problem with patents, it's actually just the opposite, in my opinion.

Look at the story again. A genius on the verge of filing a foundational patent for a major breakthrough in technology approaches a large corporation who might benefit from the technology. The company learns that the inventor is about to file a patent. A valid patent would mean that the company would have to pay royalties for the invention, perhaps very expensive royalties. If no patent is filed, the company can use the technology for free and develop its own patents without having to cross-license or worry about what Andre Geim owns. Hmm, which would be better: paying a lot, or paying nothing? Having to work with an inventor or tech transfer office or new patent owner who may end up thinking an invention is worth billions, or having the whole thing pretty much gratis? Tough call, but I think the corporate leader was quick to recognize the advantages to nipping the patent threat in the bud. How could he talk the inventor out of a patent? What negotiating tactic to deploy? ah, how about the Hindenburg? That's where you explain to the other party that their intended course of action would be a flaming disaster, with burning bodies falling out of the sky--oh, the humanity!--resulting in the adversary becoming toast themselves.

The Hindenberg it is. The corporate leader then explains that IF Geim is so foolish, so greedy, so inhumane as to file a patent, disastrous suffering will follow and he'll be burned. "100 patents a day!" Overwhelming force! You'll go into debt suing us for nothing! You'll be toast, baby. One big flaming Hindenburg crashing into the ground.

Baloney! All bluff and bluster. But the intimidation and scare tactics work. "OK, OK, I won't file my patent. Sorry for even thinking about that. Now I see that patents don't help the little guy, Mr. Big. Here, take what I've got for free. I'm just honored to watch you commercialize my work."

Patents are the great equalizer. It's what gives lone inventors a fighting chance against the big corporation that wants to take what they've got for free. It's not easy and may not work, but with patents you've got a chance and corporations know it. Good ones respect that and will work with out. Others will try to take what you've got anyway, or better yet if they can, talk you out of pursuing a patent. Without one, you've already surrendered. You might as well throw the keys of your car to any passing stranger and hope they will pay you someday after they drive away.

The story isn't about why patents don't help the little guy. In fact, I think it's about how much some big corporations despise and loathe patents in the hands of little guys. So much so that they would make outrageous statements to trick a brilliant scientists into NOT doing the one thing that could have helped him most: filing a patent. Instead, he handed them his inventions for free. Score one for the big guys.

Genome Patents Are from Venus, Genome Sharing Is from Mars: The Cocoa Genome Published, not Patented

2010-09-17T13:08:00.000-07:00

In the UK, The Independent reports an interesting story about discovery the details of the cocoa genome, a major scientific project that could help cocoa producers worldwide become much more productive in raising this sensitive crop. What I found interesting was the decision by the corporation behind the work, Mars, Inc., to not seek patents based on the work but rather to publish their discovery so that everyone, even competitors, might benefit from the work. Of course, they hope to benefit by having more abundant and higher quality cocoa as a raw material, but I'm still delighted with the decision. Genome patents are tempting and have a role (with over 3 million genome-related patents having been filed in the US, it must be a pretty big role), but are highly controversial and sometimes rather questionable. It's a complex issue to be debated another time. For now, let's just savor the decision by Mars and look forward to major advances in cocoa agriculture.

Here's an excerpt from The Independent:

Scientists have sequenced the genetic code of the cocoa tree, which they say could triple the yield of the disease-prone crop and transform the lives of millions of poor farmers in Africa and around the developing world who rely on it for their livelihood.

The US chocolate firm Mars, working with the computer firm IBM and the US Department of Agriculture, took two years and two months to unlock the genetic code of the tree, Theobroma cacao ("food of the gods").

Instead of patenting the genome, they have placed it online for anyone to use for free. They say that its discovery will allow breeders who use traditional methods to grow hardier, more productive and disease-resistant trees

See also The Cacao Genome Database where Mars and others have published the results of their sequencing of the cacao genome. Best enjoyed while sipping hot chocolate. You'll need a big cup.

Other reading on related topics:

"Tycoon [Craig Venter] seeks patent for 'minimal genome' " - New Scientist
"Gene Patents" - Wikipedia
"Here Comes SuperCacao: Mars, Inc. Sequences the Cacao Genome" - FastCompany

Should Patents Have Background and Summary Sections?

2010-08-31T10:46:00.000-07:00

Greg Aharonian's recent PATNEWS newsletter mentions that he is reviewing the book Drafting Patents for Litigation and Licensing, edited by Bradley Wright of Banner & Witcoff. A chapter in that book led Greg to raise the question about whether inventors and patent owners are helped in any way by including background and summary sections in patents. Greg mentions that numerous risks that can arise when prior art is improperly discussed or when statements in the background or summary sections are imported by judges as unwanted limitations in claims. With all the risks, and with no legal requirement to include such sections, why do it?

It's a fair question and perhaps patents will be more successful if unnecessary sections are left out, but there's another perspective to consider.

Greg is not alone, and in fact is thinking along lines of Irving Kayton et al. at PRG who have been advocating barebones approaches to skirt the numerous pitfalls from judges and courts. (I really enjoyed the "Drafting and Crafting Winning Patents" course I took from them several years ago where they introduced their minimalist concepts.) Skipping the background and summary makes a lot of sense with those concerns in mind. However, the chance of a judge abusing your issued patent is minuscule, and in fact is ZERO if it doesn't get past the Examiner. In light of KSR, I would argue (and do so argue in the book Conquering Innovation Fatigue from John Wiley & Sons, 2009) that it is valuable to build some storytelling into the patent to help the examiner avoid the temptation of applying hindsight to the invention and, when possible, to help the Examiner see that the invention involved more than just conventional problem solving to deal with known problems in standard ways.

Sometimes the key to a brilliant invention is discovering what the real problem was. Once understood, the solution may seem "obvious" and straightforward, and if the patent just presents the solution, the nonobvious nature of it may be lost upon the examiner. Examiners are people who will be most helpful in advancing patents when they get the story and have their imagination captured, and that is what can be done in the background and summary. Tell a story to advance your nonobviousness position, but do be cautious about discussing prior art and avoid listing benefits or "objects" of the invention which can certainly haunt you in future litigation. But when there isn't much of a story that needs to be told, skipping the background altogether might be wise.

Another consideration is the benefits of helping others besides judges appreciate and understand the invention. This might include members of a jury as well as potential licensees or business partners. Again, the storytelling role of the background can add value to the patent.

Storytelling: it's what marketing is, and patents need to be drafted with marketing insights and plans in mind for both long-term and immediate success.

The Miazaki Case: Raising the Bar for Definiteness in Patent Claims

2010-08-02T14:26:00.000-07:00

A senior patent examiner at the USPTO in a phone interview recently stressed the precedential BPAI case, Ex parte Miyazaki, Appeal No. 2007-3300 (BPAI 2008). In this interesting case, the Board had trouble with the language in this claim:

1. A large printer comprising:
a paper feeding unit operable to feed at least one roll of paper, at least one substantially flat sheet of paper and at least one stiff carton, the paper feeding unit being located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process including replacement of the roll paper and setting at least one of the sheet of
paper and the stiff carton;

a printing unit located below the paper feeding unit;

a discharged paper stacking unit located below the printing unit; and

a paper feeding path extending in a substantially straight line from the paper feeding unit to the discharged paper stacking unit via the printing unit.

The claim tried to describe a relationship between a person of average height and elements of the printer, but the Board found that there were infinite possibilities in the actual structures described. Where was the person standing - on a platform, for example? And where was the printer - on the floor, or on a table, or what? Given the uncertainty, there is certainly an argument that the claim is indefinite and thus invalid.

However, the Board did more than simply identify the indefinite nature of the claim. They went much further in giving a new standard for finding a claim indefinite under Section 112, paragraph 2. Woodcock Washburn LLP notes the problem in their client alert, "BPAI Expands Definiteness Requirement During Patent Prosecution in Ex parte Miyazaki":

On November 19, 2008 the Board of Patent Appeals and Interferences (Board) announced in the above captioned case that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, slip op. at 11-12....

The mischief created by the Board in this case is not whether the claim is or is not indefinite under the statute but, rather, it is found in the Board’s broad holding regarding the application of 35 U.S.C. § 112, second paragraph. Many claim limitations are amenable to two or more reasonable constructions as that is what gives a patent claim breadth. If the Board’s holding is taken at face value, we can expect a flood of rejections of claim terms as being indefinite under the statute.

It may be increasingly important to review claim language carefully and make sure that at least some claims avoid multiple interpretations in ways that could fall under Ex parte Miyazaki. Naturally, almost every limitation of every claim has gray areas that could be interpreted in multiple ways. I hope reason will prevail in the quest for definiteness in claim language.

Inventions from the Fox Valley (Fox Cities) of Wisconsin

2010-07-29T08:32:00.000-07:00

As a proud resident of Appleton, Wisconsin in the beautiful Fox Valley, I'm happy to report that this area has a surprisingly rich history of invention and innovation. In fact, the Fox Valley is one of the most patent-rich parts of the Midwest, largely due to the intense patenting activities of consumer products companies like Kimberly-Clark Corp. (which usually gets more patents each year than MIT!) and Georgia-Pacific.

Here is a small sampling of the innovations that have come from this region with a population under 200,000 people (Appleton, the largest city in the Valley, has just 75,000).

Carbonless paper and a host of innovations related to microcapsules applied to paper. Appleton Paper helped lead the way, developing the coating processes that allowed microcapsules to be applied to paper at high speed without crushing them. Recently Procter & Gamble licensed Appleton's encapsulation technology to apply long-lasting fragrance in microcapsules to laundry via Downy laundry sheets. Numerous innovative applications remain to be developed.

Cellucotton or creped tissue paper: the absorbent paper wadding material used as a wound dressing and then as the basis for Kotex feminine care products, invented by Ernst Mahler of Kimberly-Clark Corporation. This also led to Kleenex facial tissue and numerous related innovations, including anti-viral tissue, many innovations in processing and packaging, and eventually soft uncreped tissue (with about 50 patents protecting this significant advance in technology, the basis now for several leading products).

High performance disposable diapers were invented in the Fox Valley. Key innovations include the use of superabsorbent polymers to increase absorbency and a variety of structures for reducing leakage and improving comfort.

In April of 1969, Dr. Lawson Winton cloned the world's first test-tube tree, a triploid quaking aspen, at the Institute of Paper Chemistry. Genetic engineering of trees is now the basis for some of the world’s largest suppliers of renewable fiber, such as Fibria of Brazil.

Appleton was home to the first electric street car. The first electric street cars began operating in Appleton on August 16, 1886. Appleton was also the first community in the nation to have electric street cars. They ran until 1930. Sources: Wisconsin Historical Society and http://www.apl.org/history/firsts.html.

Appleton made history for having the first buildings in the world with electric lighting from hydroelectric power. From http://www.apl.org/history/firsts.html: “On the evening of Saturday, September 30, 1882, Appleton Paper and Pulp Company, the Vulcan Paper Company, and the Hearthstone (home of H. J. Rogers), became the first buildings in the world lighted by electricity generated from the Edison hydroelectric central station.”

Inverter power sources for arc welders from Miller Electric. See http://www.millerwelds.com/about/1988.html. Miller Electric has been the source of many significant innovation in arc welding, including the world's first engine-driven inverter. See http://www.millerwelds.com/about/1998.html.

The Fox Valley is home of many significant advances in packaging for microwave-heated foods, such as US Pat. No. 4,861,958, “Packaging Container for Microwave Popcorn Popping,” by Tim Bohrer (Neenah, WI), Tom Pawlowski (Neenah), and Richard Brown (Appleton, WI) of Fort James Corp., now Georgia-Pacific. This was part of a series of patents for “microwave susceptor” technology that allowed a portion of the package to heat up to properly deliver heat to the food being cooked. They were part of the Fox Valley team that developed the first microwavable popcorn package which insured that more kernels would pop and that the package would expand to accommodate the popped corn. The invention was a huge success selling over a billion units per year in North America. The technology was expanded using chemical deactivation technology which resulted in patented processes for products used by Kraft, Heinz Ore-Ida, ConAgra, and others.

LiveYearbook (http://www.liveyearbook.com/). This is a startup company that is inventing new ways to provide long-lasting, dynamic yearbooks at low cost for schools and organizations. They were the first IT company and first Northeastern WI company to win the Governor’s Business Prize Award (2010). The programming for this concept is being done here in the Fox Valley.

The famous enMotion® paper towel dispenser, the one that automatically delivers towel by waving your hands in front of it, was developed in Neenah by a Georgia-Pacific team.

A variety of papermaking advances have their origins in the valley, including Georgia Pacific's foam-based tissue forming technology that was commercialized in France and novel fabrics for papermaking from Kimberly-Clark, Appleton Wire (now Albany International), and Asten Johnson. The famous Crecent Former, used worldwide for making tissue, was a local innovation from Kimberly-Clark. Also, dryer bars--the rods used in rotating steam-filled driers to enhance heat transfer in drying tissue and paper around the world--were invented in the Valley at Kimberly-Clark Corp. and have saved vast amounts of energy over the years. The Pulmac Classifier for detecting "stickies"--polymer junk that can interfere with papermaking--was also developed in the Valley.

Some of the most valuable advances in nonwoven textiles and fabrics came from Fox Valley inventors working for Kimberly-Clark Corp. This includes the foundation for many of the laminated fabrics that are used in medical gowns and other health care products, the soft webs used in diapers and many other products, stretchable nonwovens, and polymer-paper fiber composites.

If you would like to see other inventions from this region featured, let me know.

PCT Fees to Drop in September

2010-07-28T08:20:00.001-07:00

The IP Factor reports that PCT filing fees are dropping in September. About a 15% reduction. Nice! May US fees start moving downward as well--wishful thinking.

Patent Reform and Medical Innovation: There Are Reasons To Be Concerned

2010-07-27T13:40:00.000-07:00

One of the constant challenges in crafting policy and law is to avoid unintentional consequences. This cannot be done by living in an ivory tower. When it comes to the business world in particular, there is a need for careful communication with small business owners and entrepreneurs to understand what they are facing and what they might face in light of proposed changes. When it comes to some of the proposals for patent reform, the need to listen to the "voice of the innovator" becomes particularly great. Unfortunately, there is sometimes a human tendency to listen to the voice of one's own staff and the voice of major contributors rather than the voice of the many who will be affected.

What will proposed patent reform legislation do for the economy? I hope there will be careful hearings and investigations into that matter, far more than the efforts so far. Consider the medical industry, an area where innovation can have tremendous impact not only on the economy but directly on human lives. Will changes in patent laws hinder innovation and weaken the industry? Whatever changes we make, let's hope they will strengthen this vital area.

The magazine Medical Innovation and Business recently devoted an entire issue to the challenges of patent reform. The lead article, "Patent Reform: Effects On Medical Innovation Businesses" by Renee Kaswan, David Boundy, and Ron Katznelson, speaks in strident tones about the scope of the problem:

We, as the editors of this special issue, are deeply concerned that the Patent Reform Act will severely harm medical and small company innovation. As an academic researcher who invented a blockbuster drug, Restasis®, a patent lawyer who has helped small companies and their investors, and an inventor/entrepreneur who founded and raised investment capital for two start-up companies based on patentable inventions, we have seen how the robust American patent system enables new, innovative companies to secure investment funding and to negotiate with strategic partners. We have seen how patents enable entrepreneurs and researchers to turn raw ideas into useful products. A strong patent system benefits patients and helps the economy grow by giving companies the competitive position and incentives they need to get new pharmaceuticals, medical devices and procedures into the technology pipeline. Innovators can invest in R&D, testing and FDA approval because patents allow investors to recoup their investments in these staggeringly expensive activities. We are very concerned that the Patent Reform Act undercuts the entire idea-to-product pipeline by weakening the investment value of patents in several ways that selectively impact the most innovative companies. If Congress gets Patent Reform wrong, products characterized by high development costs and low production costs, typical in medical innovation, will die in the lab. The capital investment necessary to get ideas to market will simply dry up, and be diverted to companies that don't need patents to attenuate risk.

Some of the many articles in the issue include:

"Venture Capital - The Buck Stops Where?" by Gary Lauder

"What Is A Bad Patent? 1" by Patrick Doody

"Patent Reform's Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators" by David E. Boundy and Matthew Marquardt

"Post-Grant Review-Our Next Nightmare? VC Perspective" by John Neis

"Patent Reforms Must Focus On The U.S. Patent Office" by Ron D. Katznelson, Ph.D.

Good Reminder from Paul Jones: The Hidden Costs of "Free" Grant Money for Innovators

2010-06-29T20:14:00.000-07:00

I'm happy to announce that Paul Jones, an attorney and highly connected champion of innovation with lots of experience helping startups, now has his own blog where he posts about innovation, startups, and the like. One post that caught my eye is "Grant Money: When “Free” is not “Free”." He discusses the temptation to pursue government grants to help a new business, and points out the downsides to taking the free money. He scores several good points. Be sure to read it. In conclusion, he says this:

Now I am not suggesting that grants shouldn’t be part of a good start-up’s financial model. But the financial model should serve the needs of the business and it’s investors, not the needs of grant writers. So by all means, use grants – sparingly – to establish credibility. And, if from time to time you run across a grant opportunity that actually dovetails nicely with your real business needs and timing, by all means go for it. But if you ever find yourself thinking that getting grants is what your business is all about – well, don’t tell that to your investors.

Wise words. Thanks, Paul!

Bed Metrics and Unintended Productivity Losses

2010-06-29T09:33:00.000-07:00

One of the constant challenges in innovation, a topic we address in Conquering Innovation Fatigue, is finding the right metrics to encourage meaningful innovation. The problem is that poor metrics can lead to all sorts of unintended bad behaviors that can waste resources or even squelch real innovation. If you measure and reward innovation primarily based on the number of patents a group files, you may gets lots of patents--and lots of legal fees and wasted time, including internecine rivalries as groups try to keep others in the corporation from sharing in the credit for patent filings. One must have a variety of metrics and must constantly scrutinize their impact and application to keep the behaviors they engender aligned with the objectives of the corporation.

To bring the problems with weak metrics down to earth, let me share an example from a Midwest grocery store chain, as reported to me by one of their employees. Upper management imposed challenging goals for cashier productivity as measured in terms of IPM - Items Per Minute - a measure of how rapidly a cashier scans and processes items as customers check out. Naturally, for good customer satisfaction and good ROI on cashier salaries, the Corporation should want high IPM, right? Sure, but there are unintended consequences arising from the way the metrics are determined. The problem comes from the use of "terminal secure mode." Terminal secure mode is intended to essentially shut down a cashier's terminal when a terminal is not in use or the cashier is momentarily away. But it also provides a slick way to game the system and get better statistics, for when the terminal is secured, the clock stops ticking. Thus, local management in at least one store has urged all cashiers to use terminal secure mode frequently. If you have to pause for any reason - helping with bagging, etc. - they are told to use terminal secure mode to stop the clock. This requires two keyboard actions to initiate, and then further actions to bring the terminal back up, all resulting in lost time. But even worse, going into terminal secure mode nullifies the credit card scan that the customer may already have done to prepare for payment, so the puzzled customer finds that they have to scan their card again for payment, causing delay and irritation. Time is lost, customers are annoyed, productivity is lower, and the in-store experience deteriorates, but IPM stats look good and management is happy. Counterproductive metrics. So easy to do.

