Intellectual Property

Sunstein, Kann, Murphy, & Timbers: Extracting Nuggets From The Invention Mine

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 on investment.

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 way.

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 patent rights.

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 property program.

© 2005-2012 Sunstein Kann Murphy & Timbers LLP, All Rights Reserved.

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