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By Tom Tuytschaevers, a member of our Patent Practice Group
Many companies have more
inventions than they recognize, and each
unrecognized invention is a missed opportunity
and potentially a wasted asset. Fortunately, capturing unrecognized
inventions through "invention mining" is easy and efficient, and should
be a regular part of any company's patent program.
Invention mining, also
known as "invention harvesting," is the art of engaging with an
engineer to identify and capture inventions, including those that might
otherwise go unrecognized. 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. Done well, invention mining is not
disruptive to the inventor's work, and can generate significant return
The art of invention mining
turns on the ability to ask the right questions, not only to uncover
inventions, but also to overcome barriers that may be holding back
their disclosure. In both respects, a little experience goes a long
Engineers often are not
attuned to recognizing inventions, yet almost any worthwhile project
involves innovation. The product they 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 innovations.
Even when engineers suspect
that they have an invention, they often lack confidence to disclose
it. Young engineers may think that their ideas are 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.
Even worse, engineers too
frequently think that the requirements for patentability are much
higher than they are. Then, even when an innovator recognizes an
invention, other job pressures may leave little time to fill out an
invention disclosure form. With a little guidance and investment of
time, these barriers can be overcome, and when that happens the
floodgates of invention disclosure tend to open.
Invention mining typically
involves sitting with a company engineer, or its team of engineers, and
starting a discussion about what they have been working on. What have
you done? Why is that 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?
Once you get an engineer to
reflect on her work by thinking along these lines, the ideas will
flow. Even better, a group discussion 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.
An invention prospector
working with a company's engineering staff can capture these ideas
quickly and easily by filling out the company's standard invention
disclosure form on the fly, and supplementing it with documents that
the engineers have already produced in the course of their work.
Anyone can be an invention
prospector, but there are advantages to having a patent attorney do the
digging. In addition to experience with teasing out innovations, a
patent attorney can ask other questions critical to patentability, such
as questions about inventorship and invention ownership.
Also, since time typically
works against the inventor 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
In addition to feeding a
company's patent pipeline, recognizing inventions may be important for a
variety of other reasons. For example, 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.
In any event, even a
handful of additional inventions can have a significant positive
influence on such metrics. In addition, a small investment of time in
invention mining can have a positive effect on a workforce as members
gain an appreciation for all they have done, and for the fact that the
company recognizes their efforts.
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
© 2005-2012 Sunstein Kann Murphy & Timbers LLP, All Rights Reserved.
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