Always scrutinize your innovation metrics (and all other metrics) for unintended consequences and for alignment of behaviors and incentives with corporate goals. It's something that Innovationedge can help you with today. Give us a call!

Bilski: Relief at Last

2010-06-28T08:51:00.001-07:00

After much fretting and many weeks of puzzling delay, the Supreme Court has at last handed down an opinion for the Bilski case. For those of us who find legitimate merit in so-called "business method patents," I'm happy to announce that the decision seems reasonable and does not exclude business-related processes from patentable subject matter. Software patents in general appear to survive as well. There were concerns that the previous decisions that gave life to business method patents, such as State Street, would be completely struck down, but these decisions were not expressly rejected though also expressly not endorsed (the State Street test for patentability, i.e., that the invention "produces a useful, concrete and tangible result," was not upheld and may be dead, but business method patents are not excluded outright). The result, in my view, is no radical change other than clarifying that the machine-or-transformation test is not suitable as the sole test for determining patentable subject matter, a ruling that I think will be helpful to those who favor business method patents. It will probably be the default test for patentability, but failure to meet it is not necessarily fatal, and that's good news in my opinion. You can read the opinion at http://www.supremecourt.gov/opinions/09pdf/08-964.pdf.

Some excerpts:

Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just animportant and useful clue) violates these statutory inter-pretation principles. Section 100(b) provides that “[t]heterm ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article....

The Court of Appeals incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test....

This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”...

As numerous amicus briefs argue, the ma-chine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medi-cine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals....

[T]he Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.

Yes, we need limitations and must not allow business method claims to be too broad or counterproductive, but the Court wisely found that there is no reason to exclude them from patent protection. That's good news, in my opinion.

PatentlyO has also reported on the "business as usual" decision, as has IPWatchdog. Both are good reads.

I'd also like to recommend Deepak Malhotra's review of the Bilski decision. Thorough and clear.

Is It Worth Patenting?

2010-06-16T08:56:00.000-07:00

Gene Quinn's discussion of hitch-mounted toilets at IPWatchdog.com leads to a valuable point: just because something is patentable does not mean it should be patented.

Inventors often fail to recognize that companies and investors aren't interested in inventions but in solutions that improve people's lives. If your patentable invention isn't a step forward with practical value, why bother?

Outside eyes are helpful here. Inventors love their work, naturally, but what matters is how others react. If the problem being solved is one that people don't care about, or if the solution is too complex and awkward to be useful, the market won't be interested, no matter how brilliant your voice-activated dental floss dispenser is. It may be patentable, but should you patent it? Is it worth the expense? Get some market input and outside expertise to help you make that decision before you spend your savings on costly patents.

The Emerging Landscape of Biofuels IP

2010-05-13T07:11:00.000-07:00

In my role as Chair of the Forest Bioproducts Division of AIChE, I've been involved with technical programming and webinars dealing with biorefineries, biofuels, and conversion of biomass, especially forest and cellulosic biomass. There are a variety of intriguing pathways for converting biomass to energy, including gasification or pyrolysis to produce gases and liquids that can be subsequently converted to fuels, enzymatic pathways, and chemical pathways. Whether the end product is ethanol, biodiesel, or other fuel substances, the economics are challenging and depend on a host of issues such as raw materials source, proximity to markets, regulatory and tax issues, etc. The technology itself is an interesting mix of old processes such as Fischer-Tropsch synthesis coupled with new twists, or in some cases radical new technologies altogether.

What many people have overlooked in their enthusiasm for biofuels and biorefineries is the complex nature of the patent estate. The IP landscape is complicated by a wide variety of patent classifications that are used to index the various technologies. In gasification of biomass, for example, the patents for some key commercial technologies may be grouped with cremation devices, or may be listed in categories pertaining to stoves and ovens, methods of reclaiming waste, or chemical processing. Numerous classification codes must be considered. There is also a complex mix of universities, research labs, start-ups, lone inventors, and large companies pursuing relevant technologies, making it difficult to aggregate the key players for a meaningful review of their IP estates. But in spite of all the complexity, there is a great need for improved reviews of the IP landscape to capture trends, whitespaces, and red flags for current and planned operations.

At Innovationedge, we are applying some of our tools and expertise to better deal with this issue. I'll be presenting papers on this topic at the AIChE Annual Meeting in November in Salt Lake City and at a bio-energy conference this fall in Rockford, Illinois. Stay tuned for more information.

Patent Irony: Crush Your Invention by Calling It Such

2010-03-26T07:15:00.000-07:00

One of my favorite ironies in the world of intellectual property involves the deadly magic of the word "invention." By simply using that word in describing the invention in a patent, you may cast a spell that sucks the life out of your intellectual property and destroys the value of your invention. How can such self-referential doom be possible? This is only possible thanks to the deep magic of certain highly-trained wizards dressed in the dark robes of judges, who have developed dark techniques for taking various statements about the "invention" to teleport new, unintended limitations into patent claims, making their scope smaller and smaller until they practically vanish into thin air.

Ronald Slusky in the Feb. 2010 issue of Intellectual Property Today has a good article, "Writing the Detailed Description, Part II," in which he discusses some of the problems in using the word "invention." It's not that the word itself is poison or a deadly potion, but statements about the "invention," if not carefully accompanied with detoxifying qualifiers, can be used to override the language of the claims and add poisonous, unintended limitations. For example, if you say, "Figure 1 depicts the invention," then there is a risk that details shown in the figure that may be completely optional or peripheral to the "real" invention may be assumed to be an integral part when a judge interprets your claims. If an accused infringer doesn't have those peripheral features, he may escape even if he appears to literally infringe the "plain meaning" of your claims.

You can still use the word "invention," but use it with caution, as in these examples: "In one embodiment of the invention, there may be . . ." or "Figure 1 shows a system that may be considered for use in some versions of the invention."

Some practitioners now strive to avoid using the word "invention" at all, but perhaps that is unnecessarily restrictive.

Slusky urges practitioners to understand the invention thoroughly before writing the Summary or Detailed Description to avoid making sloppy statements about what the invention is or is not, in order to ensure that the specification really does justice to the claims. For inventors, make sure you are working a patent attorney or agent patient enough to learn from you and really understand what your invention is and what its points of novelty and nonobviousness are relative to the prior art. Make sure that the way she or he wants to describe your patent adequately reflects your real invention. It's the up-front work between you and your patent practitioner that will determine the value of the writing in the patent and the ability of your future patent to provide value.

In the drafting of the patent, make sure this simple commandment is obeyed: "Know thy Invention!" And then speak its name with reverence and caution, or you may cast a spell to aid your adversary.

You Could Win a Free Book: Call Me on GotInvention Radio This Thursday Evening

2010-03-17T11:31:00.001-07:00

An exciting new radio show for inventors and entrepreneurs, Got Invention Radio (GotInvention.com), is the creation of master inventor and entrepreneur, Brian Fried. This Thursday night, March 18 at 7 pm CST, I have the privilege of being interviewed. The topic is quality patents and other IP-related topics from the book, Conquering Innovation Fatigue. We'll be giving away a couple of books to a few callers during the hour-long program, so call in with a helpful comment or good question and have a chance to get a free copy of this hardcover book.

The program is aimed at inventors and entrepreneurs, so we won't get too deep into some of my favorite topics, but we do hope to cover some basics on low-cost IA strategies, lessons learned from common and painful patent-related mistakes of inventors, the importance of a good prior art search, and other information that could help your future patents be more valuable and your future business more successful.

Also tune in next week on March 25 to hear Cheryl Perkins, CEO of Innovationedge.

When you are on the GotInvention shows page or most other pages on the site, click on the green box in the upper right-hand corner to launch your media player and listen to the show. It runs every Thursday evening at 7 pm CST. Be sure to call in! The call-in number is provided on the website (in the box you must click to listen, in fact).

Gauging Innovation: Sometimes An "Obvious" Change of Scale Can Be Revolutionary

2010-03-11T12:24:00.000-08:00

I'm one of the skeptics who yawned when the iPad came out. "Just like existing products, only bigger, with fewer features and still no Flash...." I may have been dead wrong. Sometimes what looks like an "obvious" change in a something as simple as a physical dimension can enable who new levels of functionality. That wasn't terribly clear to me with the iPad, and still isn't, but another innovative company following suit opened my mind to the real possibilities here. Meet Spice 2.0, courtesy of Frito-Lay. Now I get it!

So the lesson for the rest of us is to consider what a change in some dimension of your existing products could do to change the way people solve real problems. Better yet, understand the unmet needs of the users of your products and competitive products, and understand how a change in some aspect of what now exists could provide surprising solutions to those problems. Doritos, you've taught us something here. I hope Apple's iPad will also realize similar potential.

Trademarks in China: The Toblerone® Case

2010-03-03T04:38:00.000-08:00

Further progress in China's IP system is reflected in recent trademark litigation in China. See Vanessa Zhou's article on three-dimensional trademarks in China in a recent issue of World Trademark Review. She discusses the success that Kraft Foods experienced when suing to protect their trademark for the triangular 3D shape of their famous Toblerone® chocolate brand.

Along the way, she discusses the nature of trademarks on 3D shapes. Though unusual, they can be obtained.

A three-dimensional mark may consist of the configuration of the goods, the package of the goods or other three- dimensional designs. Popular examples of three-dimensional marks include the ridged Coca- Cola bottle, the Rolls-Royce figure of the Spirit of Ecstasy and Ronald McDonald, the McDonald’s clown character. In practice, however, not all three-dimensional signs can be registered and protected as trademarks.

This is because three-dimensional marks must not be merely functional. Article 12 of the Trademark Law states that "where an application is filed for registration of a three-dimensional sign as a trademark, any shape derived from the goods itself, required for obtaining the technical effect, or giving the goods substantive value, shall not be registered".

She continues to explain further details in deciding if a 3D trademark registration is possible.

Kraft prevailed against a Swiss competitor in protecting their Toblerone® brand. Given the track record of foreign companies increasingly prevailing against Chinese companies in IP litigation, when the facts are in their favor, I suspect and hope that the outcome would be similar if the infringer had been a local Chinese company. There may yet be cases of this kind to observe.

One of the challenges for 3D trademarks arises from related design patents, which may be held by other parties. Ms. Zhou gives a recent case in China where Nestlé sought to sue a Chinese soy-sauce manufacturer for infringement of their 3D trademark of a particular brown bottle shape for their soy sauce product. The competitor, Weishida, actually received a design patent for their bottle shape in 1991 and have been selling the product since 1983, and have sales far greater than Nestlé. Ms. Zhou says that these facts will make it very difficult for Nestlé to prevail.

A related problem occurs in patents, when companies doing business in China find that patents on their products have been filed and issued by others in China. Sometimes their own published patents have been filed by someone else, or in other cases someone has drafted a new patent that may seem to be based on the company's original patent or at least their internationally protected products. These problems are correctable, but can add to the challenges. It's important to have careful searches of Chinese patents done to detect such problematic patents and take appropriate action. As the Chinese IP system becomes more sophisticated and strengthens its resources, questionable patents will become much less of a problem.

Economic Development in Brasilia: Many Lessons for Government Officials

2010-02-19T10:26:00.000-08:00

Below are two recent Pixetell presentations where I share some recent learnings about the exciting economic experiment that has been underway in the small Federal District of Brasilia, a region with 2.6 million people but a GDP of $61 billion, larger than that of many nations. The efforts since 2006 of the government in Brasilia have created an environment where respect for the rule of law and respect for the creative powers of the private sector have unleashed economic growth and resulted in their lowest unemployment rate in history. Next steps will be strengthening financial resources for small business and further strengthening Brazilian IP.

Special thanks to Adriano Amaral, Secretary of State for the State Department of Economic Development in Brasília for meeting with me and sharing his insights and experiences. Like many of the leaders in Brasília, Adriano is not a career politician, but an experienced business leader who has led successful startups, stepped in to bring struggling businesses to life, advised large and small companies, and taught some of the best MBA students in the world. Special thanks also to Hugo Teophilo, former Undersecretary of Economic Development for Economic Studies and Strategy, Government of Brasilia. Hugo is currently a 2nd-year MBA student at the National University of Singapore. I met Hugo in Singapore recently, and he sparked my interest in Brazil and introduced me to Adriano.

The success of the Federal District of Brasília demands further attention, and will be covered in our next book. Our first book with John Wiley & Sons, Conquering Innovation Fatigue, teaches several lessons that resonate with the experiment in Brasilia, as I observe in these presentations. We continue to look for further experts to interview as we explore the many stories and lessons from this region and from Brazil in general. Let us know if you have experiences and expertise to share! Email me at jlindsay at innovationedge.com. And if you'll be there in early June, let me know - we might run into each other!

The Pixetell below, created for InnovationFatigue.com, is set to 480 x 320 pixels). To see the full-sized presentation in higher resolution, click on the full-screen icon in the lower right-hand corner, or to view this in a new window, use this Pixetell link. Pixetell, by the way, is an incredibly easy and extremely innovative tool for sharing information from your computer.

Here is a 14-minute Pixetell presentation prepared for Innovationedge.com, further describing some of the good news coming from Brasilia, focusing on efforts to create an ecosystem for success. Again, I suggest clicking on the full-screen icon for better viewing.

Finding IP.com and Other References Cited in US Patents

2010-02-17T05:54:00.001-08:00

For those new to patent searching, here's a quick example of how to see what issued US patents are citing IP.com publications, or other references. Yes, the PTO is increasingly turning to IP.com in its prior art searching.

A quick answer is that you can search for the string "IP.com" in the search field for "Other references" in some search tools such as FreePatentsOnline.com or the USPTO.gov search engine, though some search engines make it more difficult.

The video below is 480 pixels wide to fit on this blog. To see the full-screen presentation at higher resolution, click on the full-screen button in the lower right corner of the video. To see it in a new browser window, click here. It's about 9 minutes long since I show you some results and pontificate a bit on defensive publications and IP.com as a resource.

Patentable Subject Matter in Europe

2010-02-01T09:46:00.000-08:00

IPKat has a good review on patentable subject metter in Europe. here's a brief excerpt:

In Europe, all inventions that are new and not obvious are patentable [Article 52(1) EPC], but this is subject to various exceptions and exclusions. The exceptions [Article 53 EPC] are:

inventions the commercial exploitation of which would be contrary to "ordre public" or morality;

plant or animal varieties or essentially biological processes for the production of plants or animals; and

methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

The exclusions, being things that are not considered to be inventions [Article 52(2) EPC] are:

1. discoveries;
2. scientific theories;
3. mathematical methods;
4. aesthetic creations;
5. programs for computers;
6. presentations of information; and
7. schemes, rules and methods for performing mental acts, playing games or doing business.

These are, however, only excluded from patentability to the extent that a patent application (i.e. the claimed invention) relates to one or more of these things as such.

As an aside, Lord Hoffmann (who was, until recently, the most senior IP judge in the UK) has come up with two reasons that could be used to at least explain these exclusions. Exclusions 1-6 above fall within what he considers to be the 'practical application principle', that these things cannot be the subject of a patent in themselves, but this would not necessarily stop practical applications being patentable (for example, the practical application of the discovery of the electrical nature of lightning to the invention of a lightning rod). The last exclusion falls within the 'human behaviour principle', since mental acts, playing games and doing business are all aspects of human behaviour that should not (presumably for practical as well as ethical reasons) be patented, even though they may be new, useful and inventive. See here for more details.

With the Bilski case coming before the Supreme Court, the scope of patentable subject matter in the U.S. may also soon become smaller.

Personally, I am puzzled why so many people reject software and business methods as patentable, when the world of innovation and discovery is increasingly moving away from compounds and gadgets per se and increasingly being found in how information is handled. Software and business methods are the future and represent some of the most exciting opportunities for valuable innovation, but the world's patent systems tend to emphasize more tangible innovation. The technical aspects of innovation in these realms are just as meaningful, clever, and impact tangible reality just as much or more than any clever new potato peeler.

Reinventing the Patent System

2010-01-12T09:40:00.000-08:00

IBM, a world leader in obtaining patents, is also working to reinvent the way we do patents. "Reinventing the Invention System" is an article by IBM about the issues of patent quality and innovations such as crowd-sourcing to improve prior art searches. They helped support Beth Noveck in developing an exciting pilot program at the USPTO, Peer To Patent, a system in which inventors could expose their pending patents to the world for commentary and prior art suggestions, in exchange for receiving a rapid examination. The best prior art submitted would be sent to the PTO, who then would ensure that a substantial first office action was delivered within a year from entering the Peer to Patent system.

I tried Peer to Patent with a security system patent of my own. I was thrilled with the results and appreciated the insights shared by others. Of course, I especially appreciated the allowed claims and rapid prosecution! In principle, I'd much rather have a narrow patent that has been subjected to searching from many eyes than a broad one of more questionable validity. Plus I'd much rather have a patent that issues quickly, as mine did, than one that takes five or more years to get a first office action, as has happened to some patents I've been involved with.

Will crowd-sourcing be relied on in the future? I hope so. While the Peer to Patent pilot has closed for now as it reviews the results of its US pilot program, I understand that it will be coming back in some form, perhaps expanded and better than ever. It has its weaknesses, such as the difficulty of motivating searchers to take part and the lack of legal knowledge by the community doing the reviews. "Oh, this is obvious!" is so easy to say, but if you don't understand the legal definition of obviousness, you may condemn a claim that clearly is patentable, or fail to recognize why something that appears novel is probably not patentable after all. Without understanding the law, you may not know what art to search for and what prior publications or products are truly relevant.

Mark Nowotarski, President of Markets, Patents, and Alliances, has proposed an alternative system, the Examiner Advocate, in which skilled patent attorneys and technical experts evaluate sponsored patents and write a proposed office action for USPTO examiners to consider. The proposed office action would be posted on a website and could be used by the PTO, if desired. Of course, there would be a fee for this service. Great concept, one that could greatly enhance the quality of the office actions that are provided. Perhaps a combination of Peer to Patent's crowd-sourcing and the skilled approach of the Examiner Advocate could be the way of the future. Stay tuned!

Peer To Patent pilots have also been launched in Australia and in Japan. This could become a more global phenomenon.

Telling a Story in Patent Drafting: Toot Your Horn, Cautiously

2009-12-11T17:09:00.001-08:00

A bare-bones approach to patents has been proposed by some highly respected practitioners, an approach in which "unnecessary" elements of a patent such as a background section are eliminated in an effort to avoid some potential pitfalls that have been seen in litigation when the Federal Circut imported unintended limitations into the claims or took other steps that limited patent coverage. However, in light of KSR and other recent judicial trends, there may be a case for more story telling to create the case for non-obviousness. If the patent never gets allowed in the first place, making it less susceptible to judicial whims in litigation will do nothing for your patent. There are many pitfalls to avoid, but I believe story telling is now increasingly important to get the patent allowed and then to lay a foundation for others to understand it.

In fact, if your patent will be considered for licensing or sale, it makes a lot of sense to craft your patents with the marketing story in mind. Intellectual assets that harmonize with your marketing story can be especially valuable and helpful in closing deals. If your competitive advantage comes from a particular aspect of a method or product, is that aspect the focus of at least one patent? Does the story in the background section align with what you will one day be telling a client to interest them in the value of your estate?

I've seen some products that tout nanotechnology and boast of their patents, but the claims have nothing to do with nanotechnology. Shouldn't they at least have nanotech in some of the dependent claims? I've seen many patents where the invention is presented in a dry, straightforward way - almost as if the invention were an "obvious" and straightforward solution, albeit novel, to a known problem. That approach might not succeed anymore.

