If you have ever gone apple picking in late season, you may recall seeing more apples on the ground than on trees. As you begin picking apples, you realize why. You haphazardly grab and yank an apple off a branch and the branch sways, sending many ripe apples to the ground. What a waste!
Harvesting innovation is no different. Without a proper strategy, potentially valuable fruits of R&D may never make it into your IP basket. Today, we explore various strategies your organization can implement to better foster and capture innovation.
IP managers and inventors must work together to effectively harvest innovation. A disconnect between your R&D team (e.g., engineers, scientists, or academic researchers) and IP managers (e.g., in-house IP counsels or technology transfer personnel) can result in an inefficient capture of innovation. For example, researchers may fail to disclose inventions because they may not recognize that the inventions are patentable or inadvertently publicly disclose the inventions before reporting them to the IP managers. Furthermore, researchers may view the invention disclosure process as a perfunctory task that takes them away from their research endeavors, instead of viewing it a crucial early step in procuring IP. Efficient innovation harvesting requires a close coordination between your R&D team and IP managers. Here are three tips:
- Educate your R&D team to recognize potentially patentable innovations and understand implications of publicly disclosing such innovation before securing IP protection. Train your R&D team to recognize patentable inventions and statutory bars to patent protection, such as public disclosure, offers for sale, and actual sales. Those disclosing inventions should also be aware of the organization’s IP policy relating to ownership and any financial arrangements (e.g., bonuses or royalty revenue sharing). Often, your outside IP counsel would be happy to pitch in and give a seminar covering basic patent law concepts for your team.
- Incentivize your R&D team to identify and disclose innovations. Many research institutions and innovation-driven companies encourage researchers to showcase their innovations by holding internal competitions (e.g., innovation competitions) or research day events. In addition to fostering collaboration among researchers, these events are great opportunities for IP managers to engage with the R&D team to identify potential innovations for IP protection. Some organizations also encourage invention disclosure by offering bonuses to employees, while others (e.g., research institutions) offer royalty revenue sharing policies to incentivize innovation and disclosure. Non-monetary incentives such as giving recognition to employees’ invention disclosures with award plaques or announcements and using invention disclosure as an evaluation metric during performance reviews are other ways organizations can encourage invention disclosures.
- Engage your R&D team before and after an invention disclosure. Don’t start and end your innovation harvesting process with an invention disclosure meeting. Instead, engage your R&D team regularly. IP managers can become better aware of inventions in the pipeline or upcoming public disclosures by simply asking their R&D colleagues “What’s new and exciting?”, “Are you working on anything interesting?”, or “Are you presenting anything interesting?” IP managers should also follow up with inventors after the initial disclosures to capture further improvements, developments, or refinements to the disclosed inventions. For example, a follow-up conversation with the inventors may reveal new insights that require claim amendments or continuation applications (e.g., invention X works really well in application Y) or additional inventive features that can be captured in continuation-in-part applications or even a new application.
Key Takeaway: To efficiently harvest innovation, IP Managers should (1) educate the R&D team about IP protection and policy; (2) encourage invention disclosure; and (3) engage with the R&D team regularly to be aware of possible new inventions and additional improvements to already disclosed inventions.
Doyon Won is an associate in Nutter’s Intellectual Property Department. With his deep knowledge in life science technologies, Doyon counsels clients on drafting and prosecuting patent applications and strategic portfolio ...
John (Jack) J. Penny is a partner in Nutter's Intellectual Property Department. He counsels clients in the development of strategic patent portfolios; prepares opinions concerning infringement, validity, unenforceability ...
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.