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02.12
 Sifting
for Gold in the Invention Mine
By Tom Tuytschaevers
Many companies generate more inventions than
they recognize, and each overlooked invention is
a missed opportunity and potentially a wasted
asset. Fortunately, capturing these assets
through “invention mining” is easy and
efficient.
As an engineer, you are in an
ideal position to help your company identify
potential nuggets of patentable inventions.
Where There’s Innovation,
There’s Invention
Engineers often are not attuned
to recognizing inventions, yet almost any
worthwhile project involves innovation. The
product you are designing to meet a customer’s
needs must have some advantage over alternative
solutions, and that advantage may be a
patentable invention. Perhaps the product
requires a new application of, or an improvement
on, an existing technology, or the product
requires a new material or a new method of
manufacturing, any of which might be patentable.
To identify inventions, take a
look at your work and ask yourself a few simple
questions. What challenges have you overcome,
and how did you overcome them? Why is your
solution different? What made you think to do it
that way? How was it done before, and why didn’t
anyone do it this way previously? Why will your
customers like it?
When you reflect on your work by
thinking along these lines, the ideas will flow.
Even better, a group discussion involving your
entire engineering team often produces a
synergistic effect: When one person volunteers
an idea, others begin to remember other details,
setting off a chain reaction of invention
disclosures.
Capturing Inventions Is
Time-Sensitive
Inventions are the raw material
of any patent program, so identifying a
company’s inventions gives the company more
choices for strengthening its patent portfolio
and making best use of its patent budget.
However, the 2011 changes to the
patent laws may work against you by altering
well-settled expectations created by the
existing laws. These changes will make
identifying and capturing inventions even more
time-sensitive than in the past.
Existing patent law provides
some flexibility in the time deadlines and
ability to expose an invention outside the
company before filing an application, to allow
an inventor to refine and develop an invention,
to seek partners for investment, marketing,
manufacturing, and the like, and to make
informed patenting decisions. The extent of
these deadlines and exposure opportunities is
beyond the scope of this article, but in short,
the existing law strikes a balance between the
risk of filing prematurely and risks inherent in
waiting as you refine your invention. Not so
under the 2011 patent revision, which
substantially shortens the deadlines, and
diminishes the scope and availability of these
options.
These changes impact all
inventions, but they may impact small companies
and startups more than larger companies. Large
companies are generally able to finance, develop
and test products entirely in-house, without
exposing their inventions outside the company.
Because the deadlines and risks under the new
law are triggered by outside exposure, large
companies are likely less affected by the new
law. In contrast, small companies and startups
are more likely need the longer deadlines and
outside-the-company exposure opportunities of
existing law in order to work with partner
companies, to test their inventions and the
like. Those activities will be far more risky
than in the past.
In short, under the 2011 patent
law revisions, inventors will be in a “race to
the patent office,” so time spent honing your
idea may be fatal to your patent and toxic to
your business interests.
In addition to feeding your
company’s patent pipeline, recognizing
inventions may be important for a variety of
other reasons. Some companies measure their
engineering output as a ratio of invention
disclosures per dollar of R&D spending, while
other companies measure patent applications
filed per year, or patents granted per dollar of
revenue, or any combination of these factors.
Even a handful of additional
inventions can add lustre to such metrics.
Likewise, a small investment of time in
invention mining can fortify the morale of a
workforce as members gain an appreciation for
all they have done, and for the fact that the
company recognizes their efforts.
Barriers Can Be Overcome
Even when engineers suspect that
they have an invention, they sometimes lack the
confidence to disclose it, fearing that their
idea is not worthwhile, or “if it were a good
idea, the senior engineers would already have
thought of it.” Paradoxically, senior engineers
tend to believe that many new ideas are the same
as things they saw long ago.
Worse, engineers too frequently
think that the standards for patentability are
much higher than they are, and talk themselves
out of a patent. Many ideas seem obvious after
you understand them, but that doesn’t make them
unpatentable. In fact, inventions that seem the
simplest in retrospect are often the most
valuable. Remember that an invention need not
be revolutionary in order to be patentable.
Indeed, the majority of inventions are
evolutionary; they are improvements on
preexisting technology. Don’t be so quick to
shoot down your own idea.
Even when you recognize an
invention, job pressures may leave little time
to fill out an invention disclosure form, yet
completing the invention disclosure form should
not be difficult. In fact, an invention
disclosure form typically solicits only data
that is readily available, such as the names of
the inventors, a brief description of the
invention, and information about any previous
disclosure of the invention outside the
company. If more detail is required, you can
supplement the invention disclosure with
documentation that you probably already have,
such as schematic diagrams, flow charts, or
product data sheets, to name but a few. In
fact, documents already prepared in the course
of your work, such as documents used in design
reviews, may supplement the invention disclosure
without any additional effort.
With a little guidance and time,
these barriers can be overcome, and when that
happens the floodgates of invention disclosure
tend to open. A particularly effective approach
to identifying and capturing inventions is
invention mining, as I’ll briefly describe.
Invention Mining
Invention mining typically
involves meeting with your company’s patent
department or outside patent counsel, and
discussing your projects. The success of the
exercise turns on asking the right questions,
not only to uncover inventions, but also to
overcome barriers to disclosure. In both
respects, a little experience goes a long way.
Done well, invention mining is not disruptive to
your work, and can generate significant return
on investment for your company
Anyone can be an invention
prospector, but there are advantages to
enlisting the help of a patent attorney. In
addition to having experience teasing out
innovations, a patent attorney can ask questions
critical to patentability, on such issues as
inventorship and invention ownership. Also,
since time works against you in the patent
process, a patent attorney knows to ask about
events that may have triggered a patent filing
deadline, and about foreseeable events that
could jeopardize potential patent rights.
A company cannot protect
innovation that it fails to recognize. Invention
mining is an efficient way to capture the
innovations inherent in any company’s work, and
yet is not as widely or consistently practiced
as it could be. Invention mining should be a
part of every company’s intellectual property
program.
© 2012 Sunstein Kann Murphy &
Timbers LLP,
www.sunsteinlaw.com
reprinted by permission.
Tom Tuytschaevers is an
electrical engineer, and a patent attorney at
Sunstein Kann Murphy & Timbers LLP, where he
focuses his practice in patent preparation and
prosecution matters, invention mining, and other
intellectual property matters. Tom also enjoys
teaching intellectual property law and business
to graduate business students and entrepreneurs
at Northeastern University’s School of
Technological Entrepreneurship.
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