Many times the most clever part of an invention was the recognition of what the real problem was that needed to be solved. Once the problem is known, if the solution is pretty straightforward, the invention may face obvious challenges because an examiner is going to consider what was "obvious to try" for one of skill in the art facing the problem you have solved. If the problem statement involved discovery and surprising insights to even frame it in the first place, then tell that story. Make it clear that there was a process of discovery and surprise in even getting to the problem to be solved. That is a story you are going to need to tell to the Examiner sooner or later--might as well make it clear and hard to miss from the beginning.

Story telling is key in the art of persuading. Examiners enjoy a good story as much as anyone, and can sometimes better understand why an invention really is patentable when the story is told properly.

Toot your own horn, but carefully. Don't suggest that your invention is capable of all sorts of advantages in any way that might suggest that all of the advantages can be obtained in any one embodiment, for an infringer might escape if not all of your advantages are provided. Don't rely one or two versions or alternatives - give many to provide support for your broadest claims. Be very cautious about statements interpreting other patents or other prior art lest an mistake or overly critical statement come back to bite you. But don't be afraid to tell your story of discovery and adventure in bringing forth your product and overcoming the barriers that might have held back those of merely ordinary skill in the art.

Announcing "Got Invention Radio"

2009-11-18T11:05:00.000-08:00

I've had the privilege of working with inventor, innovator, entrepreneur, and author Brian Fried on some of his patents. Very impressive inventor and businessman. I've watched with pride as he's worked to educate and inspire many inventors in New York and beyond. Now I'm delighted to share the news about a new radio program he is hosting to help innovators and inventors. Got Invention radio (see http://www.gotinvention.com) makes it debut this week. Here's an excerpt from a press release at BusinessWire:

Inventor and Author Brian Fried Launches Nationally Broadcasted Live Radio Show “Got Invention Radio” on November 19, 2009 for Inventors and Entrepreneurs on wsRadio.com

NEW YORK--(BUSINESS WIRE)--“Got Invention Radio,” a new live talk radio show for inventors, hosted by Brian Fried, to premier on wsradio.com on November 19th, 2009. Got Invention Radio, a prime time hour long show airs Thursdays at 8:00 p.m. ET/ 5:00 p.m. PT. The show will be available through wsradio.com, the leader in Internet talk radio and can be accessed though the www.gotinvention.com LISTEN LIVE button.

"People have so many great ideas and inventions but they're not sure what their next steps are or how to bring their product to market. That will be the focus of Got Invention Radio,” stated Fried. It was through writing the book "You & Your Big Ideas" (www.youandyourbigideas.com) and founding the Inventors and Entrepreneurs Club in Suffolk County, NY, that Brian first realized the lack of resources available to inventors to get the answers to their many questions. He continued, ”Got Invention Radio is going to be a great resource for today's inventors and want-to-be-inventors. They'll be able to gain the knowledge they need from well known inventors and other service professionals that can help to make the process easier and contribute to their success.”

Got Invention Radio has an impressive lineup of upcoming guests to be interviewed and featured, including Mike Drummond, Editor-in-Chief of Inventors Digest, the only print magazine for inventors, as well as AJ Khubani, the Founder/CEO of TeleBrands, one of the world’s top “As Seen on TV” products company and Louis Foreman, author of “The Independent Inventor’s Handbook”, CEO of Enventys, executive producer of Everyday Edisons; and co-founder of Edison Nation.

About Got Invention Radio

Got Invention Radio welcomes listeners to call-in during live broadcasts to ask the guest experts questions. All shows will be archived and will be podcasted via itunes. A resource link is available on the website to serve as an ongoing flow of information for inventors and new business owners. Join our community online at Linkedin, Twitter and Facebook.

Congratulations, Brian!

For Sharper Innovation, Focus Not on Ideas But on Unmet Needs

2009-11-05T06:29:00.001-08:00

In response to a recent BusinessWeek article on generating creative ideas ("How to Produce Big Ideas on Demand"), one commenter, Larry McDonald, made a valuable albeit overstated observation about the problem with idea generation per se:

Ideas are the kiss of death, sadly. The fastest way to fail is to have ideas, instead of looking for unmet needs. If you must have ideas, the most critical issue is what you choose to have ideas about. Picking the right subject to innovate around should be half the task. Once you know the target of opportunity, only then think of solutions.

Ideas on their own can be a problem. They can distract and turn our focus away from the real needs in the marketplace. Too many inventions and patents represent clever concepts in search of a problem. Without being tied to meaningful unmet needs, the idea or invention, no matter how clever and interesting, is unlikely to become an innovation--something that changes the way people do things. The place to begin is not with lots of random ideas, but with understanding what people need and what problems they are facing, even if they can't recognize and express that problem.

The Dangers of Listening to Outsiders: The $1.26 Billion Dollar Judgment Against Pepsico

2009-10-29T08:39:00.000-07:00

The press is focusing on the mistake of a busy secretary that led Pepsico to miss a court hearing, resulting in a $1.26 billion judgment against the company. Two men from my state of Wisconsin filed a suit claiming that Pepsico stole their trade secret idea for bottled water, obtained from them in a 1981 meeting, and then used that secret information to launch the profitable Aquafina bottled water business (over a decade later).

The legal notice to Pepsico was accidentally ignored by a busy secretary rushing to prepare for a board meeting. With Pepsico a no-show in court, the judge gave a default judgment in favor of the plaintiffs. Over a billion dollars! Ouch.

Pepsico is likely to be given a chance to defend itself after all, and I expect that they will prevail. In any case, there are several lessons here for companies. Apart from the obvious ones about keeping track of incoming documents and not overloading secretaries, I think this case points to the unfortunate risks that companies face in dealing with outside innovators for open innovation or partnerships. In many cases, outsiders feel that their idea--no matter how obvious, how unpatentable, or how well-known in the prior art--has been stolen, when in fact their idea got nowhere in the company or made no difference, and was either already known or independently conceived and developed. But claims of theft, even when highly implausible, can still result in much expense and pain for the company.

Here's some information from the Post-Crescent newspaper:

Charles Joyce, of Juneau, Wis., and James Voigt, of Cleveland, Wis., sued PepsiCo in April, asking for a jury trial and damages of more than $75,000. Their lawyer, David Van Dyke, told The Associated Press the two had worked together and came up with the idea to bottle purified water in individual servings.

Joyce's and Voigt's lawsuit accuses PepsiCo of misusing trade secrets. It also names Wis-Pak Inc. and Carolina Canners Inc., companies that make and distribute PepsiCo products, and Thomas M. Hiles, then the executive vice president of Carolina Canners. . . .

The pair claim they entered written confidentiality agreements about a new beverage they were calling "U.P." with executives of Wis-Pak and Carolina Canners in 1981. The executives violated the agreements and gave the information to PepsiCo, which eventually rolled out a bottled water brand — Aquafina — about a dozen years later, Joyce and Voigt claim. . . .

"The plaintiffs' claim — that in 1981, they gave someone other than PepsiCo an idea for a 'soft drink' and that somehow, 15 years later, PepsiCo used that alleged information to develop the Aquafina Water products — is completely dubious and without merit," [Pepsico spokesman Joe] Jacuzzi said.

Van Dyke, with the Chicago law firm Cassiday Schade, said he is drafting a response to PepsiCo's motion. He said he asked for $1.26 billion based on the revenue and profit PepsiCo has made from the Aquafina brand.

If the agreements were enforceable contracts, the plaintiffs may have a case, said Mark Leonard, a partner at Davis and Leonard LLP, in Sacramento, Calif., who focuses on intellectual property. Typically, patents are the best way to protect ideas, he said, but not everything can be patented.

"In the event it was not patentable, which would not surprise me, then the only way to protect that idea would be contractually," he said.

Readers may wish to review the history of bottled water on Google Answers and Nestle's 1200-year history of bottled water to realize, of course, that bottled water is not a recent invention. See also the history section of Wikipedia's entry on plastic bottles. Single-use plastic bottles for beverages didn't really become feasible and popular until the introduction of PET bottles in 1975, invented by invented by DuPont's Daniel C. Wyeth.

Back to the dangers of open innovation: so what is a company to do? First, many firms now require that innovations submitted to them be public information or even patented information only. In the case of business concepts or business models, information that the outsiders view as innovative may be presented during negotiations, often under confidentiality agreements. Consult your legal team for best practices in this area. Among practices that I've seen, the terms of a confidentiality agreement can require that the outside entity explicitly state what information is regarded as confidential to avoid future surprises, and a company can challenge potentially inappropriate or outrageous claims to prevent future misunderstanding. "Sorry, but the idea of putting water in small bottles and selling them is not yours." A company can also provide an internal firewall to keep potentially confidential information away from those that may be pursuing related paths in the corporation, but that take a lot of work and caution.

I've had numerous inventors claim that their ideas were stolen by a big company. In most of the cases, when I probe, there was little merit to the claims and often it seem that they may not have had anything real to steal in the first place. There are some cases where theft may have occurred, which is a subject for a later post and the subject of some sections in our recent book, Conquering Innovation Fatigue.

Inventors and innovators approaching companies must understand that part of the systematic reluctance to be exposed to outside ideas comes from the risk of facing expensive law suits based on questionable claims of theft, when in fact the ideas brought by the outsiders were obvious, well-known, or independently developed by the company. When you knock on their door, they see you through the "Lens of Risk" and not the rose-colored glasses you think they should use. They see risks, lawsuits, and defamation, not the billion-dollar opportunity you think you have created. That perspective needs to be understood if you are going to get anywhere with them.

The Future of Business Method and Software Patents? Keep Your Eyes on the Bilski Case

2009-10-06T07:50:00.000-07:00

The pending Supreme Court case of Bilski v. Kappos may do much to clarify the role of "business method" and software patents in the U.S. The In re Bilski case added some new hurdles (offering the machine or transformation test as the test for patentability, not the less demanding test from State Street Bank v. Signature Financial Group), and that decision is now being appealed before the Supreme Court. PatentlyO summarizes the briefs being filed in support of the US Government's position. In discussing the Government's brief, PatentlyO also observes that the Government is taking an originalist position, seeking to apply what the framers of patent law in the 18th and 19th century intended regarding patentable material. Interesting! (And I thought originalist thinking was long dead in D.C.)

BusinessWeek Names 23 Masters of Innovation (Surprising Default from Two Companies)

2009-09-26T18:50:00.000-07:00

BusinessWeek went to the twenty-five companies that topped its list of the most innovative (generally large) companies in the world, and asked them to nominate a leading innovator to be part of BusinessWeek's top 25 masters of innovation. None of these candidates carry the title of Chief Innovation Office. John Donovan of AT&T, for example, is the Chief Technology Officer, and a variety of other titles are represented.

What I found especially interesting was the lack of a nominee from Wal-Mart and Reliance Industries of India. In both cases, I can imagine that there were so many high-level people who could have been chosen that the company felt uncomfortable nominating just one. I hope that's the case. Wal-Mart is a surprisingly rich source of innovation in many areas, from their green initiatives to supply chain technology, from vendor relationships to their emerging private label strategy. And now they are taking on Amazon with Wal-mart Marketplace. Stay tuned! Reliance likewise is a highly innovative company with many key figures driving innovation. They have a Reliance Innovation Leadership Centre, a Corporate Research and Technology Centre, a Reliance Innovation Council, and many healthy partnerships that make the largest private sector company of India (and second largestprivate conglomerate in the world) highly productive and innovative. I can understand how difficult it would be to select just one innovation leader for BusinessWeek's award.

In any case, congratulations to each of the the top 25 companies and to all their masters of innovation!

Are You Neglecting the Power of Defensive Publications?

2009-08-30T03:51:00.000-07:00

One of the most important lessons I learned about intellectual asset strategy during my time as Corporate Patent Strategist at Kimberly-Clark Corporation was the value of aggressive defensive publications. IBM, one of the world's leaders in extracting value from its patent estate, publishes about half of all its invention disclosures. One of my favorite IA strategists, John Cronin of ipCapital Group, taught us some of the reasons for IBM's aggressive publishing and some of the unexpected benefits of publishing. He was one of the drivers of IBM's early and successful efforts to generate revenue by licensing its estate. One of their early efforts involved a patent for a technology (scanning tunnelling microscope) where the value of a patent estate ended up being reduced by about 90% due to a group of minor improvement patents on top of the foundational IBM patent. Many of the improvements were things that IBM had thought of but didn't feel were worth the cost of additional patents. They realized that such improvements needed to be disclosed to create prior art that would stop others from getting patents for all those minor variations or minute improvements, thereby increasing the value of their own estate.

The IBM STM story is behind this passage from Richard Poynder's 2001 article, "On the Defensive about Invention":

As patenting strategies become more sophisticated, so the value of defensive publishing increases. It can, for instance, protect against picket-fencing - where competitors patent small incremental improvements in your patent in order to erode its value and enable them to license your technology on preferential terms.

In 1982, for instance, International Business Machines was granted a US patent for the scanning tunnelling microscope (STM) capable of imaging atomic details as small as 1/25th the diameter of a typical atom.

At first IBM dominated the STM field. By 1989, however, it had been picket-fenced by competitors.

"If IBM had published disclosures of all of the incremental innovation around their pioneering technology, they could have prevented others from picket-fencing them," says Tom Colson at IP.com. "They would, in effect, have taken full control of the technology without putting patent resources at risk."

Such blocking tactics can also be achieved by patenting the incremental improvements, but defensive publishing is significantly cheaper. "It costs $109 ( £75) per document to publish on IP.com," says Mr Colson. "This compares very favourably with the $20,000 it costs per patent application to file in key locations worldwide."

The price at IP.com has come up since then, but it's still an incredible bargain. For a very small fee, your document is almost instantly published and time stamped, archived, and made searchable by the PTO and other patent offices, providing a lasting and secure record that the information disclosed was part of the public domain at that time.

Some of you with corporate R&D or IP experience have faced the pain of seeing competitors get patents on things you had considered long ago but thought were too "obvious" or minor to be worth a patent. An important lesson from IP litigation is that even an invalid patent can still be a major headache, one that can cost millions. Much better to reduce the odds of such nuisance patents by creating a strong body of prior art that discloses bells and whistles as they come up and also discloses various combinations that competitors might be working on to reduce what they can patent in the fields important to you.

Publications need to be crafted for strategic purposes. There are quite a few issues to consider, such as how to get the internal review needed to avoid harmful disclosure, how to get them written, what kind of incentives to provide for inventors/authors, whether to publish anonymously or not, and what venues to use (IP.com is one of my favorite), etc. I'll be discussing some of these issues in the future, but feel free to give me a call if you'd like to learn more.

When Innovationedge helps a company strengthen their innovation strategy or IP strategy, defensive publications are usually one of the key topics we address. We find very few companies do anything serious in this effort, and many Legal Departments seem inherently geared to overlook the benefits that can be obtained with creative publications. That's understandable. The IP attorneys are all about IP, and publications don't fall into the "P" area of property. They are intellectual assets, however, that must not be neglected for cost-effective IP strategy.

Lessons from Magic and Innovation: Extracting Value from Inventions

2009-08-19T20:13:00.000-07:00

As an amateur magician (one of my hobbies), I've tried to apply some magical concepts to the world of innovation and intellectual assets. Though I'm just learning how to work with video and Youtube, several of my attempts have been posted over at InnovationFatigue.com, the new blog supporting our new publication from John Wiley and Sons, Conquering Innovation Fatigue. Well, let's hope I improve with time.

Here's one example that might be helpful for some of you interested in the topic of bringing outside inventions and intellectual property to corporations.

The USPTO and the US Patent System: Great Reporting in the Milwaukee Journal Sentinel

2009-08-17T06:48:00.000-07:00

(Cross-posted at InnovationFatigue.com, but with a different title.)

Those of you who follow me on Twitter may have seen a post last night pointing to a newly published resource about the US patent system from Wisconsin's leading newspaper, the Milwaukee Journal-Sentinel. In addition to a fascinating interactive resource at JSOnline.com, John Schmid and Ben Poston, two outstanding reporters, have prepared a valuable two-part series on the US Patent System. I've spoken with John recently and appreciate his genuine efforts to not only be fair, but to dig deep and understand complex issues. He and his co-author have obviously been burning the midnight oil to craft their series on the patent system and probe how some of the challenges in the US affect companies, universities, and entrepreneurs.

Their first article, "Patent backlog clogs recovery: Agency’s inability to keep pace undermines American innovation, competitiveness," raises some serious red flags about what is happening in the USPTO. It's not pointing fingers at the USPTO per se, but at the need for Congress and other elements of our government to do more to strengthen our patent system and US competitiveness. Here are some of their findings:

Amid the worst downturn since the Great Depression, the U.S. Patent and Trademark Office could be seen as a way to jump-start the economy. Instead, it sits on applications for years, placing inventors at risk of losing their ideas to savvy competitors at home and abroad.

The agency took 3.5 years, on average, for each patent it issued in 2008, a Journal Sentinel analysis of patent data shows. That's more than twice the agency's benchmark of 18 months to deal with a patent request.

The total number of applications waiting for approval, more than 1.2 million, nearly tripled from 10 years earlier.

The Journal Sentinel also found:

• Under a practice that Congress authorized a decade ago, the Patent Office publishes applications on its Web site 18 months after the inventor files them, outlining each innovation in detail regardless of whether an examiner has begun considering the application. The system invites competitors anywhere in the world to steal ideas. [Update: Actually, if the patent is filed in the US only, it is possible to request nonpublication, in which case the invention isn't public knowledge until it is issued as a patent.]

• For more than a dozen years starting in 1992, Congress siphoned off a total of $752 million in fees from the Patent Office to pay for unrelated federal projects, decimating the agency's ability to hire and train new examiners.

• As its backlog grew, the Patent Office began rejecting applications at an unprecedented pace. Where seven of 10 applications led to patents less than a decade ago, fewer than half are approved today - a shift that a federal appeals judge termed "suspicious." The same judge calls the agency "practically dysfunctional."

• Staff turnover has become epidemic. Experts say it takes at least three years for a patent examiner to gain competence, and yet one examiner has been quitting on average for every two the agency hires.

• Patent activity, a widely accepted barometer of innovation, is showing exponential growth in increasingly competitive economies such as China, South Korea and India. As developing economies strive to commercialize and protect their technologies throughout the world, they add tremendously to the U.S. Patent Office's workload.

• In many cases, applications languish so long that the technology they seek to protect becomes obsolete, or a product loses the interest of investors who could give it a chance at commercial success. "Patents are becoming commercially irrelevant to product life cycles," said John White, a patent attorney and former examiner.

For an American start-up company, a patent application is often the only asset, which creates a Catch-22: Start-ups often need a patent in order to get funding; yet without that funding, entrepreneurs can't afford the mounting fees and legal costs to keep the patent application alive or to fend off infringers.

The article continues with a look at the impact of these problems on several Wisconsin companies.

Part 2 of the series is "Patent rejections soar as pressure on agency rises: Penalized for flawed approvals, examiners keep pace – and pay – by refusing applications." This deals with the increasing barriers to allowance and the loss of morale among many seeking patent protection. Here's an excerpt:

After consistently rejecting applications at a rate of about 35% since 1975, the Patent Office — faced with a growing backlog — underwent a convulsive shift around 2004 and now turns down well over half. In the quarter that ended June 30, it denied more than 59%.

