Monday, December 8, 2008

A Rich Source of Innovation: Rich Products

Rich Products, the large private company marketing frozen foods and other products, has an interesting history of innovation. Thanks to 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
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.

Tuesday, November 25, 2008

Industry-University Innovation Benchmarking: US vs. UK

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?)

Friday, November 21, 2008

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

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.

Thursday, November 13, 2008

Reaping the Riches of Innovation in India

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, 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!

Wednesday, November 12, 2008

Patenting Software and Business Methods in India: Probably Not Possible

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.

Tuesday, November 4, 2008

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

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!

Wednesday, October 8, 2008

Friday, September 19, 2008

Farnsworth the Inventor: Videos 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.

Tuesday, September 2, 2008

WIPO Guide on Patenting

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.

Friday, August 15, 2008

Quickly Retrieving Full Text International Patents

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: 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!

Monday, July 21, 2008

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

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.

Tuesday, July 15, 2008

Disruptive Innovations in Financial Services

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.,
Lower cost, more convenient for many. Early stages: disruptive?

A Diagnostic for Disruptive Innovation

"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:
  1. 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.
  2. 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.
  3. 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.

Wednesday, July 2, 2008

Patenting a "Non-Infringement Composition"

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?

Saturday, June 21, 2008

Wisconsin Inventor Recognized as Hero

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.

Tuesday, June 10, 2008

Open Innovation at Kraft: Example of Modern Trends

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.

Tuesday, May 27, 2008

Innovators: Consider the Benefits of Microlayer Films

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.

Tuesday, May 13, 2008

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

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

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.

Monday, May 12, 2008

Two Recommended Blogs on Trademarks

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

Wednesday, April 30, 2008

PTO's Checklist for Business Method Patents

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.

Monday, April 14, 2008

Preliminary Interviews with Patent Examiners?

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 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.

Tuesday, March 4, 2008

Got a Bill from Beware Trademark Fraud

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, don't pay! It's a fraud, A scam. A con. Theft. Sickening!

Monday, March 3, 2008

Pitfalls of Filing Non-English International Patent Applications

"When English is Best—Pitfalls of Filing Non-English International Patent Applications" by Gladys H. Monroy and Barry E. Bretschneider (June 2005) is a good resource for clients considering parent patent applications in foreign countries. One recommended strategy if a non-English application is being filed is to also file it as a provisional non-English application in the US, and later claim priority to it in an international PCT application. This can maintain the earliest possible 102(e) date. Here is the specific recommended strategy:
(1) On the same day that the foreign application is filed in the foreign patent office (January 1, 2001), file that foreign application in the foreign language as a provisional application in the USPTO under 35 USC 111(b).

(2) File an IA under the PCT in the English language in the foreign patent office within twelve months of the filing date of the provisional application claiming benefit of the provisional application (January 1, 2002). The IA must designate the United States, and be published in the English language by WIPO (under PCT Article 21(2)).

(3) File a certified English translation of the provisional application at the USPTO within sixteen months of the filing date of the provisional application or within four months of the filing of the IA (whichever is earlier).

(4) File a U.S. national stage application under 35 USC 371 in the U.S. within thirty months of the filing date of the provisional application (July 1, 2003).

Thursday, February 28, 2008

Telling the Story: Impact of KSR on Background Sections in Patents

With the Supreme Court's KSR decision last April, there is an increasing need for patent drafters to consider the potential impact of obviousness. Some have suggested that the background section should be strengthened to help frame the nature of the patent as a surprising discovery, not merely applying known problem solving tools to crunch through a widely recognized problem with seemingly predictable results. I'm in that camp, in appropriate cases, sensing that the background section can help the Examiner understand that the inventor was not simply doing something that is obvious based on common sense. In some cases, a key part of the invention may be rooted in the discovery of the previously unappreciated problem that is now solved. The key to the beauty and non-obviousness of the invention may lie in finding the actual problem that needed to be solved rather than in solving it, but if a patent is drafted to simply state the problem and it's solution, it may seem obvious under KSR.

But there is also a case to be made for backing down on the background section and putting much less information there to avoid handing an Examiner or opponent information to use against your patent. The Patent Prospector reviews an article that calls, among other things, for eliminating much of the background section. The paper is "KSR-Induced PTO Obviousness Practice Changes" by Harold C. Wegner:
All too often, patent applicants needlessly include detailed "Background" sections, create "objects" and, particularly, set up "problems" in the prior art to be solved. None of this verbiage is necessary to meet statutory requirements of patentability.
A. The "Known Problem" as Fatal to Patent Validity
Setting up a strawman, a "problem", in the "Background" may now prove fatal to patentability; it is irrelevant what purpose the applicant intends to solve:
"In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims."
I would suggest problems or limitations can be presented, especially if it is made clear that these problems were not previously appreciated and part of the discovery process for this invention was finding that these problems were at hand - problems which are somehow unique and not analogous to problems in other art areas. But don't present the specific problem solved as if it's one everyone recognizes and would be motivated to pursue with elements such as those used in the invention. Some story telling, when appropriate, might help. Otherwise a minimalist approach may be wise for the background section.

