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!
Tuesday, June 29, 2010
Good Reminder from Paul Jones: The Hidden Costs of "Free" Grant Money for Innovators
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:
Bed Metrics and Unintended Productivity Losses
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!
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!
Monday, June 28, 2010
Bilski: Relief at Last
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:
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.
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.
Wednesday, June 16, 2010
Is It Worth Patenting?
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.
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.
Thursday, May 13, 2010
The Emerging Landscape of Biofuels IP
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.
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.
Friday, March 26, 2010
Patent Irony: Crush Your Invention by Calling It Such
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.
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.
Wednesday, March 17, 2010
You Could Win a Free Book: Call Me on GotInvention Radio This Thursday Evening
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).
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).
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