Critics contend the agency’s efforts to catch up with the burgeoning backlog have only made things worse. At the same time, the number of appeals filed by rejected applicants such as Mertz has skyrocketed, further clogging the system.

The agency has become “practically dysfunctional,” says Paul Michel, chief justice of the Court of Appeals for the Federal Circuit, the branch that handles the nation’s patent cases.

“Innovation is supposed to get us out of this economic crisis,” said patent attorney Teresa Welch, who works in the Madison office of Michael Best & Friedrich. “But if the Patent Office is not issuing patents — and they’re not — it’s not going to happen.”

The Patent Office contends that more patent applications are being rejected these days because more deserve to be rejected. Patent Commissioner John Doll, who started as a patent examiner in 1974 and served as the agency’s acting director from January to August this year, proudly spent the past two years showing off a chart depicting the declining allowance rate — the percentage of applications that are granted as patents — as he made public appearances.

As one who has faced some arguably unreasonable rejections and lengthy delays in obtaining patents, I can sympathize with these frustrations. Of course, every patent applicant believes they have an allowable application and will feel that a rejection is unfair and harmful to the business opportunity they are pursuing. It may be that the higher rejection rate does not reflect a serious drop in the quality of applications but may at least partially reflect internal pressures of an overwhelmed and under-funded USPTO, but rejections per se are not a problem.

I would suggest that we should also remember that each allowed patent affects more than just the patentee. A patent can shut down competing businesses or squelch entrepreneurial plans. It is right that the original, true inventor should have some protection for unique intellectual property that he or she developed. But when a patent is allowed for something that is not novel or truly is obvious, then that which should have been part of the public domain may be removed and capricious barriers to business success may be imposed that can actually hurt innovation in the long run. In our book, Conquering Innovation Fatigue, we support protection of property rights and advocate a strong patent system, but we also dedicate an entire chapter to a case study of the harms that ensue when a bad patent is issued. In the case we explore, an innovative Wisconsin sprout farmer nearly lost his entire business because of a clearly questionable patent from Johns Hopkins University. In spite of "slam dunk" prior art, it still took five years and most of the retirement funds for our local innovator to stand against the high-paid team of lawyers from a powerful university and prevail. The balance between allowing valid patents and not allowing invalid patents is a delicate one that requires caution. Not just caution, but plenty of time and resources for careful examination and highly skilled examiners.

One interesting step for improved and accelerated examination, which we discuss in our book, is the Peer to Patent pilot program with the USPTO. My experience with my own patent for a security system was remarkably positive. Got an excellent examination and rapid allowance of the software/business method patent, shaving years off the normal examination time. I hope that Peer to Patent continues to expand. Meanwhile, I agree with the gist of what John Schmid and Ben Poston are saying: we need to strengthen our US patent system to reduce the backlog, maintain high quality, and promote sound intellectual property rights in the US. Easy to say, but carrying that out is a remarkably difficult task.

Microsoft Loses Patent Infringement Suit over XML

2009-08-13T07:59:00.000-07:00

Breaking news: Yesterday, Aug. 12, Microsoft was found to infringe U.S. Patent 5,787,449, "Method and system for manipulating the architecture and the content of a document separately from each other." The patent describes a method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. The system includes a map of metacodes in the document and is said to provide for multiple views of the same content, the ability to work solely on structure and solely on content, storage efficiency of multiple versions, and efficiency of operation. And all that boils down to XML. This may have even bigger implications, according to a CNET report, "Microsoft's 'Custom XML' patent suit could put ODF at risk":

The infamous U.S. District Court for the Eastern District of Texas has slapped Microsoft with a permanent injunction that "prohibits Microsoft from selling or importing to the United States any Microsoft Word products that have the capability of opening .XML, .DOCX or DOCM files (XML files) containing custom XML," according to CNET. This likely won't stop Microsoft Office from shipping, as CNET's Ina Fried writes, but the bigger question may be whether the lawsuit will reach beyond Redmond to also threaten the Open Document Format (ODF).

CNET also quotes Gartner analyst Brian Prentice about the patent itself:

I think this one might actually have some legs. Keep in mind is that this claim was filed back in 1994. The claim considers the existing state of the art at that time....

One thing seems clear to me - this is not a typical rubbish software patent that earns its filer a 20 year monopoly on the dead obvious. Fifteen years ago this would seem to me to have been an innovative idea....

The litigant, "i4i", is being was awarded $200 million in compensatory and $40 million punitive damages. For further details, see PatentlyO and Prima Facie News.

Microsoft has 60 days to comply. If things change, they will have to quit selling Microsoft Word or change it to remove or modify the current .docx format, perhaps using a patch to take out the infringing features. As Dennis Couch at PatentlyO observes, they could also buy the patent, but it's going to cost a lot more now than it did in 2007.

This case will be used to bemoan software patents and suggest that patents are a bad thing. Some patents are bad and should never have been issued. But assuming this is a valid and reasonable patent, then I would say no, it's not patents that are bad. It's infringing and ignoring other people's valid intellectual property that is bad. Not to mention dangerous and costly.

Patent Reform Risks: Consider the Voice of the Innovator

2009-07-28T05:22:00.000-07:00

In the current efforts to bring "patent reform" to the United States, the voices of several loud and powerful groups appear to have much sway. Some of the most controversial aspects of the pending bills on patent reform appear well suited for aiding large companies who find patents (of others) to be costly nuisances. The proposed reforms will reduce potential damages for infringement and, through expanded third party challenges, post-grant review, and other provisions, make it more difficult and costly to obtain a patent. Changes in assessing damages may make it harder to benefit from a patent. Inventor rights might be diminished, one can argue, by giving patent rights to the first party to file rather than the original inventor.

The frustrations of Apple, IBM, and other large companies deserve some sympathy and attention, but the risk is that the most important engines of future innovation and business growth will be ignored. The next Steve Jobs may be a graduate student right now, and the leaders of the next wave of transformative innovation may be small entrepreneurs in fragile start-ups struggling to hold their own against well-funded incumbents. Who is listening to the voice of the innovators to come? Who is listening to the voice of innovators in small companies or lone inventors, frustrated over the unnecessary barriers to obtaining patent protection and the decreasing value and increasing uncertainty of patents?

Patents are the great equalizer. They give a lone inventor with a valuable innovation the chance to hold on to his or her intellectual property and profit from it, rather than having it usurped by more powerful forces. The temptation to take and exploit others' property is almost irresistible, when it can be done with impunity. Patents are the equalizer that can allow an incipient company to flourish. Who is listening to the voice of these small but important innovators who will shape the future? They don't have rich lobbyists now, so will they be ignored?

We must not make massive changes to the US Patent System that might weaken patent rights for small innovators unless we carefully understand what the impact on them will be, and determine how their needs and rights can be protected.

Consider one controversial aspect of proposed reform legislation, post-grant reviews. Once a patent has been issued in the current system, there is a presumption of validity and while the patent can be challenged in a re-examination proceeding or invalidated in litigation, the opportunities to attack a granted patent are strictly but reasonably limited. In the proposed legislation, the US system would be made more like the European system, where challenges to issued patents can add years of delay and heavy costs on the patent applicant. This system, in my opinion, can make life difficult for lone inventors and small, struggling companies seeking to use patents to gain a foothold against powerful incumbents. Dr. Scott Shane, a professor of economics at Case Western University, has written a paper examining the impact of the post-grant provisions in the legislation (PDF file). Here is an excerpt from his overview:

In the last Congress, both the House and Senate considered legislation to create a post grant review process lasting the life of the patent as part of the Patent Reform Act of 2007. A revised version was passed by the House of Representatives in September 2007.

In April 2009, the Senate Judiciary Committee reported the Patent Reform Act of 2009, which contained identical language on post grant review to that contained in the House passed bill of 2007. The language in the Senate Patent Reform Act of 2009 would create a 12-month post grant review period and expand the existing inter partes reexamination in a fashion that, together, would be similar to the European system of post grant opposition.

The purpose of this report is to outline the likely effects of the 2009 Senate legislative proposal. Contrary to the arguments made by proponents of the legislation, this expansion of administrative processes for challenging patent validity would likely have several adverse effects, including the following:

1. Increasing the length of patent pendency;
2. Creating uncertainty about patent validity;
3. Decreasing the disclosure of knowledge necessary for innovation;
4. Increasing the costs of achieving patent validation;
5. Reducing investment in R&D;
6. Hindering efforts of U.S. universities to transfer their inventions to the private sector; and
7. Increasing strategic patenting behavior by large, established firms.

Moreover, the proposed legislation will not have many of the beneficial effects the proponents of the legislation claim it will have. In particular, the proposed legislation:

1. Will not improve patent quality;
2. Will not reduce the cost of patent litigation; and
3. Will not speed the determination of patent validity.

If he is right, these are serious issue that will have an especially severe impact on small inventors and start-ups, which may beneficial to the large companies who are annoyed by those who are sometimes inappropriately called "trolls." But what will the impact be on innovation?

The United States patent system has its problems, but the fundamental premise of protecting the rights of actual inventors (rather than the first to file) and the favorable protection of property rights (including intellectual property) in this country is arguably one of the very keys to the economic miracle of the United States. The rush to make our country "more like the rest of the world" is not necessarily the wisest path. Perhaps it should be the other way around. I believe we will see economic prosperity grow in those nations like China that are working to strengthen inventor rights, not weaken them.

The problems we do have can be addressed in other less radical means. Given the anti-property rights mentality of so many in power today, I do not trust that the outcome of "patent reform" will protect property rights as well as the current system, especially if the voice of the innovator is overlooked. Unintended consequences on innovation in this country may be severe.

One can argue that some of the problems the reform legislation seeks to fix have already been largely resolved in the courts, or are minor issues not worth the price of the cure. Some aspects of the legislation are healthy, but the problems cannot be overlooked.

Useful related reading: "How President Obama Can Restore Our Patent System" by Robert W. Fieseler.

Inventions Ahead of Their Time

2009-07-19T17:16:00.001-07:00

One of my painful experiences in the pursuit of patents at past employers and on my own has been unexpected encounters with prior art. Even after serious and careful searching, one may later find that someone else pursued a very similar idea many years ago. Like the Good Book says, there is no truly novel thing under the sun, though there may be many nonobvious improvements thereof.

A great example of this is the iPod, a terrific innovation that may have been anticipated to some degree in 1979. "Suspiciously Prescient Man Files Patent for iPod-Like Device in 1979" is Dan Nosowitz's recent post at Gizmodo pointing out how an old, expired patent hinted at several aspects of the iPod. Of course, music players and MP3s were already around when the iPod came out, but the 1979 data is rather surprising. That patent may have had some great concepts, but like many inventive concepts, it may have been too early to be practical and successful. Timing is so important for success in innovation: is the market ready, is the supply chain available, is there an ecosystem that can be tapped, can the concept stick and resonate with other innovations, and can it be offered economically?

Consideration of the market roadmap for a prospective innovation can be critical for success. Many times suceess requires adjusting the business model to find the resonances that can add energy to the offering and to find ways to present the innovation in a disruptive manner rather than going head-on against established incumbents. Innovation is often more about the business model and marketing plan than it is about the technology itself. The iTunes model was part of what made the iPod a winner. 1979 was the wrong digital era for that invention.

A hat tip to RobMcNealy on Twitter for a mention of the Gizmodo article.

Update: An example of an invention ahead o fits time was the photophone of Alexander Graham Bell. About.com's article on Mr. Bell explains:

Among one of his first innovations after the telephone was the "photophone," a device that enabled sound to be transmitted on a beam of light. Bell and his assistant, Charles Sumner Tainter, developed the photophone using a sensitive selenium crystal and a mirror that would vibrate in response to a sound. In 1881, they successfully sent a photophone message over 200 yards from one building to another. Bell regarded the photophone as "the greatest invention I have ever made; greater than the telephone." Alexander Graham Bell's invention reveals the principle upon which today's laser and fiber optic communication systems are founded, though it would take the development of several modern technologies to realize it fully.

Cai Lun (蔡伦) and the Ancient Chinese Invention of Paper: Lessons for Modern Innovators

2009-06-29T19:09:00.000-07:00

Among the many inventions that came from ancient China, four in particular have been given attention for their impact on the modern world. Known today as the “Four Great Inventions” (四大发明; or “si da fa ming”), they are:

The Compass
Gunpowder
Papermaking
Printing

Who can overestimate the profound impact of the last two intertwined inventions on our world today? But providing the proper credit for these ancient inventions is a difficult task. Today, though, I wish to honor the Chinese innovation of paper by giving attention to one of its foremost ancient champions.

As Dard Hunter wrote in his classic book on the history of paper (Papermaking: The History and Technique of an Ancient Craft, New York: Alfred A Knopf, 1943), the development of most crafts, including papermaking, are enshrouded in mystery. Nevertheless, the best information we have points to a servant of the Chinese imperial court, a eunuch named Cai Lun (sometimes spelled Ts’ai Lun), as the man who should be or at least can be credited with the innovation of paper in 105 A.D. This was during the height of the Han Dynasty (202 BC-AD 220, more specifically the Eastern Han Dynasty, AD 25–220), one of several golden eras of Chinese history.

I choose my words carefully when I speak of the innovation and not necessarily the invention of paper. The invention–the original creation of a web made from macerated, individual fibers laid down in a slurry on a porous support such as a wire or cloth–may have been by someone else. There is archaeological evidence of paper made from hemp decades earlier, and there is the probability that in Cai Lun’s day, others working for him devised or improved the papermaking process that has long been associated with his name. But Cai Lun took paper beyond being a technical invention and helped drive its widespread adoption such that it became a successful innovation, one that would stick and change the world for centuries to come.

The history of innovation teaches us that a single inventor is rarely responsible for a noteworthy invention, especially one that dramatically changes the world for good. A long list of people may have contributed knowledge and advances to the creation of paper in Cai Lun’s day, with many thousands having done the same since his time to give us the brilliant spectrum of products and processes we now know.

In the fifth century, the Chinese scholar Fan Ye credited Cai Lun (蔡伦) with the discovery of paper in his official history of the Han Dynasty. He writes that Cai Lun, a highly regarded eunuch in the Imperial Court, applied his talents to solve the problem of making writing more convenient. Writing and inscriptions were done on bamboo or silk strips, but these were not convenient materials to work with and silk was costly. Fan Ye credits Cai Lun with having “conceived the idea of making paper from the bark of trees, hemp waste, old rags, and fish nets.” Perhaps he was the originator, the one who conceived of and invented paper, or rather, reinvented or improved what others had tried earlier. Perhaps he had a vision for improving a prototype material and the method of making it, and gave directions to his staff for the trials to run to obtain breakthrough improvement. In any case, Fan Ye indicates that he and his crew conducted research on this topic, made significant advances, and then, importantly, made a report to the Emperor that was highly regarded and gained support.

The China Internet Information Center (China.Org.Cn) reports that when Cai Lun presented his first batch of paper to the Han emperor, the emperor was so delighted that he named the material “Marquis Cai’s paper.” In 1974, archaeologists found Eastern Han Dynasty paper found in Wuwei with written words that were still clearly decipherable. “Thin, soft, and with a smooth finish and tight texture, this paper is the most refined and oldest paper discovered to date.” [This may exclude some older cruder specimens.]

In addition to Cai Lun’s technical advances, his report to the Emperor may have been a crucial step in driving the social adoption of paper, resulting in its widespread use. According to Fan Ye, after he submitted his work to the Emperor, he “received praise for his ability. From this time, paper has been in use everywhere and is universally called 'the paper of Marquis Cai.” Paper was about to become more than a rare find in future archaeological digs, but a universally used medium that would change the world for centuries, even millennia to come.

Many inventions wither away into obscurity and fail to become lasting innovations until the right person with the right vision, means, and connections comes along and breathes life and fullness into the concept. Cai Lun, with access to the Emperor, with a vision of the potential of the invention, and with the credibility and track record to make a report that would gain imperial attention and support, was such a man. It is Cai Lun whom we can properly credit for successfully driving the innovation of paper into ancient Chinese and ultimately world history, regardless of how much of the actual inventing was done by him.

Cai Lun was born in Guiyang (modern day Leiyang). He served as a court eunuch since AD 75, was then promoted several during the time of Emperor He of the Han Dynasty. Around AD 97, he would distinguish himself and his men through his highly skilled work in producing swords and other weapons that served as models for future weapons production.

After his success with paper, he was praised and rewarded with the taxes from three hundred dwellings and became a chief in the palace. He was also trusted in correcting some important written histories.

Unfortunately, Cai Lun became involved in imperial intrigue, assisting the Empress in dealing with a romantic rival for the Emperor’s attention. When power shifted in AD 121, he was called to be judged for his role. Rather than appear for judgment, Cai Lun bathed, dressed in his finest robes, and then drank poison, ending the life of the great innovator whom we can honor for one of the most important inventions in the history of civilization.

Our Book Is Out: Conquering Innovation Fatigue, Published by John Wiley and Sons

2009-06-27T19:26:00.001-07:00

I'm happy to announce that our book on innovation, intellectual asset strategy, and entrepreneurship is hot off the presses at John Wiley and Sons, the publisher that was my first choice for Conquering Innovation Fatigue. Cheryl Perkins, CEO of Innovationedge and named by BusinessWeek in 2006 as one of the world's "Top 25 Champions of Innovation," is a co-author, along with Mukund Karanjikar, an innovator who was with Chevron Energy Ventures when we began developing this book in 2006 and now is a consultant in Salt Lake City with Technology Holding LLC.

I just received my first printed copy of the book. It's so nice to have the tangible product in hand after this three-year journey leading to the book in print. Whew! Was much more challenging than I thought.

Conquering Innovation Fatigue focuses on the personal side of innovation and reveals the often unseen "innovation fatigue factors" that can shut down innovation. It's written for entrepreneurs, business leaders, inventors, and even government officials, showing these unseen and often unintended barriers and revealing how they can be overcome.

Throughout the book there is a focus on intangibles such as the trust between an innovator and an employer that can be easily destroyed through a variety of corporate actions, resulting in an invisible innovation killer. See our chapter on "Breaking the Will to Share." We give a plug for Value Network Analysis (with a hat tip to Verna Allee of ValueNetworks.com) and are informed by the VNA mindset in many of the issues we explore as we consider the personal side of innovation.

Visualizing the Unseen: Powerful Tools in Innovation

2009-06-17T07:55:00.000-07:00

An exciting development in materials science is a new class of polymers that change color when under stress. The American Chemical Society recently highlighted the work of Dr. Nancy R. Sottos at the University of Illinois, Urbana-Champaign, who spearheaded the research that provided the first solid polymers that change color as a function of stress. This provides an important new tool in visualizing what is happening when materials fail and deform. Tools that make the unseen visible often opens up progress in many other areas. The ACS article on this work gives a hint at some of the advances that may follow:

"These polymers are extremely interesting to materials scientists since they combine photo-, thermo-, and mechanochromic properties into a single system," comments Stephen H. Foulger, a materials science professor at Clemson University, in South Carolina. "These properties, coupled with the fact that the color change can be maintained with the cessation of stress, can be exploited by engineers in the design of polymeric components that visually indicate to the end-user their stress, strain, thermal, or ultraviolet-visible light exposure history. It's a true smart material," he says.