Sunday, February 3, 2008

Term Life Extensions: Maximizing the Life of Your Patent

The value of many pharmaceutical and biotech patents is greatest near the end of the life of the patent, when regulatory hurdles have been cleared and strong markets have been developed. A few months of additional life in the patent could be worth millions. If you are pursuing a patent and think that the greatest value may be near the end of the patent's life, don't overlook the possibility of realizing extensions to the life of your patent. Patent term extension may be available when excessive delays in processing by the PTO have occurred, in when other factors occur. For a review of the details and some excellent tips, see "Maximizing the Value of Biotech Patents" by Courtenay C. Brinckerhoff, senior counsel in the intellectual property department of Foley and Lardner.

Wednesday, January 30, 2008

Stephanie Keller-Bottom of Nokia's Innovent Speaks at Stanford

Stephanie Keller-Bottom, an entrepreneurial thought leader and director of the Innovent Team at Nokia, gave a valuable presentation on commercializing innovations at a 2006 event at Stanford University. Listen to the mp3 file below:

If you have trouble with the flash mp3 player, you can listed to it from the Stanford site or access the mp3 file directly at

Some video clips from her presentation are also available from the Stanford Educator's Corner.

Monday, January 28, 2008

Biodiesel from Algae

Biodiesel got a little more interesting with the news release from Solazyme about their new biodiesel process that converts algae to fuel. Is it a real green energy solution or more hype? The answer lies in the economics. There is a long ways to go still in commercializing this technology, but Chevron is getting on board. If these advances can substantially lower the cost of creating biodiesel, then we could see this go commercial. I welcome approaches that use algae, cellulose, or other biomass besides food crops. Turning food into fuel just doesn't make sense, in my opinion, and the trend of turning corn to ethanol has helped drive up the price of basic grains for millions. Let's find solutions that are earth friendly and people friendly.

Venture Capital: Basic Information for Entrepreneurs

Many new entrepreneurs are interested in understanding venture capital funding for the growth of their business. Some state governments provide information and resources for entrepreneurs seeking help on funding. An outstanding example is the Wisconsin Angel Network. Look at their resource page and listen to presentations on stages of investing and finance marketing. Many other resources are there.

Another resource is N. Humphrey's Venture Capital Guide, published by Gilbert and Tobin (2000). The following information from OzNetLaw is based on Humphrey:
1. What is venture capital?

Venture capital involves funding high growth private start-up companies, particularly in the information technology and e-business industries. Venture capital offers medium term equity finance and does not require regular interest payments. Venture capital can provide a number of value added services include mentoring and the introduction of strategic alliances.

Venture capitalists (high net worth individuals or companies who provide the capital) generally take a minority share in the company and usually do not seek day to day control of a business. They generally appoint a representative to the board of directors and require input and in many cases retain veto rights over key strategic decisions.

2. Stages Of Growth

Venture capitalists categorise companies into four stages of growth:

(a) Stage one—Seed: the business is little more than a concept, the product is in development and the company is concentrating on research and producing a working model or prototype. The founders will fund the business from personal funds, typically requiring between $50,000 to $500,000.

(b) Stage two—Start-up: known as the "Angel round", the concept or products have been developed but the company has no track record and often has not made a profit, thereby making more traditional funding difficult to obtain. This is the riskiest stage for investors. The company needs a large amount of capital (typically between $500,000 to $2 million) but has no reliable indicators of its future success. Many businesses fail during this phase.

(c) Stage three—Expansion: known as the "second round" and may comprise multiple rounds before stage four. The company is fully set up, has usually received some funding and is building a financial track record. The company however, needs further funding (typically between $2 million to $10 million plus) to expand existing operational and marketing capacity. Some companies choose to meet financing needs with traditional bank finance (note that a bank will usually require personal guarantees from directors together with collateral).

(d) Stage four—Mezzanine: known as pre-Initial Public Offering (IPO) funding (typically between $10 million and $50 million and up). Funds are used to prepare for IPO including strategic acquisitions. Mezzanine investors may provide experience in the IPO process; for example, the company is "dressed up" for listing by introducing recognised business people to the board.

Friday, January 25, 2008

Resources for Defensive Publication

Strategies for defensive publication are one of the services we provide our clients. Those interested in defensive publications can learn some of the basics from a useful new blog, Securing Innovation. Take a look at their Short Guide to Defensive Publication. (Hat tip to InventBlog.)

Wednesday, January 2, 2008

Tips for Presentations to Venture Capital Firms

Over a FoundRead, there's a good post on pitching your technology to VCs. Valuable guidance. In addition, remember that the real key is preparing. How powerful is your business proposition? What's your reason to believe? How can you protect your business in light of emerging competition? Do you have an intellectual asset story? And that's right - intellectual assets, not just intellectual property. If you don't know the difference and don't have a compelling IA story to tell, get some help (why not Innovationedge?) and become prepared before you waste what may be a one-time opportunity to tell your story.