My last blog focused on two elements of “Patent Strategy 101” – primarily, why and what to patent. With this paper, I will discuss best practices for patent activity – i.e., how do we patent innovations to drive business success? Some of you may plan to file a handful of patents, while others may plan to make this part of your company culture. Accordingly, I’ll first address universal best practices that everyone should undertake, regardless of the number of patents filed. From there, I’ll explore enterprise best practices and tackle the question of how to make invention a repeat process. These latter points are mostly germane to large companies, but elements of these discussions may be of value even to small and medium businesses.
Part I: Universal Best Practices
The following are habits and policies that all businesses should consider, regardless of patent activity frequency. Think of these as “universal” considerations, independent of your organization’s size or goals.
Establish a Corporate Intellectual Property (IP) Policy
Include an IP policy in your corporate handbook or create a separately distributed IP policy document. Clearly stated policies minimize invention ownership questions. It’s critical to get this right up front, not try to sort it out after a patent has been granted.
The alternative may be seen in companies where employees have worked on a project, while on payroll, and achieved innovative breakthroughs to accomplish employer goals. Without a clearly delineated IP policy stating those conditions under which IP belongs to the employer, the employee and the manager may have differing perspectives on who may commercialize the technology – or exclude others from practicing the invention. Such after-the-fact ownership examination can be mitigated through preemptively establishing an IP policy enumerating ownership considerations.
Consider Discoverability and Avoidance
This is one of those areas where engineers and other technical professionals often fall short – myself included early in my career. No governmental agency or magical body exists to monitor patent infringement, so you must look after your own interests. More to the point, to enforce a patent, you should have indications that a competitor may be using your patented innovation. Thus, when considering whether to file a patent application, you should ask several questions, centered on whether you could detect infringement if others were using your patented invention.
Could you simply read a competitor’s literature or watch their solution in operation to infer use of your invention? Or do you need access to their product to run test cases? Perhaps, more challengingly, would you need to examine source code or otherwise reverse engineer a competitive solution to determine that they were using your patented concept? You may decide to patent concepts that will prove difficult to uncover, but as the pendulum shifts toward difficulty, a compelling case may be made for keeping the idea as a trade secret or confidential information. If no one else can see how you are accomplishing a desired effect, then you likewise may have difficulty knowing whether someone else is using your invention.
Likewise, consider how easy it would be for competitors to avoid your idea – i.e., does it offer advantages that no other solution offers? If so, your solution becomes increasingly desirable to protect. If, conversely, it’s one more way of accomplishing a task that is no better than existing methods, competitors can easily circumnavigate your invention. In this case, an issued patent may be of little business value.
I’d also advise noting how to detect infringement, for institutional memory. The life of a patent is generally 20 years from filing date, and even if the development engineers and their leadership decide to file the patent today, who knows where those individuals will be in 10 years when some hypothetical competitor releases a similar solution. Such a preserved record could help your future peers – or your future self – enforce the patent.
Invite Business, Technical, and Legal Functions
Business, technical, and legal interests should all have a voice at the table when deciding whether to file a patent. Any one or two of these alone is insufficient. The technical functions can describe their work and discuss relevant known solutions. Business leadership can ensure that the invention advances the organization’s goals. And legal staff can tell you whether the concept is sufficiently described for patentability and help guide the team around prior art discovered during the filing process. To underscore this, think of a patent as a legal instrument, describing technical embodiments, designed to accomplish business objectives. I’ve long held that legal should not unilaterally drive your filing strategy, but you won’t be successful without strong legal guidance.
Simplify Complex Solutions
I’m partial to devolving complex solutions and filing claims (or separate patent applications) around each novel element. I frequently see new inventors trying to patent elaborate systems – e.g., the equivalent of a new car model. But for a useful patent, inventors should identify the novel aspects of that “new car.” A talented attorney might help you with this, but don’t take this for granted. If you have invented such a complex system – the hypothetical new car, for instance – you might obtain separate patents on the adaptive cruise control, exhaust system improvements, fuel management process software, and the regenerative braking system. By calling out the elements that you believe to be new, useful, and nonobvious, your portfolio can be thoughtfully constructed for business value.
Someone once remarked to me, “If I’d invented Google Maps, I know I could have patented that.” This is an incomplete statement. If you’d invented Google Maps, I’d suggest patenting the way in which mapping services ingest and display new businesses as they are formed. Patent the way you identify and display nearby pharmacies, gas stations, and grocery stores. Patent the way you calculate routes to destinations and the way you modify routing guidance based on changing traffic conditions. Break that complex application down into finite components and make each a focus of your efforts. Taking a more granular approach often provides patents that are easier to enforce in the years ahead, protecting your business interests from competitors.
Create Patent Clusters
It’s often easy for a competitor to work their way around one patent. But complex solutions often contain multiple, distinct inventions. Filing multiple patents around a given solution increases barriers for your competitor. Talk with your attorneys about apparatus and method claims and include all realistic variations. If you have a great solution, it may be possible to obtain multiple patents to protect various subcomponents of your product.