Sottos tells C&EN that the work demonstrates the concept that mechanical force can trigger the activation of specific covalent bonds in a polymer. She hopes to develop new mechanophores that do more than just change color. For example, molecules that cross-link or polymerize in response to mechanical stress could lead to self-toughening or self-healing materials, she says.

Polymers and material science are not the only place where progress occurs when that which was long invisible can now be seen. Innovation is possible in how we do business or run an organization when we apply new tools to track and observe the typically invisible flow of intangibles in the value network or ecosystem of the organization. These intangible include the sharing of knowledge, the communication and relationship building activities that occur in transactions between individuals that aren't described by looking at tangibles like the flow of goods, services, and money in the value chain, the visible things that are normally observed in business and organizations. Much of the performance of an organization depends on the hard-to-see intangibles that create the knowledge, loyalty, trust, and relationships that are often the primary engines for business health and success.

Intangibles can be visualized, at least to some degree, using Value Network Analysis and related tools. By considering and searching for the nature of the human-to-human transactions of intangibles and mapping these, visualized organizational characteristics can do much to help analysts understand strengths and weakness of an organization, and point to areas where improvement is needed.

If you're not considering both tangibles and intangibles in your business, if you haven't mapped out your ecosystem to understand how your organization works, then you may benefit from Value Network Analysis, which is one of the services that Innovationedge and its associates can provide for your organization.

Practice Tip for Preparing Information Disclosure Statements (PTO Form SB08a)

2009-06-16T14:38:00.000-07:00

For those of you who file patents electronically or simply use the PTO's online forms in filing and prosecuting patents, you may have experienced some problems in the past with PDF forms that couldn't be saved. Many of these forms have now been improved, so recent versions may let you save information. But there are still some pitfalls. For example, the other day I was preparing an Information Disclosure Statement (IDS) for a client using the PDF form that pops up from the PTO forms page when you click on the link labeled "SB08a EFS-WEB," a form intended for online filing. Clicking on it opens the PDF file directly in your browser. TIP: save it as a PDF file and open it outside your browser with Adobe Acrobat. If you fill it out directly in the browser, I've found that the backspace key occasionally gets interpreted as a back-arrow click (in Firefox 3, anyway) that takes the browser to the previous URL, causing total loss of all the unsaved data in your PDF file. Aggravating.

Save, open with Acrobat, edit, and repeatedly save while editing with a simple Control-S.

Business Method Patents: Is Your Company (Or Nation) Missing an Opportunity?

2009-06-09T11:16:00.000-07:00

While some have feared that business method patents have become dead in the US after In Re Bilski and other challenges, these appear to be either minor irritants or even wholesome corrections, leaving very real opportunities for those who innovate in business methods. Are you missing out? Is your field of business, or even nation?

IPFrontline has an excellent article from May 22 on business method patents. Patent Protection and Financial Institutions by Alexandra Daoud, Malcolm McLeod, and Mitchell Wolfe shows that US financial institutions have been aggressive in pursuing patents in the United States as well as in Canada, where many of our institutions also have operations. On the other hand, Canadian financial institutions, many with operations on both sides of the border, have filed far less. Many significant Canadian institutions have filed nothing in the US or Canada, and even the leaders have only filed a tiny handful. Clearly, Canadian businessmen in that sector don't see the same opportunities that their US counterparts do. Could it be that a lack of awareness is costing them an important opportunity to protect their intellectual assets?

How is your business or sector of the economy doing in its IP strategy? Are you focused on traditional patents for gadgets and the methods of making them? Do you recognize that much of the innovation that drives the economy involves how we do business, what we do with data, how we manage relationships, and how we interact with partners and customers? If that is where much of the most valuable innovation is found in your area, what are you doing to protect it? Isn't it time to get more aggressive about non-traditional patents, including business method patents?

When I was Corporate Patent Strategist at Kimberly-Clark Corporation, one of my most exciting initiatives was introducing a formal effort to pursue business method patents. K-C was a world leader in some of its methods. By creating a Cross-Sector Business Method Group, we were able to educate teams across the Corporation about the opportunities and help many previously unheralded inventors recognize that they were in fact creating patentable material. We helped many of them gain recognition and file valuable patent application, including applications in RFID, marketing, inventory management, spare parts, logistics, relationship management, etc. It was one of the most exciting aspects of my work there. Pursuing opportunities of this nature requires a lot of evangelism and education. It also requires some serious grunt work as you help teams scour their work and figure out where inventions can be found and protected. But these efforts can do a lot of good, if you have the right support from management and Legal.

The Pitfalls of Sexy Innovation

2009-05-28T07:11:00.000-07:00

In his blog on customer strategy, Curtis Bingham has a great post warning companies about the folly of always looking for the "sexy" customer. I'd like to build on that with a note about innovation: companies can miss many opportunities by focusing on what is hot and exciting, while missing what can be done with "mundane" innovations that deliver on unmet needs in simple, low-tech ways.

Innovation doesn't have to involve the latest high-tech tools to deliver value. In fact, sexy tech can easily become failed tech. Look for innovation across your supply chain, in packaging, in your relationships with suppliers, etc. Blockbuster innovation can be simple and low-tech. Look at the rise of private brands in the retail market. Simple, low-cost, but huge advances have occurred behind the scenes to make these concepts work.

Innovation in Sound Masking: Toward a Cone of Silence

2009-05-20T05:43:00.000-07:00

In "'Cone of Silence' Keeps Conversations Secret" at New Scientist, Paul Marks describes a recent MIT invention of a system that can direct noise toward nearby people to make it difficult to overhear a private conversation. It's a step toward a functioning version of the "Cone of Silence" from Get Smart. The MIT system, however, demands a lot of infrastructure. Many sensors and sound generators are required to do its subtle work. Will it have market potential, given that simple and relatively effective solutions are out there already? One example is the sound masking technology of Logison near Montreal, Canada. They offer more sophistication and control than generic white noise generators, but in a simple and easy to use system. Who will prevail in the long run? The MIT system certainly has the potential to offer more targeted masking, but unless the complex system can be offered in easy-to-install plug-and-play formats, it may never make more than a whisper in the market, though it may become a preferred tool for a few high-end users.

The key to successful innovation is rarely coming up with the highest performance in a product. The real key is providing a product that can be socially adopted - meaning that it positively changes the way people do things, and drives others to adopt it. The social aspect of innovation can never be neglected. This demands attention to industrial design, to ease of use, to convenience, to cost, to service and repair, etc. These factors help drive social adoption. It's not all about bells and whistles. I hope the MIT product will become reality and succeed, but at the moment, I think lower-tech solutions will prevail unless the design and business model aspects for the MIT invention can be pursued to deliver successful social adoption.

Innovation: It's for Cities, Too

2009-05-11T13:54:00.000-07:00

Innovation is not just for new products and growing companies. Innovation in the way things are done is essential for many aspects of life - how we play, how we live, how organizations work, and even how cities function. Andrew Spiegel's blog has an insightful essay, "Pittsburgh’s Renaissance Holds Lesson for Cleveland," which reminds us of the need for innovation strategy when it comes to government and urban life. Pittsburgh has been through tough times, but like many wise organizations, is acting now to build for the future--and appears to be creating something of a boom in the process. We hope the innovation energy can be maintained as they further develop new models and encourage growth in a diverse array of economic sectors. Sometimes the places that are hardest hit in an economic downturn can become engines of great future growth and innovation, when there is vision and courage.

Silver Nanopartciles in an Antibacterial Film from ETH in Switzerland

2009-05-06T13:05:00.000-07:00

The Functional Materials Laboratory Blog from ETH in Switzerland offers an interesting video featuring some of the work of a chemical engineer I met a few years ago, Dr. Wendelin Jan Stark. A calcium salt is heated with silver nanoparticles to form particles that are highly lethal to bacteria and capable of being applied to polymer films. Good synergy between the two components. Many interesting innovation opportunities.

The real reason I'm sharing this video from the Swiss TV channel, SF1, is that it has a delightful mix of High German and Swiss German in a single program. It begins with Swiss German, and later Dr. Stark also speaks Swiss German. Having spent two wonderful years in Switzerland, this was truly enjoyable. Hope you can appreciate the unique flavors of the two dialects, even if you don't speak German. The Swiss are rightfully proud of this "Erfindig us dr Schwiiz."

Sorry, this is in German/Swiss German only.

Blackwell's Espresso Book Machine: A Disruptive Innovation in the Printing of Books?

2009-04-28T05:41:00.000-07:00

The English company Blackwell has demonstrated a revolutionary machine that can print and dispense a single book on demand in about 5 minutes, selected from many thousands of possibilities. It's like an ATM for books. News comes from a story at FastThinking.com:

Blackwell believes the introduction signals the end to the frustration of being told a title is out of print or not in stock. The Espresso offers access to almost half a million books, from a facsimile of Lewis Carroll's original manuscript for Alice in Wonderland to Mrs Beeton's Book of Needlework.

The company hopes to increase the catalogue to more than a million titles by the end of the summer, the equivalent of 23.6 miles of shelf space or more than 50 bookshops rolled into one. The majority of these books are out of copyright, but Blackwell is working with UK publishers to increase access to in-copyright writing. So far the response has been overwhelmingly positive, the firm says.

"This could change bookselling fundamentally," said Blackwell's chief executive, Andrew Hutchings. "It's giving the chance for smaller locations, independent booksellers, to have the opportunity to truly compete with big stock-holding shops and Amazon ... I like to think of it as the revitalisation of the local bookshop industry. If you could walk into a local bookshop and have access to one million titles, that's pretty compelling."

Amazon.com and other services have already provided the disruptive benefit of consumer convenience in ordering and the ability to choose from vast numbers of titles. Now the added convenience of getting the book in a few minutes instead of several days could add disruptive potential to this innovation.

Before Amazon or other booksellers begin to worry, though, there are some limitations that may keep the product at the curiosity level rather than mushrooming to disruptive status. People still need to be physically present at the machine. Five minutes for a book isn't long, but it is when there are three people ahead of you in line. I haven't seen the printed product, but it may lack some of the pizazz (4-color dust jacket, quality of the paper and binding, etc.) that people value in a printed book. Will it really meet the needs of non-users or low-end market segments? Maybe not when the premium price for the on-demand books is considered. Much depends on the execution and the details of the business model. Given the premature hype about this being the biggest revolution since Gutenberg, I suspect it will fall into the category of the Segway. Great innovation, but not yet poised for disruptive dominance.

The ParaJet SkyCar: Potential Disruptive Innovation?

2009-04-27T07:25:00.000-07:00

The British company, Parajet, has developed the Parajet Skycar, a flying car running on biofuel (ethanol or biodiesel). It is is currently a prototype that has been the subject of dramatic demonstrations, such as flying over the Sahara (from France to Timbuktu) and over the Amazon rain forest. This high-efficiency, eco-friendly flying car differs sibstantially from previous attempts to add collapsible wings to automobiles or to modify winged aircraft to be suitable for ground driving. Instead of using solid wings, the Parajet is essentially a powered parachute. It uses a paramotor and a parafoil attached to what looks like a dune buggy, but one that can achieve sustained level flight.

The parafoil can fold up and fit in the trunk of the vehicle. Converting from an on-ground vehicle to a flying car takes about 3 minutes. Not bad! Safety is a big plus. If the engine fails, the vehicle can slowly glide back to the ground. If the canopy rips, there is an emergency reserve ballistic parachute that can be deployed. The prototype is said to be fully road-legal.

FutureCars.com has a great review of the car. They like it, but want a better design. The current dune-buggy design is not likely to be a hit, but their next generation body will be more stylish. There have been numerous attempts in the past to make small airplanes for personal flight, including ones that can serve as automobiles as well. The breakthrough is using a paramotor and parafoil (essentially a powered parachute) for that purpose.

In my opinion, this has the potential to be a disruptive innovation in the classical sense of the term as taught by Clayton Christensen of the Harvard School of Business. It is an innovation that is "worse" in terms of standard metrics and the expectations of the market that the established incumbents are trying to meet - such as high speed and the full control offered by winged aircraft - while offering new levels of convenience and ease of use. Yes, a parafoil can't perform anywhere close to a winged aircraft in terms of pilot control and speed, but it is easy, stable, safe, and can meet the needs of low-end users and many non-users. The incumbents in both automobiles and airplanes will not be threatened by this at first and will have neither motivation nor capability to respond, making it possible for this innovation to get off the ground, so to speak, without significant head-to-head competition in its area, assuming that they have adequately handled the intellectual property issues needed to maintain a competitive lead in the powered parafoil area. The combination of intellectual property strategy with disruptive innovation theory, by the way, is one of the key topics we cover in the forthcoming book, Conquering Innovation Fatigue by Jeff Lindsay, Cheryl Perkins, and Mukund Karanjikar (John Wiley & Sons, July 2009), with some related information about to be posted on the new website, InnovationFatigue.com. Once the innovation can get a foothold, then the normal process of sustaining innovation can kick in, allowing generation after generation to add advances in diesel motor design, materials, lighting systems, communications, control systems, etc., to add improved features, speed, power, control, and so forth.

While seizing a new market, this vehicle could also make inroads into the helicopter business, allowing low-end users and non-users to gain some of the lower-end benefits of helicopters for aerial surveillance and short trips when roads are inadequate.

The car is likely to appeal to aviators and hobbyists already familiar with paramotors, but if the regulatory environment can be properly managed (one of the areas of innovation fatigue also discussed in the book), this could have the potential to spread to a surprisingly large market. One could see this becoming an indispensible tool in regions where roads are unreliable (much of Africa, for example), giving business leaders, civic leaders, relief workers, hunters, and others the opportunity to travel or survey areas from the area. Interesting air taxi business models could also be envisioned. Stay tuned to see if this innovation takes off!

Saying "No" to Innovation? Sometimes that Is the Right Answer

2009-04-26T06:17:00.001-07:00

In a New Product Development discussion group at LinkedIn.com, Monika Wingate called our attention to the story, "Post Shredded Wheat Celebrates Non-Innovation." Ogilvy is emphasizing the original, unchanging nature of Shredded Wheat as a virtue that stands out in this era of constant change and questionable innovation:

A new campaign from Post Shredded Wheat promotes the product's lack of change as a virtue, turning the trend toward enhanced, "super ingredient" food and beverage products on its head.

Developed by Ogilvy, the campaign with the tagline "We Put the 'No' in Innovation" emphasizes that the cereal has been made with "one simple, honest ingredient" -- 100% natural whole grain wheat, since it was created 117 years ago.

"There's been a marked change in American values, with a greater desire for honesty, trustworthiness and security during a time of economic and societal uncertainly," Kelley Peters, director of integrated insights and strategy for Post Foods, tells Marketing Daily. "Post's marketing messages underscore that Shredded Wheat has always been a simple, honest brand, and one of the healthiest foods on the grocery shelf."

There is a lesson here. Innovation is not always the answer. Change is not always desirable. When things are working and needs are already being met properly, innovation can be harmful. When it comes to financial services, we've seen some recent innovations can be disastrous.

Sometimes what is hailed as innovation is a return to failed systems and products of the past. Innovation by doing away with Constitutional checks and balances, for example, can lead to the old failures of tyranny. Innovation in monetary policy can lead to the age-old failures of debased currency. Innovations in the arts sometimes bring hideous results. And some innovations in health care and other areas bring unexpected dangers that take time to explore and understand (though the delays arguably have become excessive and bring the risk of blocking life-saving innovations - the risks of delay need to be more carefully weighted, in my opinion).

Change comes at a price. There are risks to be weighed against touted benefits. When things work and work well, as Ogilvy wishes to remind us, why introduce change?

Personally, I like Shredded Wheat and am glad that it and a few other products have stayed relatively constant over the years. These are unusual exceptions.

Your Future in Print: The Evolving World of Printed Electronics

2009-04-20T18:03:00.000-07:00

Printing is an often overlooked area when people think of high tech, but some of the highest technology is found there. I'm not just talking about all the excitement from advances in digital printing or flexographic printing, for example. I'm talking about the world of electronics coming to printing. The opportunities started to come into view many years ago when conductive inks were developed for simple structures such as antennas for RFID tags or other electronic article surveillance (EAS) applications. Then conductive polymers were developed which led some companies to explore other variations of printed electronics or electronics integral with packaging. Transistors were printed and demonstrated, but there were limits to what could be achieved with conductive polymers and inks. Many tried printed electronics, but face painful barriers. Matching the opportunities afforded by silicon just seemed out of reach.

Now comes printed circuits made of - you guessed it (wait, did you??) - silicon itself. Read "With New Silicon-based Inks, Kovio Is Poised to Make Gins in Printed Electronics" and read their press release announcing the world's first RFID system with silicon-based inks.

Friends of mine in the RFID world say Kovio's technology is fascinating. Hats off to the Kovio team for some added excitement in the world of printing. Let's stay tuned to see where this technology and competitive technologies go.

When Internal Communication is Poor, IP Value Can Tumble

2009-04-11T16:17:00.000-07:00

Over at the IP Asset Maximizer Blog, guest blogger Scott Garrison provides a dramatic story of wasted IP within a large corporation. Basically, after spending a large sum of money for IP in a breakthrough area, a major corporation took a series of missteps that eroded much of the value of the acquired patents. Ultimately, they had to give royalty-free licenses for the technology. The disaster came as a result of multiple parties taking independent steps without communicating with each other, and without central oversight and strategy. Garrison wisely suggests that a Chief IP Officer would have helped.

In addition, our experience suggests that when there is a moribund lack of communication between entities that ought to be communicating, there may be cultural and other issues that also need to be corrected. Sometimes fixing the org chart by adding central oversight isn't enough. We have found that Value Network Analysis can be an extremely useful tool in mapping out the exchanges of intangibles (knowledge, tips, informal communication, relationships, trust, loyalty, etc.) as well as tangibles (required reports, funds, formalized exchanges) that define the ecosystem -- in this case, the internal ecosystem. When healthy networks of intangible exchanges do not exist between parties such as business units and legal departments, steps must be taken to nurture the ecosystem and to help create stronger ties, better information exchange, and alignment of objectives and goals. When the ecosystem becomes healthy, a lot of things happen that make the corporation look a lot smarter than it used to be.

Patent Agents and Attorney Client Privilege

2009-03-21T19:35:00.000-07:00

Patent agents (I'm one) sometimes wonder if the work they do for clients can have the benefit of attorney-client privilege to reduce the threat of discovery should there be subsequent litigation. Is there, in effect, a "patent agent-client privilege"?

Maybe, but maybe not, depending on the views of the court in questions. A good explanation is given by Michael Edward McCabe, Jr. in his article, "ATTORNEY-CLIENT PRIVILEGE AND WORK PRODUCT IMMUNITY IN PATENT LITIGATION." Here is an excerpt, with references and footnotes omitted (see the original for some important quoted material):

[C] Communications With Patent Agents

Apart from the issue of whether the substance of a particular communication qualifies as privileged is whether the persons involved in the communication can create a privilege. The attorney-client privilege applies to communications between the attorney and client. The issue often arises in patent cases as to whether the privilege extends to communications with a U.S. patent agent. Is there a “U.S. patent agent-client” privilege? An even more complex privilege issue involves the privileged status of communications with foreign (i.e. non-U.S.) patent agents. The cases are not uniform in their treatment of whether communications with patent agents (either domestic or foreign) are privileged.

