It is argued that over 80% of a company’s value is attributed to intellectual property (IP), which means these assets are highly important to capture, catalogue, qualify and protect to create real Enterprise Value. As such, implementing effective operational processes to continuously capture new IP and identify the best candidates for formal protection is an important strategic step to fully harness the value from your innovation process.
Considerable and continuous investment is needed to support an innovative R&D team of skilled people and it is important to make sure their goals and inventive output are on-point within your relevant market(s). An effective Innovation Management & IP Capture process is needed to protect this investment in R&D by identifying inventions and skilfully selecting the ones that warrant formal protection.
A problem facing many small and medium-sized enterprises (SMEs) is a lack of time and internal resources to conduct novelty or market relevance searches on incoming inventions. This can leave IP decision makers in the dark as to which IP strategy would be best for each invention.
Should you formally register inventions and protect them with patents? Would they be better protected as trade secrets? Or should you defensively publish your inventions to reduce your competitors’ patent filing potential?
Without the right information in hand to make informed decisions, there could be devastating effects further down the line. For example, if inventions aren’t qualified for novelty, your pending patents could ultimately be shot down or severely limited in scope by examiners – after a significant amount of cash has been spent drafting and prosecuting them. This is a serious waste of company resources and can lead to a negative perception of patents from the Board/shareholders and a fall in IP portfolio value. Similarly, if patents were filed for inventions that were not analysed for current/future market applicability, you may find yourself with a patent portfolio that has little real value if the technology is never adopted, or if the scope of protection no longer matches the features of your product.
It is the job of an IP professional (internal or external) to liaise with the R&D team(s) to make sure IP is effectively captured. A framework should be put in place to make sure your team knows what they are doing has value and that IP capture and protection can contribute significantly to the broader goals of the business.
In general, the R&D process begins when a technical or business problem is identified. From there, ideas to solve the problem are hypothesised, then innovations are developed to find commercially-focused succinct solutions to the problem. Any resulting inventions should then be identified and specific implementations of important inventions should then be detailed. In each step of the process, the solutions to the problem become more refined and better defined with the relevant commercial, business and technical aspects being considered.
Too often, researchers in R&D departments do not realise they are “inventing” when solving a particular problem and do not necessarily even see themselves as “inventors” per se, but it is important to recognise problem-solving is the source of most patentable inventions. IP education for inventors is an important first step in the Innovation Management process and can be delivered by the IP Manager or an IP Adviser. The aim should be to cover the basics of understanding what may be protectable, keeping good notebook records and the importance of considering the state of the art – no one wants to spend time, effort and money reinventing the wheel.
If a company wishes to make their mark, or “land-grab”, in a particular technology area by increasing their patent filing output in that space, then Innovation Workshops are a good way of stimulating inventors to innovate within, or design around particular technologies. Having an IP professional in these innovation sessions keeps the focus on identifying patentable inventions, assessing the commercial/strategic value and capturing the necessary implementation details.
To determine whether an invention is potentially patentable, the invention needs to be described in enough implementation detail, such that a novelty search can be conducted and a Patent Attorney can give a legal opinion on whether it is likely to be inventive over the prior art. Further alternative implementations of the invention can then be hypothesised and described in a full invention disclosure, once a decision to patent has been made.
The workflow and 5-step outline below gives a simplified overview of how ClearViewIP supports a company’s strategic IP capture goals through a decision-led process, with the ultimate goal of identifying and documenting the best invention candidates for formal protection.
Between each main step, if the invention is not deemed novel, inventive or the business need to protect with a patent changes, the invention can be archived in an invention database – which effectively acts as a comprehensive trade secret database; defensive publication is also another option for these inventions, to prevent competitors filing on them.
We provide outsourced Innovation Management services to several of our clients, which are tailored to meet each client’s specific needs. Our experienced team of Consultants and Analysts can work closely with your inventors to capture and qualify their output to make sure you really know what your best inventions are. Some of the reasons to outsource your IP capture needs to ClearViewIP include: