Patent harvesting versus mandated innovation

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By David J. French

The expression “patent harvesting” has surfaced in management jargon. These words invoke a scenario wherein corporate management looks under the carpet, so to speak, to see if somewhere in their organization the staff have generated good ideas that are worth patenting.

However, corporate management philosophy has also introduced the further concept of “mandated innovation.” According to this latter concept, a corporation, instead of waiting for inventions to surface from within the organization, actively analyzes the kinds of innovations that would advance corporate plans for the future. A mandate is then issued to technical staff to generate the details necessary to support such innovations.

In both cases, the corporation hopes to obtain patent protection for ideas and innovations which will have real market impact and add further profit to the bottom line.

Serendipitous invention lacks focus

An Internet search using the expression “patent harvesting” will identify the 2001 book Business Method Patents, by Gregory A. Stobbs. This book describes how the classic corporate invention harvesting mechanism, based on filtering concepts presented by workers at the bottom of the corporation, can yield a sizeable patent portfolio. But the results often lack focus. Stobbs goes on to explain how more profitable patenting can be achieved by pursuing an innovation-development business model for the corporation. This involves establishing a proactive innovation procedure within the business organization.

This process can start with an analysis as to what has been accomplished in previous years in terms of research and development, and the results achieved. These results are then compared with the objectives of the corporation and the planned initiatives that the corporation wishes to pursue in the future. Sometimes this exercise will disclose the inadequacy of results that have been achieved so far.

Prospective hypothetical innovations that would actually support corporate plans for the future are then generated, logically beginning at the level where corporate objectives are well understood. When a rich opportunity in terms of an innovation appears possible, then the technical staff within the organization is mandated to come up with the procedures and mechanisms to achieve this innovation. This has sometimes been referred to as white space inventing: filling-in blank spaces around pre-existing knowledge.

Mandated innovation supports corporate objectives

In this scenario, inventions are pulled up out of the organization by personnel reaching down from the top rather than having inventive creations float up from the technical staff located at the bottom of the pyramid. The distinction is between mandated innovations and serendipitous invention.

Technical workers at the lower levels of the organization are necessarily involved in the mandated invention scenario, and probably must be designated as co-inventors. This is because an invention is not complete until a full formula as to how it can be implemented is reduced to writing. Identifying a need does not qualify as making an invention. Inventions are about solutions. The object is to generate solutions that pursue corporate objectives.

Which is the better system? Probably both have value, but it is hard to say now which of the two is superior.

The differences between a good invention and a good patent

Both mechanisms, reaching down from above and floating up from below, will fail to achieve results in the absence of a key ingredient: everyone involved in the process should be well aware of the essential requirements for achieving valuable, patentable, innovations. The essence of a good corporate patent strategy is to patent inventions that matter. As a corollary, a company should endeavour to make inventions that matter. These are not the same thing. To achieve both of these objectives an innovation must address:

1. a relevant invention which consumers will seek out,

2. which is technically feasible to produce at a price consumers will be willing to pay,

3. which incorporates a feature with a have-to-have-it quality,

4. which feature is novel and un-obvious, and

5. for which there is no close substitute existing in the marketplace.

The first two points relate to the invention. The remaining three relate to patentability.

Everyone involved in the innovation process should carry these principles close to their hearts. Whether located at the bottom of an organization and pushing an idea up to higher management, or located near the top and aspiring to draw out of technical personnel below support in the form of inventive solutions that address the corporation’s overall planning objectives, persons aspiring to generate a patentable idea should filter their concepts through these criteria.

Once such a concept is identified a sixth principle must be recognized. Care must be taken to ensure that the invention disclosure filed as part of an application at the Patent Office is full and complete, and that the claims are properly drafted. There is still a danger here. The creators of the original innovation and the drafters of the patent should struggle to foresee how others could achieve the same results without falling afoul of the claims as initially conceived. This is, essentially, a highly creative exercise. It requires intense concentration and substantial further creativity. This is not a procedure that can be left to the patent draftsman alone. It should be pursued by a team of concerned personnel closely associated with the original creators. The patent agent/draftsman can serve as a coordinator.

Developing a corporate structure for the proper generation of patentable innovations is not a passive exercise that can be characterized as “harvesting.” It requires a dynamic initiative from the persons involved in the process. And they all have to understand the true nature of that process: line worker, engineer and corporate manager together. The six principles listed above are key. Unfortunately, this kind of environment rarely exists in the modern corporate environment.

Innovation never stops

Even if all of these things are properly done and the Patent Office examiner eventually gives the green flag for the granting of a valid patent for a quality invention, there is one last iceberg that may lie in the path of the corporate liner.

After all this effort has been invested and the invention as finally conceived has been patented, another inventor may arrive on the scene with a new invention, never thought of before, which does the job just as well, or even better. Such an invention can lie outside the scope of any patent that has been granted. That is the nature of the inventing-patenting game. That is why we have a patent system.

David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel. com.



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