[1] U.S. Patent Agents
[a] Courts Not Recognizing Privilege

The greater weight of authority strictly, and literally, interpret the “attorney” prong of the attorney-client communication requirement. Those courts reason that because a U.S. patent agent is not a member of the bar of any court, communications between a patent agent and their client are not privileged. Although a patent agent may not be able to create or receive a privileged communications in his own right by virtue of his status, their communications could still be privileged if the agent is acting under the supervision and control of an attorney. In this respect, the U.S. patent agent is treated like any other non-attorney who advises and assists counsel and acts under their supervision and control.

[b]Courts Recognizing Privilege
In the other camp are those district courts that do recognize a form of attorney-client privilege for patent agents, notwithstanding the fact that the agent is not a member of the bar of any court. The rationale behind extending the attorney-client privilege to patent agents is that, as held by the United States Supreme Court, “[t]he preparation and prosecution of patent applications for others constitutes the practice of law.” . . .

In light of the Supreme Court’s recognition that patent agents are authorized to practice law, some courts have reasoned that the recognition of a “patent agent privilege” is simply a logical extension of the Sperry decision. . . . [The author cites a passage from In re Ampicillin Antitrust Litigation.]

Still, it is important to recognize that not all courts agree that the Sperry decision—which was not a case about whether a patent agent enjoys a form of attorney-client privilege—should be read so broadly as to imply a patent agent-client privilege. Thus, it remains an open issue as to whether a U.S. patent agent privilege exists, with cases going both ways on the question.

To the extent that privilege may exist for a patent agent, McCabe explains that it would be limited strictly to "encompass only those services that such agents are legally licensed to perform: i.e., representation in preparing and prosecuting patent applications before the PTO."

Whether you think privilege applies or not, it's wise to always be careful in written communications, email included, recognizing that every word you write may be scrutinized and used against you by a hostile opponent. Save the sensitive, heavy and unpleasant stuff for verbal conversations!

Flip Video Acquired by Cisco: Disruptive Innovation at Work

2009-03-21T08:47:00.000-07:00

When I first saw and then purchased a Flip video camera in 2007, I knew I was experiencing a classic example of disruptive innovation. Instead of adding more bells and whistles to impress high-end users of video cameras, Flip took a minimalist approach by understanding what non-users of expensive video cameras really wanted to do, and then doing just that. Simple, easy video making for YouTube and for display on computers was the real goal. Make it easy, convenient, and inexpensive, and millions will benefit. Forget cables and complex interfaces. Just turn the camera on, record some video, and then snap it into the USB drive of your computer. Easily convert the video into a YouTube entry and you're good to go.

Pure Digital's experiment with disruptive innovation has paid off handsomely. This week it was announced that Cisco is purchasing the company, apparently to support its mission of expanding videoconferencing services. Interesting move - and great news for Pure Digital (well, for the owners of Pure Digital - not necessarily the employees). Can Cisco maintain the benefits of the Flip camera and maintain or strengthen the disruptive advantages? Remains to be seen.

Innovation to Help People in Emerging Nations

2009-03-18T05:17:00.001-07:00

I love stories of innovation that are driven by a desire to lift others. An example we discuss in the forthcoming book, Conquering Innovation Fatigue, is Empower Playgrounds, the innovative non-profit organization of retired chemical engineer Ben Markham. They develop new ways to advance education in Africa by turning playground equipment into power generators that can charge LED lamps to allow students to study after dark. Marvelous!

Another recent example is Sustainable Health Enterprises (SHE), an organization working to develop market-based solutions to provide low-cost feminine care products to women in emerging nations. Wonderful concepts!

The work of Anil Gupta in India also inspired me. He's reaching out to find innovators in the villages of India who may have marketable products. It's bringing hope to many. See Sristi.org for details.

What are your favorite examples of innovation efforts to life those in emerging nations?

Tate & Lyle Lessons: Is Your Patent Enforceable? Are Your Methods Detectable?

2009-03-11T04:39:00.000-07:00

Sarah Hill's "Patent Debate Rumbles on after Tate & Lyle Sucralose Ruling" reminds us of the many pitfalls that inventors and patent holders face. While sucralose the molecule has been around for a while, the methods for efficiently making commercial grade sucralose are much newer and are the subject of patents by British giant Tate and Lyle. The problem with process patents - such as Tate and Lyle's patents on the method of making sucralose - is that they are often difficult to enforce. Competitors may be tempted to infringe in secret and sell in public, claiming that a different process was used. That's what happened with Tate & Lyle. Chinese companies produced a similar product but claimed they were using a novel process they invented. Lacking any published IP to show that they had conducted their own R&D and invented their own techniques, the Chinese company, according to Tate & Lyle, more likely was simply copying T&L's patent. But the Chinese company prevailed by claiming it was a new process protected as a trade secret.

Chemists knows that a different process can mean different trace amounts of byproducts, but the chemical fingerprint of products made within the scope of the claimed invention is often overlooked when patents are filed, and perhaps even when litigated. It can be quite expensive to do chemical forensics to link a process to a particular method when there may be many possibilities to consider. I suspect that the most cost-effective time to consider chemical fingerprints as indicators of infringement is when the experimental work is being conducted that leads to the patent.

The inventors and the R&D team should be concerned with enforceability and detection, and the issues should be covered as part of their training in your company or university, so they can consider ways to build in additional enforceability in the patent. For example, if the method to be claimed will generally result in trace amounts of zinc in the product, then mention that and include some product-by-process claims (e.g., a sweetener solution made according to Claim 1, having at least 5 ppm zinc). Such information and claims could strengthen the position of the patent holder. Whether that helps or not depends on the details of the process and the uniqueness of the chemical composition, but it's something the inventors should be thinking about as they do experimental work and especially as they begin preparing for a ptent. Is the patent enforceable? Is there anything unique about the process that will show up in the properties of the final product? Any tell-tale signs of potential infringement that we can build into the patent? Put it in the patent itself. With opportunities for detection of infringement built into the patent, it can help deter deliberate infringers and increase your odds of success.

Maybe just signaling that you've considered chemical forensics in creating your process will help deter copyists.

The Cosmic Org Chart Is Broken: Dark Energy, Dark Matter, and the Analogy to Intangibles in Business Ecosystems

2009-03-07T19:29:00.000-08:00

In the past decade or so, scientists have been astounded to discover that the universe that we can see represents only a tiny fraction of the matter and energy that governs the cosmos. Based on the motion of stars and galaxies, strange "dark matter" must be present, increasing the gravitational tug on celestial bodies more than can be accounted for by visible matter. Further, based on the surprising discovered that the universe is expanding, not contracting under its own gravitational pull as expected, scientists have proposed that a strange, repulsive "dark energy" fills the cosmos countering gravity. The combined effect of these unseen entities, dark energy and dark matter, are so great, that they account for 96% of the matter and energy of the universe. In other words, the visible universe that we used to think is all there is actually is only a tiny fraction of what is there. What we see in the "cosmic org chart" accounts for only 4% of what really influences the cosmos.

It's that way in the business world. too. Companies can create tidy org charts and draft neat process maps to describe how they work, but the unseen reality outside the visible systems may be what really dominates operations. Increasingly, experts in knowledge management are learning that easily overlooked and often invisible intangibles can dominate corporate value and performance. Numerous intangible transactions may be essential to the success of a company, including casual information sharing between trusted friends, helpful exchanges of tips and best practices between employees or between external partners and internal employees, or loyalty that is gained when people are included in decision making. The invisible linkages and hard-to-observe exchanges in a company's internal an external ecosystems may be the real engines of value creation, regardless of what is on a process map or workstream. By not understanding the value of such intangibles, corporations can easily break key linkages and crush subtle engines of value creation.

Many companies focus on their "value chains" - a term popularized by Michael Porter in his seminal 1985 work, Competitive Advantage. The value chain describes the linear chain of events as materials and products move from sourcing through manufacturing and out to the market. It is a highly useful paradigm for manufacturing and was highly applicable to much of the economy in the era when Porter was doing his research. But since that time, the explosion of the knowledge economy has changed the way we work and create value. One of my favorite authors, Verna Allee, a revolutionary expert in knowledge management, has detailed the move from the value chain to modern ecosystems and Value Networks in her book, The Future of Knowledge: Increasing Prosperity through Value Networks (Burlington, MA: Elsevier Science, 2003). Verna Allee and Associates have introduced a clever, methodical tool called Value Network Analysis for analyzing and visualizing the transactions of intangibles and tangibles that affect a business.

After my training in Value Network Analysis by Verna and her associate, Oliver Schwabe, an exciting new perspective on business and human behavior opened up. I have been highly impressed with the power of Value Network Analysis and the insights that it can rapidly deliver for a company. The Value Network Analysis work that Innovationedge has done as part of larger projects for some of our clients has been a very exciting part of my work since joining Cheryl Perkins' exciting company. We value the tool enough that we had Verna Allee speak at the 2008 CoDev conference to introduce other business leaders to the basic concepts behind Value Network Analysis. I'm very pleased to see a community emerging of people using Value Network Analysis and developing exciting tools for it.

Here are some resources that you may find helpful in further exploring this area:

Value-Networks.com

Hosted Value Network Tools

A Value Network Approach (PDF) - 2002 Whitepaper by Verna Allee

ValueNet Works™ Analysis for the Discovery of Viagra (PDF)

Part of the initial output in Value Network Analysis are maps, called "holomaps," showing human entities as nodes and transactions of tangible or intangible items between them. There is much that can be learned from such holomaps - a topic for later discussion. For now I'll show you two sample holomaps I created to illustrate simple ecosystems. One shows several external nodes around a manufacturer and the other shows some structure within part of a corporation. For simplicity, the maps lack all the labels explaining the transactions. (Click to enlarge.)

One interesting approach is to use the "holomaps" you get in Value Network Analysis as tools for "what if" scenarios to explore what new partners might do for your business model, or what new business models might do for your ecosystem. Using holomaps to explore innovation ecosystems is a particularly fruitful approach for those doing open innovation and wondering who should be in their external ecosystem.

We have further information on this topic that we'd be happy to share with you. It's certainly something you should look at to understand how business really works.

Innovation Lessons from the Failure of Circuit City: Business Model Innovation and Finding the Real Needs to Meet

2009-02-19T11:01:00.001-08:00

Bye Bye Circuit City over at the Permanent Innovation Blog discusses the demise of Circuit City and draws a valuable insight from a Dutch study on consumer electronics. The latter showed that for 50% of consumer returns, the products worked fine - it was the hassle of installing and operating these increasingly complex goods that made consumers give him and hit the big red "Not Easy" button. Circuit City may have been focused on providing zillions of choices without offering the expertise that consumers needed to make the right choice in the first place and then to make it work easily. Best Buy and their famous Geek Squad may represent a more innovative approach to managing the service end of the business. In today's world, the business model that neglects service and knowledge will lose customers and profits quickly.

Whatever your business, innovation in how you do business is needed. How do you identify unmet customer needs? Are your customer service people deeply connected to your marketing and R&D folks? Are you learning from your customers and finding what jobs they really need to have done? Are their frustrations sources of inspiration for your innovation? Or is customer service something your outsource to people who don't know and care about your business needs?

Another lesson is the need for simplicity in the products and services we offer. This isn't just a Circuit City problem - it's also a problem for manufacturers in numerous areas. Thick user manuals with complex installation instructions loosely based on English are not working. The winners over the next decade will increasingly turn to sound design and human-centric thinking to make their products less likely to be returned by a computer with installation angst who hit the "Not Easy" button.

Growth Through Innovation at Small and Medium Sized Enterprises (SME): Gage Products as a Case Study

2009-02-16T11:15:00.000-08:00

Much of the literature on innovation focuses on large companies - Toyota, Google, Microsoft, Procter & Gamble, Seagate, etc. However, the future strength of our economy depends on the successful growth of small- and medium-sized enterprises (SMEs), where much less research has been conducted and much less attention has been provided in case studies.

A step toward filling that gap is found in a June 2006 study, "PRODUCT AND SERVICE INNOVATION: FINAL REPORT" (PDF) by David Cheney, Sushanta Mohapatra, P. Shapira, Y. Youtie, E. Lamos, and A. Bhaskarabhatla, SRI International and Georgia Tech Program in Science, Technology and Innovation Policy. This report examines examines innovation in product and service offerings for SMEs, with Georgia in mind. Early in the report we get a reminder about the importance of innovation for economic success:

A survey of Georgia manufacturers conducted in 2005 found that fewer than 10 percent of Georgia manufacturers compete for customers through innovation or new technology compared with more than twice that amount competing through offering low prices. Yet innovative companies are much more profitable and pay on average $10,000 more in average wages (Youtie, et al., 2005).

Later we have several case studies that show how SMEs need to be flexible as they pursue innovation. For example, consider Gage Products a Michigan manufacturer of specialty paints and chemicals. They used to focus on providing paint products for auto makers. But when they developed "Cobra," an environmentally friendly product (no methylene chloride) for cleaning paint circulation systems, it sparked a series of business model innovations.

Cobra was an innovation in the product space. However, the unique nature of this product innovation catalyzed major transformation in the firm’s business model. Prior to the introduction of Cobra, most plants used methylene chloride to clean paint lines. But, for environmental reasons, plants needed to adopt a replacement for this heavily regulated material. Gage introduced Cobra as a non-chlorinated material that started mechanical cleaning of the lines as an industry practice. The product was new to the market, and needed certain technical expertise at the plants. Seizing the opportunity created by stringent environmental regulations and Chrysler’s urgent need to improve the use of solvents, Gage changed its business model from purely selling solvents to providing consulting and technical assistance in implementing new solvents and cleaning systems. Gradually Gage moved up the value chain to provide complete paint system maintenance for plants resulting in cost savings, better paint selection and lower solvent use leading to reduced environmental footprints of their clients.

Apart from onsite consulting on paint maintenance systems, Gage developed a refining process to recycle millions of gallons of purge solvents which would otherwise end up in landfills. Today, Gage collects the purge solvents from clients, purifies in a large distillation system, and returns almost 70 percent of the purge solvent as clean reusable solvent to the plant. The byproduct is used as fuel for making cement. This process innovation in the form of recycling solvents has led to environmentally sustainable new products and applications, reduced cost and improved productivity at automobile plants.

In order to fully embrace these innovations, the firm had to fight resistance from inside and from the clients. Gage employees and plant employees had to be educated to relinquish age-old paint practices and adopt new techniques and products. Gage redefined basis for pricing and profits in contractual agreements. The company also changed the sales incentive system to focus away from volume of solvents sold to emphasize cost savings for the client in the paint shop.

A great example of what can happen when a flexible company thinks beyond improved products and rethinks the business model in terms of new offerings across the entire supply chain. Many times an innovative product can create opportunities for business model innovation as well.

When you've got a hot innovation, view it as the beginning, not the end!

2009 Wisconsin Technology Achievement Awards from the MIT Club of Wisconsin

2009-02-13T14:55:00.000-08:00

The recipients of the 2009 MIT Club of Wisconsin Technology Achievement Awards have just been announced.

Individual: James Hyde, Department of Biophysics, Medical College of Wisconsin

Small Company: Paradigm Sensors, Impedance Spectroscopy, Milwaukee

Large Company: Orion Energy Systems, Energy Efficiency & Directly Renewable Technology, Manitowoc

Special Award: Venture Center @ Fox Valley Technical College, Appleton

This is very exciting news for me, for I had the privilege of nominating Orion Energy Systems, based on the impressive experience I had there in interviewing company leaders and touring their operations to develop a case study of excellence in a chapter of the forthcoming book, Conquering Innovation Fatigue: Overcoming the Barriers to Personal and Corporate Success by Jeff Lindsay, Cheryl Perkins, and Mukund Karanjikar (John Wiley & Sons, July 2009).

I've also worked with Fox Valley Technical College and am highly impressed with their Venture Center and the FABLAB at FVTC - one of the finest such facilities in the nation.

The Tech Awards will be held on Friday, March 13 at the Country Springs Hotel, 2810 Golf Road, Waukesha, WI starting at 5:30 pm. The keynote speaker will be Sherwin Greenblatt, MIT, Co-Founder & Former President of BOSE Corporation.

I'm planning to be at the awards dinner. This will be quite a treat!

Register for the event today at:
https://alum.mit.edu/smarTrans/register-login.vm?eventID=28721&groupID=195

Metrics for Innovation

2009-02-12T07:42:00.000-08:00

One of the major challenges any company faces in driving innovation is finding the right metrics to gauge performance and progress. What gets measured is often what's easiest: aggregate, bulk measures of output or input, such as number of patents filed, number of patents filed, research dollars spent, number of people in innovation. However, measures of what's happening inside the innovation community may be more meaningful. How well aligned are your innovators with the strategy of your corporation? How well connected are they to marketing, sales, and consumer insights? What is the nature of the innovation ecosystem? Do incentives for individuals and teams align with overall objectives? Do employees have a robust "will to share" that motivates them to share their best thinking and ideas with you, or is the faucet closed and they are just going through the motions? Metrics are needed that assess innovation health and vitality in ways beyond patents and dollars.

Innovation metrics was a vital topic at the last CoDev workshop. In fact, I had the pleasure of being part of a workshop on open innovation metrics, where I revealed the psuedo-etymology of "metrics" as "me" (for individual accountability) + "trics." The "trics" can refer to deception, as often happens with misleading metrics, or it can refer to best practices and tricks of the trade based on learnings and experiences of others, which was a big part of what we shared.

If you're interested in learning more about what we shared and discussed on open innovation metrics, let us know, A white paper is in the works. It's also an important part of the new book due in July, Conquering Innovation Fatigue: Overcoming the Barriers to Personal and Corporate Success by Jeff Lindsay, Cheryl Perkins, and Mukund Karanjikar (John Wiley & Sons, July 2009).

Innovating with Wisconsin Universities: Feb. 19 Presentation in Appleton

2009-02-12T07:35:00.000-08:00

"Tapping into Statewide (Wisconsin) Academic R&D Assets" is the topic of a presentation to be held Feb. 19 in Appleton, Wisconsin at the Bordini Center of the Fox Valley Technical College. Here is the announcement I just received for this meeting:

An overview of Wisconsin’s competitive but threatened “edge” in academic research and development will be the topic of the Feb. 19 meeting of the Wisconsin Innovation Network Northeast Chapter.

The event will be held at the D J Bordini Center, 5 Systems Drive, near the Fox Valley Technical College campus in Appleton. Registration and networking begin at 4:45 p.m. The cost is $5 for WIN members, $10 for non-members and included with WIN corporate memberships. To register, go to www.wisconsintechnologycouncil.com.

Linda Freed, director of the UW-Oshkosh Office of Grants and Faculty Development, will join Wisconsin Technology Council President Tom Still in a discussion of “The Wisconsin Edge: Academic R&D” and how businesses can tap into Wisconsin’s research assets. Other speakers to be announced soon.

In today’s “knowledge economy,” university-based research is a key component of entrepreneurial activity. In the nation’s most vibrant technology hubs, research universities emerge as important drivers of technology creation and transfer.

Wisconsin’s largest academic research hub is the UW-Madison, but the state is also home to other R&D centers such as UW-Oshkosh that tend to be underutilized tech transfer assets. Without a broader and more regional foundation in academic R&D, Wisconsin will find it difficult to pursue a robust, high-tech “knowledge-based” economy for the 21st century.

“Thanks to decades of investment in people and facilities, Wisconsin has developed a strong base for academic R&D, but it’s time to broaden that base,” Still said. “An upcoming Tech Council report will conclude that a decade-long slide in state support for the UW System could hamper the state’s ability to attract merit-based R&D grants and to promote technology transfer, which creates high-wage, private-sector jobs.”

WIN is the membership affiliate of the Tech Council, with six chapters statewide. To learn more or to join, contact Liz Schrum at 608-442-7557 or at lschrum@wisconsintechnologycouncil.com.

Disruption Innovation with Fungus: SIx Ways Mushrooms Can Save the World

2009-02-10T07:06:00.000-08:00

Mycologist Paul Stamets gives an incredible presentation about the power of fungus. These organisms offer a powerful paradigm to help us understand social structures and social innovation as we build Life 2.0 with enhanced, sustainable ecosystems.

Apart from the metaphors this offers, there's some fabulous technology here. Dr. Stamets has found that insect-eating fungus can be used in a clever way - beginning with a non-sporulating form - to eradicate insects from homes. The fungus in its normal sporulating state repels insects - and they aren't easily harmed. But in the non-sporulating form, insects are attracted, consume it, and are then mummmified and killed by the fungus. It becomes sporulating after eradicating the insects, creating a repellant that keeps new colonies away. There is a major disruptive innovation here relative to traditional pesticides. The amazing pharmaceutical power of some rare fungi also demand further attention. And then there is the bioremediaton power of fungus. One of several great applications. Wow!

Disruptive Innovation and the Legal Profession: Coming Soon to a Firm Near You?

2009-02-09T11:02:00.000-08:00

Sagacious comments about the future of the legal profession are offered by IP strategist Jackie Hunter in her article, "Without Disruptive Innovation, Many IP Law Firms are Destined to Meet the Same Fate as Buggy Whip Manufacturers." Jackie argues that change is in the air, and that law firms must reconsider the business models and begin innovating, or they will face disruptive innovation themselves. As we learn from the history and theory of disruptive innovation, by the time incumbents feel the pain creative by disruptive innovators, it will often be too late to respond effectively.

A possible upside to the recent economic downturn is that many previously accepted business models are being revealed as in need of substantial reinvention or even total elimination. The billable hour/leverage law firm model for legal services is one of these increasingly maligned business models, and is now appearing to be in danger of ending up in the dustbin of history. Specifically, even those who benefit handsomely from the billable hour . . . now realize the fundamental irrationality of charging a client for time spent instead of value provided. This alone should signal that change is in the air. [Read more . . .]

Jackie is a seasoned expert in intellectual property strategy, and I'm pleased to add her outstanding blog, IP Asset Maximizer, to my blog roll.

Open Innovation at Johnson & Johnson

2009-02-02T12:43:00.000-08:00

Paul Stoffels of Johnson & Johnson (Company Group Chairman, Global Research and Development) has written a column calling for more open innovation: "Collaborative innovation for the Post-Crisis World. Brief excerpt:

At Johnson & Johnson, we are shifting our innovation ecosystem toward an open innovation model, tapping into both institutes of scientific excellence and our own research and development centers across the world.

Our scientists are taking a networked approach across internal organizational disciplines and geographies, including Asia and other emerging markets, and increasingly with external public and private partners to generate ideas and intellectual property. By working with experts at other companies, universities, and research institutes, we tap a wider range of expertise, capabilities, and resources. Together we share in both the benefits and costs of innovation that will yield more useful technologies and solutions that will contribute to new advances in healthcare.

Protection of intellectual property is critical to gaining new knowledge and economic benefits within the open innovation model. Sufficient intellectual property protection has been necessary for the private sector to justify investments in high-risk research. But in the landscape of open innovation, co-creation involves sharing the costs and benefits of innovation and the resulting intellectual property, in line with the relative contribution of the various parties, including royalties from the commercialization of new products. In this model, intellectual property rights can be ensured through appropriate and harmonized protection strategies that are agreed upon by all stakeholders.

I think he's absolutely right. These principles apply not just to pharma, but to most fields of business. Collaboration and co-development are key.

Driving Innovation Through Acquisition: Watching Unilever

2009-02-02T07:40:00.000-08:00

Companies looking to expand into new areas typically seek to acquire an existing business to give them a head. This can be especially logical when the new area is a strategic fit with corporate strategy and involves a rapidly growing area such as health care, where time is of the essence and rapid momentum is often needed to compete. But there are numerous risks in this path, including the risk that the new company won't have a culture that fits effectively with the acquiring company, that the distribution system or other aspects of the company don't fit with the capabilities of the acquirer, and that the technology and brand is not as effective or as protected as believed.

One case study worth watching is that of Unilever's acquisition of TIGI, owner of the Toni & Guy hair products line in Europe. Unilever has been shedding companies in many other areas, and this acquisition shows its intent to grow rapidly in the haircare area. The TimesOnline article for this story provides some interesting insights into Unilever's strategy. It will be interesting to see if they succeed or end up withdrawing from this area in the next three years, or require further costly acquisitions to gain momentum.

Growth is easy to drive by acquisition, but what about innovation? Their success here will require continued innovation or they will quickly be outpaced by others. Will Unilever develop the skills and personnel to drive innovation success in haircare? Is the acquisition designed to continue the innovations behind TIGI? We'll know in the near future....

Chemical Engineers in the IP News Again

2009-01-29T13:46:00.000-08:00

As a chemical engineer, by education, anyway, I was intrigued by this hot IP story:
Chemical Engineer Professor Battling University Over IP. DynamicPatents reports that:

The University of Missouri filed a lawsuit last Monday in a Kansas City Federal Court against chemical engineering professor Galen Suppes. As reported by KansasCity.com, the University claims that Suppes will not release the rights to more than 30 inventions and 11 potential patents that were developed in his campus labs.

Let's keep an eye on this case. Professors have a tendency to take their work with them when they go elsewhere. But can they take IP rights for work already done? Probably not in most cases.

Innovation Fatigue: Is US Slipping in Patent Efforts?

2009-01-22T05:34:00.000-08:00

News from Jan. 15, 2009: IBM Remains Patent King, But U.S. Innovation Is Slipping

Excerpt:

Is America Losing Patent Dominance?

IFI Patent Intelligence, however, points to evidence that America's patent dominance may be slipping away to companies overseas, especially to those in Asia.

In a review of 2008 utility patents, IFI found that American companies captured only 49 percent of U.S. patents granted to companies. That compares to 50 percent in 2007. In addition, the U.S. holds only four of the top 10 slots, down from five in 2007. American firms also hold only 12 positions in the top 35, which collectively generated 26 percent of all the utility patents granted in 2008.

By comparison, Japanese companies hold five of the top 10 slots and 14 of the top 35. Although America is still the leading country in total new patents for 2008, IFI noted that Japan trails second with 23 percent. Germany, meanwhile, is third with six percent, South Korea is fourth with five percent, and Taiwan fifth with four percent.

"Although data suggest that American companies garnered a minority share of the total number of corporate U.S. patents last year, it's important not to confuse quantity with quality," said Darlene Slaughter, general manager of IFI. "What's clear is that many of the world's largest companies are placing a higher priority on protecting their intellectual property. This trend is occurring both here in the U.S. and abroad, especially in Japan, South Korea, Taiwan, Germany and other countries in Europe. Securing patents may be even more important in a down economy, since it gives patent holders an edge over their competitors."

FDA Regulated Health Claims vs. Patent Claims

2009-01-22T05:20:00.000-08:00

Someone asked me today if the patent they want to prepare on a health care product can make health claims without getting into trouble with the FDA. Since FDA rules restrict health "claims," it's easy to think there is some relation to patent claims as well. But these are unrelated issues. FDA rules on health claims have no impact on what's in a patent. People can make or discuss all sorts of benefits. The "claims" in a patent, of course, refer only to the list of statements at the end that specifically describe the invention with limitations that should keep each claim away from the prior art. They aren't designed to be claims about the benefits of a product or method. However, the claims of a patent may make or imply health claims, such as "a wipe effective in preventing bacterial growth on the skin of a user, comprising....") - even though you may not be able to say that in advertising or on packaging without going through incredible expense to meet regulatory demands.

What people often do in a patent is mention that the product may contain known actives effective against a list of targeted conditions, with a list of possible actives, and may describe numerous uses such as preventing halitosis, cancer, etc. Sky is the limit about what you can say about your product. You don't want to destroy credibility or be outlandish, and you don't want to imply that the claimed invention necessarily has (i.e., must have) those benefits, because then a similar product that didn't have those benefits might arguably fall outside the scope of the claims. Always be wary of making definitive statements that could let a judge import unintended limitations into a claim.

"Just In-Tune" Innovation™

2009-01-20T13:36:00.000-08:00

In our forthcoming book, Conquering Innovation Fatigue by Jeffrey Dean Lindsay, Cheryl Perkins, and Mukund Karanjikar, we introduce a new paradigm for guiding innovation efforts. It's based on insights from the French horn I've picked up from my son, Daniel, who is a highly skilled hornist. Turn the funnel upside down and consider the tail end of the funnel as the mouthpiece to a French horn. Couple that with some of the interesting physics and history behind the French horn, and mix in my experience in facing the problems of innovating under the funnel model, and the result is something I think will be useful for a number of industries.

I'll be giving a presentation on a portion of this concept at the upcoming CoDev 2009 conference in Scottsdale, Arizona next week (Jan. 26-28). One aspect of this paradigm is that corporations can do much more to tune their innovation efforts to the market and their business plans. By using the right feedback loops and tuning systems, innovation can be much more productive than we have in the funnel model. Using "the Horn of Innovation™" as a paradigm, corporate innovation can be "Just In Tune" (i.e., almost exclusively in tune with corporate and marketplace needs). I'll have more to say about "Just In-Tune Innovation™" in the future.

In re Bilski - Useful Summary in Wikipedia

2009-01-20T07:56:00.000-08:00

I've been pleasantly surprised with some of the recent content of Wikipedia. Court cases such as In re Bilski have been reported with useful summaries and discussion. The Wikipedia summary of In re Bilski, in fact, is recommended reading for those interested in the evolution of "business method patents."

Meanwhile, the impact of the decision may be growing. See "BPAI Applies Bilski to Deny Patentability of Machine Claim," where the Patently Obvious blog reports on a case where the machine aspect of the In re Bilski decision may be more demanding that I would have thought.

China Beating India in IP?

2009-01-13T08:48:00.001-08:00

There is concern in India about being way behind China in patent applications. India had 35,000 applications filed last year at the Indian Patent Office, while China has 245,000 filed with the State Intellectual Property Office of China (SIPO).

I'm interested in better understanding the reasons for the differences. Patent filings don't necessarily reflect the level of innovation. Costs, perceived value of patents, patent enforcement, and culture are all factors. India is highly innovative in areas that are difficult to patent, at least in India, such as software and Web design. China is renowned for innovation in areas where patents are more useful. Does that account for some of the difference?

Cultural attitudes may play a big role as well. Expert opinions?

Finding Innovation at Tradeshows: Try the International Home and Housewares 2009 Show

2009-01-13T08:42:00.000-08:00

Attending large exhibitions and trade shows can be an exhilarating way to stimulate creative ideas and spot external innovations you can use for your business or your own life. One of my favorite events is the International Home and Housewares Show held at the sprawling McCormick Center in Chicago. The 2009 event promises to be exciting and action packed. In spite of the economic downturn, the engines of innovation are still whirring and waiting to be discovered. Join me there, March 22-24, 2009, in Chicago.

Voting Tools for Innovation: Crowdsourcing and the Innovation Cloud

2009-01-12T05:04:00.001-08:00

David Greenfield's Information Week article, "How Companies Are Using IT To Spot Innovative Ideas ," highlights a new trend in corporate innovation management: IT tools for online voting for ideas submitted. These tools include voting alone as well as predictive markets - faux markets used to evaluate ideas and make predictions. Excerpt:

In a three-week experiment, GE Research turned its 85 employees into day traders, letting them watch market movements on their screens to decide whether to buy or sell any of 62 stocks. Only the stocks were product ideas in which the company had the option to develop. At stake was $50,000 in research funding that GE would allocate to the highest-valued project.

When the markets closed, GE ended up with a prioritized list of ideas that the collective wisdom of the market thought would best help the company. Topping the list was an algorithm in the area of machine intelligence, an idea pitched directly by a researcher, not through the normal hierarchy of lab managers and senior management.

Dell looked to an even broader market for new product ideas, using Salesforce.com's online voting service called Ideas and launching Dell IdeaStorm, where anyone can submit and vote on new features and options for Dell products. Perhaps best known of these ideas is a Linux-based laptop Dell introduced in May 2007. Starbucks uses the same voting platform, at MyStarbucksIdea.com, and took an online suggestion posted Oct. 7 by BillMac to offer a free cup of coffee Nov. 4 to anyone in the United States who voted.

The use of these collective decision-making technologies, both sophisticated prediction markets and simple voting tools, is spreading, and they're increasingly being paired together as a component of corporate innovation programs, helping companies sort through reams of ideas--from new products to customer service to productivity improvements--to find that handful of blockbusters.

A key in any system relying on mass participation is motivating the right people to participate. The software system itself must be user-friendly and offer value, such as providing easy access to ideas that may stimulate one's own thinking, or useful metric about that other groups in the corporation are doing. If outsiders are involved, there must be filters of some kind to pre-select those whose opinions are likely to matter. The ability to pass a CAPTCHA test is not necessarily correlated with having valuable insights.

Will "Innovation Clouds" become the way of the future? Can crowdsourcing help identify the next iPod? Or is it more likely to give us Edsels?

The data from collaborative innovation tools and voting applications can be considered in identifying key innovations, but don't overlook the contributions of your visionary product developers and R&D personnel, especially your multidisciplinary master's of innovation who can serve as "DaVincis in the Boardroom." (A topic in the forthcoming book, Conquering Innovation Fatigue by Jeff Lindsay, Cheryl Perkins, and Mukund Karanjikar, to be published by John Wiley & Sons, June/July 2009.)

As James Surowiecki indicated in his famous Wisdom of the Crowds, crowd-based decisions work best when the work is done with a decentralized, diverse, independent population. Will it work for corporate idea management? Not easy! People can readily fall into line and comply with corporate culture and the opinion of local influencers. We'll stay tuned and watch how these concepts play out.

A Rich Source of Innovation: Rich Products

2008-12-08T13:30:00.000-08:00

Rich Products, the large private company marketing frozen foods and other products, has an interesting history of innovation. Thanks to Answers.com for a well-written history of Rich Products. The company began with serendipity in looking for soy-based alternatives to dairy products. Here is part of the story from Answers.com:

Robert E. Rich, Sr., first learned about product substitution during World War II through the War Food Administration. After the war, he put that knowledge to use and directed a laboratory team to search for a vegetable-based replacement for whipped cream. His product was to be based on soybeans. In 1945 Rich was on his way to visit a distributor on Long Island and packed some of his soybean-based whipping cream in dry ice for the long train ride from Buffalo, New York. He had intended just to keep the cream cool, but it was frozen solid when he arrived in Long Island. When Rich mashed the frozen mass, he found that it still whipped up beautifully. The discovery launched the beginning of a frozen nondairy products industry.

Rich's innovation, named Rich's Whip Topping, was lauded as "the miracle cream from the soya bean." This was 1945, when the frozen food industry was burgeoning. Rather than marketing to supermarkets, Rich targeted his product to the foodservice sector, reasoning that restaurants, schools, hospitals, and other cost-conscious operators seemed a likely audience for the product. Rich quietly built solid markets, carving a niche that remains unchallenged.

During its early years, Rich continued to create variations on its Whip Topping. In the 1950s the company came out with the first commercial line of frozen cream puffs and eclairs. Its next innovation came in 1961 with the development of Coffee Rich, the nation's first frozen nondairy creamer. Since its introduction, Coffee Rich dominated the market, claiming a 90 percent share into the 1980s. The product was also ahead of its time in health considerations: along with Whip Topping, Coffee Rich was the only 100 percent cholesterol-free, low-fat cream product distributed nationally.

In the 1960s Rich Products began marketing frozen dough. While supermarkets wanted the aroma of fresh baked goods tempting shoppers, it was too much trouble for them to set up expensive bakeries on their facilities, and frozen dough met their needs perfectly. In the early 1960s, Rich began construction on a nondairy plant in Fort Erie, Ontario, just across the Niagara River from Rich's Buffalo headquarters. This plant is still in operation, producing both frozen dough and nondairy products. By the mid-1980s, Rich was operating what was the world's largest frozen dough plant in Murfreesboro, Tennessee. The dough, for breads, rolls, and pastries, was sold to supermarket chains throughout the country. Rich Products Corporation was incorporated in 1965. In 1969 Rich acquired Elm Tree Baking Company in Appleton, Wisconsin, adding frozen baked goods to its product line.

Later Rich's would develop and aggressively patent the Freeze Flo process, which allows pies and other frozen materials to stay soft when frozen. Thanks to that process, ice cream could be kept soft even at zero degrees Fahrenheit - a significant advance in ice cream technology.

Industry-University Innovation Benchmarking: US vs. UK

2008-11-25T19:37:00.000-08:00

For those interested in enhancing university-industry relationships (a topic of importance in our forthcoming book, Conquering Innovation Fatigue by Jeff Lindsay, Cheryl Perkins, and Mukund Karanjikar), it's helpful to know that the Cambridge-MIT Institute has been exploring learning from the UK and the US in this area. They have conducted some valuable benchmarking to understand the differences and draw meaningful conclusions. Here is an excerpt for their website:

Benchmarking Success

The Cambridge-MIT Institute funds research that sheds light on key issues in UK innovation. Our International Innovation Benchmarking Study, conducted by leading researchers at Cambridge and MIT, quizzed 3,600 British and American firms for insights into their business practices, in order better to understand the role of universities in the innovation process. The report provided for the first time a like-for-like comparison of the innovative behaviour of UK and US firms - giving valuable insights to industry bodies and policy-makers. The report yielded a number of important findings, including the discovery that while more UK than US businesses (two-thirds UK compared to one-third US) use universities as a source of knowledge for innovation, US businesses tend to value their interactions with universities more highly.

The report also found that companies in the United States are more concerned about taxation, legislation and regulation than their British counterparts, and that they are more worried about a lack of skilled labour and getting access to finance. "I was surprised by the data from this survey on 'innovation inputs' that suggested that firms in the US find life just as challenging, and in many cases, harder than those in the UK,” said Ian McCafferty, Chief Economist at the CBI. “Clearly the popular impression of the US - that it offers a much better climate for innovation than the UK - does not fully stack up."

I also understand that a related study from this group points to the importance of a professor's network in determining whether the work is commercialized. Broad contacts across the company a professor interacts with helps determine the success of the project. (I'm looking for that reference. Do you have it?)

The Horn of Innovation™: Turning the Invention Funnel Upside Down

2008-11-21T12:54:00.000-08:00

In my past life in corporate America, I was often discouraged by the widespread use of the "funnel model" of innovation. The funnel describes how many initial ideas enter the idea processing engines of a company, which winnows the ideas and projects down to a small stream in a narrow pipeline that releases a few of the rare, lucky winners as new products or services into the market. This model means that most innovation work is misguided effort that results in nothing.

It soon became clear that traditional approaches to innovation are inherently inefficient, especially in consumer products and non-pharmaceutical innovations where there is some degree of predictability of technical success (not necessarily market success). Part of that inefficiency is because inventors in corporations aren't inventing what the market really wants or needs, and aren't part of the feedback loop involving the market. Much of the effect of traditional R&D teams truly is wasted breath, doomed to be winnowed out in the funnel of innovation - but it doesn't have to be that way.

I'd like to share a model of innovation that builds on my experiences in the past, including my years of exposure to the French horn from a talented horn player in our family, my son, Daniel. One of the surprising things I learned early on about the French horn is that the hornist typically places a hand in the bell of the horn - the large open funnel at the end - to shape the final sound that emerges, making sure it is in tune with the environment and fits the rest of the music being played by others. The placement of the hand in the bell - a technique called "handstopping" - can change the pitch as well as the timbre of the music. Handstopping was a key innovation in the development of the horn from the 1700s that allowed the horn to be more than just a special effect, but a true orchestral instrument.

By turning the innovation funnel on its end, we have a "horn of innovation™," not a funnel. The efforts of the innovator, the energy delivered by buzzing lips - the "buzz" of the innovator - is not wasted breath, but directly contributes to the output from the horn. The buzz is transformed by the internal processes and variable paths inside the horn, going from a crude buzz to a melodious tune, but in this process, the hornist - symbolizing the innovator - is involved from beginning to end. The hornist is part of a feedback loop, hearing the notes that are released into the environment, getting immediate feedback and making adjustments with hand and lips to keep things in tune. The hornist has a score, sees the feedback from the director, hears the output into the environment, and has a hands-on approach right to the end. In many industries, it should be this way with innovation as well. Rather than having inventors isolated and cut off from the market and from the downstream development process, inventors should have a hand in the process to the end, receiving rapid feedback in an iterative loop as early market information suggests the need to alter the innovative input to deliver what the market demands.

Keeping inventors in the loop, allowing them to be part of the process of learning from the market, and providing systems that effectively transform their crude input into crafted finished products and services, can make the most of inventor efforts and result in targeted, directed innovation to meet the needs of the market, with every breath contributing to the final output rather than have 95% of the efforts be wasted.

The Horn of Innovation™ is a model of directed innovation with integrated inventor involvement in an iterative feedback loop aimed at rapidly learning from the market and making constant hands-on adjustments to deliver successful, pleasing results.

I will be describing this approach more fully in a book that is coming out next year: Conquering Innovation Fatigue by Jeff Lindsay, Cheryl Perkins, and Mukund Karanjikar, to be published 2009.

Reaping the Riches of Innovation in India

2008-11-13T16:46:00.000-08:00

I'm am delighted at the progress India is making in encouraging innovation and harvesting the innovative potential of its people. The rest of the world would do well to keep their eyes on India and consider the technologies being developed there. Some examples of technologies being harvested are given in the Time Is for Technopreneurship site. One of the truly amazing stories from India comes from the work of Anil K. Gupta, the "Gandhi of Innovation," who leads week-long journeys (the "Shodhyatra") into the villages of India to identify innovations from farmers, craftsmen, cooks, and others. You can read more about this at Sristi.org, such as their recent report from the 20th Shodhyatra in western Bengal. I am truly inspired by this work!

While grassroots innovations are being harvested, India is also taking a leadership role in promoting innovation from its universities and professionals. I recently spoke with Dr. A.S. Rao of the Department of Scientific and Industrial Research, and was highly impressed with what he and his peers are achieving. There are numerous centers working to advance innovation. There are efforts to assist innovators with intellectual property and other needs to help them on their way. IT-related innovation is strong and healthy, but the government is now aggressively working to advance many other areas such as medical devices, agriculture, materials, energy, etc. tePP - the Technopreneur Promotion Programme, is a key network supporting independent innovators (see the TePP Blog). The network has many outreach centers and provides grants, technical guidance and mentoring support to independent innovators. They are making a lot of progress. Keep your eyes in India!

Patenting Software and Business Methods in India: Probably Not Possible

2008-11-12T04:50:00.000-08:00

Software and business method patents are problematic in many nations outside the U.S. For example India, the source of much of the world's software, is unlikely to permit such patents. A good article on the situation there comes from the Indian IP blog, Spicy IP.

In re Bilski: The End of Business Method Patents? No

2008-11-04T09:15:00.000-08:00

he U.S. Court of Appeals for the Federal Circuit just handed-down the long-awaited In re Bilski decision dealing with patentable subject matter and so-called business method patents. The decision reverses part of the famous State Street decision that sparked so much business method patent activity in the past decade. It imposes a new test requiring that the method being claimed must either (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. This will stop some business method and software patents, at least as currently drafted, but since most involve hardware and other tangible aspects of technology, making the claims involve tangible elements may not be an onerous burden. In fact, it's pretty much what the PTO has been requiring and what drafters have been doing for some time. But some areas may become more challenging for patent seekers.

In fact, the decision affirms the possibility of business method patents while it clarifies the standard for patentability.

I've got some pending patents in this category and am curious to see how they will be affected, if at all. Fingers crossed!

Innovation in India: Excellent Resources

2008-10-08T19:08:00.000-07:00

Here are several links for those wishing to better understand and track innovation in India. Special thanks to Aynampudi Subbarao!

Indiainvents.blogspot.com

Tepp-innovators.blogspot.com

Indianinnovatorsforum.org

Biotechnews.in

Farnsworth the Inventor: Videos

2008-09-19T07:28:00.000-07:00

Farnovision.com offers a collection of videos with Philo Farnsworth, one of the fathers of television. Especially ironic is the video of his appearance on a TV game show where contestant tried to guess who this unknown inventor was: the inventor of television. Since no one guessed it, he won $100 and a case of Winston cigarettes (perfect gift for a Mormon farm boy turned scientist!). His painful story of brilliance and error, success and failure is one worth studying. It is still a subject of debate and controversy as recent works, including a couple of plays, retell his story as a David against the RCA Goliath, an inventor who was deprived of the recognition he should have had for the development of the television. But these stories also miss the limitations in his work and underestimate the significance of what others such as Vladimir Zworykin achieved.

WIPO Guide on Patenting

2008-09-02T12:48:00.000-07:00

Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises is a valuable guide from WIPO, the World Intellectual Property Organization, for people considering legal protection for their technology or other inventive concepts in their business. It discusses several forms of IP, the pros and cons of patenting, and how patents work. Useful basic information.

Quickly Retrieving Full Text International Patents

2008-08-15T15:54:00.000-07:00

A quick way to find an international patent when you know the patent number is to simply copy the following URL and replace the last string (JP2002112728) with the patent you want:
http://v3.espacenet.com/origdoc?DB=EPODOC&IDX=JP2002112728. This brings up the patent (JP2002112728 in this case - a Japanese patent dealing with bean curd or tofu). To get the full PDF file, click the small "Save Full Document" link near the top center of the page. There you go!

"Sometimes We're Too Busy to Worry About Customers"

2008-07-21T13:01:00.000-07:00

A few years ago, I was in Milwaukee with my sons. After visiting the science museum, we went to a nearby Pizza Hut where we placed an order and waited an awfully long time to get our pizza. This restaurant had a sit-down area with tables and several customers, but also obviously had a delivery business as well. During our wait, we watched an angry man who had been there before us finally approach the counter and ask why he still didn't have his pizza after waiting 40 minutes. The clerk pointed to some cardboard boxes and said that his pizza had been there for quite a while already. The man was indignant and asked why he hadn't been told when he had been sitting just a few feet away the whole time. The clerk explained with this simple excuse: "Sometimes we be so busy that we don't have time for customers."

So true!

It's not just pizza places that fall into these priority traps. Companies of all kinds may make this mistake, becoming so busy with operations and cost cutting and other initiatives that they lose track of the customers they may be losing. They lose track of their unmet needs and their frustrations with current offerings. They take them for granted as they focus on their own priorities.

One Fortune 500 company we (IE) met with told us something surprisingly similar - a refreshingly honest admission that numerous companies ought to be making. They admitted that they were complacent about their position and that they lacked initiatives for growth because "We're too busy." The busyness in operations made them strapped for resources in other areas. The result of this short-term focus was that they were unable to develop innovations effectively, and that meant that customers or potential customers were being neglected.

Are you too busy for your customers? Let me know so I can short your stock.

Disruptive Innovations in Financial Services

2008-07-15T09:26:00.000-07:00

I was asked today for some examples of disruptive innovations in the financial services industry. Here are a few quick examples to consider:

Exchange-traded funds versus managed mutual funds: Easy, convenient, low-cost. “Worse” for not being professionally managed. Diversity of choices gives an customer freedom to play desired sectors at low cost. Incumbents (managed funds) are motivated to ignore.
Online discount brokerages versus stock brokers: Easy, low cost, “good enough” for low-end users and former non-users, again offering an asymmetric advantage over the services of professional brokers.
PayPal versus traditional payment systems: Simplifies transactions, allows people to make purchases more conveniently and securely. Incumbents are motivated to cooperate or ignore.
Peer-to-Peer lending systems (e.g., Zopa.com): Lower cost, more convenient for many. Early stages: disruptive?

A Diagnostic for Disruptive Innovation

2008-07-15T08:56:00.000-07:00

"A Diagnostic for Disruptive Innovation" by Scott D. Anthony, Mark W. Johnson, and Matt Eyring provides some useful guidelines to help innovators determine how an innovation might be deployed as a disruptive innovation. They offer 3 diagnostics to be considered:

Customer diagnostic - assess your customers and non-customers and determine if there are major unmet needs or overserved needs that could be the basis for a disruptive innovation opportunity.
Portfolio diagnostic - "This diagnostic involves looking at the technological characteristics of the innovation and at the potential business model by which the innovation might be brought to market." The goal is to find innovations in your portfolio that could be deployed disruptively to meet the needs of current and potential customers.
Competitive diagnostic - are there weak spots among your competitors that would prevent them from responding effectively to your innovation? Asymmetry of competitive advantage is what it's all about.

Put all these together and you can find guidance in properly deploying innovations to have disruptive potential.

Just don't forget the role of intellectual assets in doing this - something usually left out in the literature. More on that in our upcoming publication in JPIM.

Patenting a "Non-Infringement Composition"

2008-07-02T14:01:00.000-07:00

If Maurizio Porcelli of Bergamo, Italy gets his way, he'll soon the owner of a US patent for a "Non-Infringement Composition." What a great idea! I presume that this composition causes non-infringement wherever it is spread. This could really simplify life for people struggling with patent clearance assessments and pesky infringement suits. And it could reduce the need for creative judges to find new ways to reduce the scope of patents. Let's just use massive amounts of Maurizio's Non-Infringement Composition to grease the wheels of patent-free progress.

One question remains: can we use this composition royalty-free?

Wisconsin Inventor Recognized as Hero

2008-06-21T06:49:00.000-07:00

After Hurricane Katrina, Wisconsin inventor Stacey Babiarz recognized the ineffiency of people slowly filling sandbags with shovelfuls of sand. What a slow, wasteful process when time is running out as disaster approaches. So he created the Bucket Bagger, a mechanized device that delivers sand rapidly into a bag, allowing bags to be filled several times faster than the old way - and with a lot less human fatigue.

Stacey thought his work would help people the next time a hurricane struck somewhere far from Wisconsin, not realizing that his invention would soon help save his own neighborhood. The CNN story, "Inventor's device helps save his own flooded neighborhood," recognizes Stacey's work and notes that he's been dubbed a hero in Wisconsin for his efforts - and for his generosity:

Babiarz typically sells the device for $5,400, but right now he's giving them away to his neighbors and friends around Lake Koshkonong. His hometown newspaper, the Janesville Gazette, has dubbed him a local hero.

Kudos to Stacey Babiarz for his excellent example of creativity, innovation, service and generosity.

Open Innovation at Kraft: Example of Modern Trends

2008-06-10T10:50:00.000-07:00

Many large companies are now ramping up their open innovation efforts to better bring in outside inventions that they can use. And open innovation groups are increasingly using online tools to reach out to prospective inventors. Kraft Foods provides a good example of this with their Innovate with Kraft website. It provides guidance regarding some of the types of innovations they are looking for, with an easy submission process. Inventors learn that submitted ideas must be shared non-confidentially and that compensation will depend in part on what the inventor owns. If a patent or copyright needs to be used by Kraft, then there will be compensation to the owner. If a submitted concept is not protected by a patent or copyright, Kraft, at its discretion, may choose to reward the submitter with up to $5,000 - but it's clearly much better if your concept has a patent behind it.

Disclosure: I've done some work with Kraft and really like the company and its people. And that's why I hope you'll use their Innovate with Kraft site.

Innovators: Consider the Benefits of Microlayer Films

2008-05-27T12:01:00.000-07:00

Microlayer films are stacks of think extruded layers of plastic materials which can impart unusual properties to an object or a package, including iridescence, mirror-like properties, and high strength. Microlayers are used in some Nike shoes (e.g., the Air Max 360) to provide elastomeric barrier films for air bladders, keeping the air contained much longer than would be possible for most single-component materials. Microlayers add security against thieves in windows reinforced with 3M's Scotchschield® Ultra films. A variety of perfume containers and other packaging have beautiful iridescent coloring from microlayer films. And these are just the beginning of the many applications.

A great article reviewing the potential of microlayer films is "Microlayer Films" New Uses for Hundreds of Layers" by Jan H. Schut in the March 2006 edition of Plastics Technology.

I would encourage you to think creatively about what this versatile technology can do for you and your product ideas.

Legal Protection of Digital Information: Online Treatise by Dr. Lee Hollaar

2008-05-13T04:44:00.000-07:00

Professor Lee Hollaar of the University of Utah has written a detailed treatise on protecting digital content. It covers copyright protection and patent protection in significant detail, with information that is applicable to non-digital content as well (i.e., basics of copyright and patent law). His work, "Legal Protection of Digital Information," was published by BNA Books in 2002, but is now available for free online at Digital-Law-Online.info.

From the BNA Books introductory page:

Your complete guide to understanding-and strategically applying-intellectual property law in the dynamic digital age.

* Are computer programs copyrightable?
* What are the four "safe harbors" for network service providers?
* How do "Notice, Takedown, and Put-back" procedures impact your clients?
* What is fair use in the Internet environment?

Gain new insights into intellectual property law in the electronic age-and discover the key to protecting your clients' digital information-with this up-to-date and comprehensive treatise. Dr. Hollaar, registered patent agent, software and hardware developer, and lead technical expert in the Microsoft antitrust suit, has long been active in the interface between computer science and law. Now, the former Fellow with the United States Senate judiciary committee who advised on computer-related issues such as encryption, copyright and patent law, and regulation of the Internet, brings you insider information on the burgeoning area of intellectual property law as it applies to digital material.

Just as the Internet has made knowledge of copyright law important to millions, patents on software and business methods have made it necessary for corporate counsel to understand what is patentable and why. This expansive resource provides an introduction to patent and copyright law in the digital arena; cites key cases that define the scope of what can be patented; and gives incisive interpretations of important copyright and patent statutes, including one of the most complete discussions and analyses of the Digital Millenium Copyright Act (DMCA).

Drawing on his unique experience, Dr. Hollaar offers practical analysis of patent and copyright law in the electronic age and presents critical information in clear, straightforward language.

Two Recommended Blogs on Trademarks

2008-05-12T05:58:00.000-07:00

TTABlog® deals with trademark cases handled by the USPTO's Trademark Trial and Appeal Board and contains many lessons on trademark practice. Some of them can be valuable for anyone interested in trademarks. Another blog to consider is the Trademark Blog from the
Law Offices of Martin Schwimmer in Westchester, New York.

One of the significant cases mentioned on Martin Schwimmer's blog involves Adidas and Payless Shoes. Payless is facing a $305 million penalty for infringing the three-strip tennis shoe trademark of Adidas, one of the largest trademark awards ever. See comments at ConcurringOpinions.com/.

PTO's Checklist for Business Method Patents

2008-04-30T18:20:00.000-07:00

If you file a patent that has the misfortune of being treated as a "business method patent" by the PTO - meaning that it is in Class 705 - then there is a special checklist that the PTO will use during prosecution. Check out the Business Methods Allowance Checklist - one of several valuable resources on the PTO's page on business methods.

Business Methods Allowance Checklist

Useful, concrete, and tangible result.

Not a judicial exception per se.

Not just data per se.

Not simply automating a known or obvious process on a computer or on the internet.

Not a computer program per se.

Not merely non-functional data on a storage device, i.e., music on a cd.

If functional signal is being claimed, must be statically embedded in a computer-readable medium.

The feature that appears to distinguish over the prior art does not merely appear in a recitation of intended use, the name or title of a feature or in non-functional descriptive material.

Searches for analogous art related to the distinguishing feature were conducted.

The meanings attributed to the words of the claim are the plain, ordinary, meanings unless criteria for a special definition have been met.

*You must be able to answer yes to all of these statements.

Preliminary Interviews with Patent Examiners?

2008-04-14T08:39:00.000-07:00

In light of the new obviousness challenges with the Supreme Court's KSR decision, patent seekers may wish to take proactive steps to help the patent examiner understand the story of the invention and its nonobviousness of the prior art. In some cases, it may even make sense to request a preliminary interview with the examiner -- before the first office action has been issued -- in order to expedite examination and address the inevitable obviousness issues.

Some have asked if such interviews are even possible. It used to be that they weren't, but on Sept. 26, 2005, the law was amended to make it possible.

Authority for a preliminary interview at the discretion of the Examiner is found in 37 C.F.R. 1.33(a)(2):

An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.

So yes, it is possible.

But how can you do this before the first office action, when you don't even know who the examiner is? No problem! You can simply call the PTO and ask who the examiner is. I just did this recently for a patent I filed last year and was given the name and phone number of the examiner after providing the serial number of the application.

Now the examiner may not be willing to grant a preliminary interview - depends on the case and the person. And if they do grant a preliminary interview, they may request some additional info from you such as a general statement on the prior art, a list of up to three references of "closest" prior art, and an explanation of your novelty over these references. That possibility was raised by the PTO in a "PTO Day" presentation in 2005. See the bottom of page 8 in www.ipattorneyfirm.com/forms/PTOdayArticleNAPP.pdf for a summary of a PTO presentation where they stated that they may ask for additional info in a preliminary interview.

Will a preliminary interview really help? From my personal experience, I know that face-to-face interviews in general are a powerful tool in helping to expedite examination, though it will take some time to see how much traction preliminary interviews afford. I think that if the examiner is willing, it could save you many months of prosecution time and perhaps even an extra continuation fee. If you can afford to wait, fine. But if time is of the essence, think about a preliminary interview to help deal with KSR and otherwise expedite examination.

Got a Bill from PatentOnline.org? Beware Trademark Fraud

2008-03-04T10:28:00.000-08:00

Our company, Innovationedge, has pursued a couple of trademark registrations. This week we received two bills apparently for European trademark registration. Each bill showed our recently published trademark and requested over $2000 for registration, payable to an office in Switzerland. It looked official, but a careful examination revealed several problems. First, there was no telephone number to call to verify details. There was also no evidence that this was in response to a request we had made. Most telling, there was fine print at the bottom in bad English indicating that this was for registration in their private database and not on behalf of any government organization.

Ah, right! Pay a couple thousand dollars and they'll list you in a private, unofficial database,. Hey, I can do the same on my laptop - and I'll only charge $1000.

The envelope it came in indicated that it was mailed from the Slovak Republic.

My recommendation if you get any strange trademark registration invoices from the Slovak Republic that are associated with patentonline.org, don't pay! It's a fraud, A scam. A con. Theft. Sickening!