Suppose you’ve created a digital twin – a digital representation of a physical system – and you want patent protection on your innovation. You might try to patent the methods by which you create the twin: the methods and scenarios under which you populate the behaviors and parameters from its real-world equivalent. But might you likewise describe technically embodied methods for ways that such a twin might be used? Beyond just describing how the twin is fully formed, usage-related patents may protect your ability to practice those methods in the future and could provide useful leverage with others operating in your field.
Expand Your Claims
Expanding claims while preparing invention disclosures or patent applications goes hand-in-hand with prior advice but is subtly different. When describing inventions, technical professionals should be inspired by their work but not limited to their work.
As a young development engineer, I often described my innovations to attorneys exactly as I’d intended them. For example, an invention might have described a particular way that a UNIX operating system could accomplish some function on a reduced instruction set computing (RISC) device. Years later, I was tasked with using patents against competitors, and I realized how constraining my early descriptions had been. In some cases, rather than call out a UNIX operating system on a RISC device, I could have more broadly framed my work in terms of operating systems on computational devices, and obtained broader, more easily used patents.
Let’s illustrate this with a whimsical example. Imagine you’ve just invented the first-ever coffee delivery device, because you believe coffee-on-demand will be big business. You might describe your new “Coffee Cup 1.0,” a hardware device, as having smooth sides, made from compressed paper, being slightly conical in shape, and in some embodiments, may also include a temperature-resistant wax insert. But even if it’s a twinkle in your eye, consider whether you might also describe “Coffee Cup 2.0.” This may be another hardware device, with parallel sides, often made from ceramic, with a handle on one side to prevent the user from burning her hand on hot liquids. If you can adequately describe this, you may be able to get preemptive coverage on the next generation of coffee delivery devices. Back to the real world, you want to protect not just today’s revenue sources, but your business interests of coming years.
Remember, as you describe alternative embodiments, you don’t have to have written the code or created prototypes to file for a patent. But, as the attorneys will tell you, you should describe a technically embodied methodology – clearly calling out how the described result can be delivered. Additionally, by calling out multiple embodiment possibilities, you may be able to shield some of your specific trade secrets.
Use Skilled Outside Counsel
Engage counsel with expertise in your domain. Your brother-in-law may be an attorney, but if his expertise is in real estate, he probably can’t draft the specification and claims to give you the necessary business results. If your brother-in-law is a patent attorney specializing in materials science and your invention involves neuronavigation enhancements, I’d simply ask his advice on a skilled IP attorney with expertise in your field.
Be Careful with Adversely Held Patents
Another consideration, although not directly related to your own patents, is a best patent strategy practice as you build your portfolio: Beware of discussing adversely held patents (AHPs), as these discussions may create “willful infringement” concerns. Emails discussing competitors’ patents can create significant business risk, because even confidential information may be discoverable in the case of litigation. It’s important to work with your legal team on this topic to minimize your business risks.
In the outbound licensing section of my prior IP strategy blog, I mentioned “carrot” licenses. The financial risks of examining AHPs are one reason that IP-savvy organizations seldom entertain carrot licenses. If I look at your patents and decline a license, then my awareness of your patent may be used against me financially if my new solutions resemble yours. Bottom line: Be careful when discussing others’ patents, and certainly don’t email anything about them that you wouldn’t want competitors’ attorneys uncovering.
Part II: Enterprise Best Practices
The points above apply broadly to commercial technology organizations, regardless of company size or intent. But a natural question may be asked, “What changes if patent filings are to be a regular part of my organizational culture?” For start-ups, this is probably not a concern, but it becomes important as your business grows.
A common patent journey occurs when companies try to make invention a repeat process. An organization realizes that patents can advance their business interests, so they begin encouraging employees to contribute ideas. This is the generative or stimulatory portion of the corporate invention process: Activities are undertaken to ensure that employees contribute ideas, and patent applications begin to fall into place. This may, in turn, lead to higher-than-expected spending, so companies then apply cost controls – i.e., governance mechanisms. To repeatedly create meaningful patents without undue expense, you need both levers: a motivated and knowledgeable workforce and the business controls so that the right subject matter is patented without extravagant expense. This dynamic balance can be established and maintained through strong leadership and up-front awareness of opportunities and pitfalls. Recognizing that most of the focused ultrasound ecosystem does not currently fall into the enterprise category, I’ll spend a short amount of time on this topic.
I’ll begin with best practices for idea generation, reflecting a potential cultural transformation for your organization.
Raise Employee Awareness
First, raise employee awareness of IP’s importance by training your organization’s key business and technical leaders on why it matters. Consider the message scope, weaving this narrative into leadership communications.
Celebrate successful inventors upon filed applications and/or issued patents. This will help ingrain invention activities as part of your company culture. Celebrations could include articles in a company newsletter, photos on a wall, or many other ways of recognizing success.
Consider Your Awards Structure
Are you paying inventors for successful filings or issuances? Have you considered the non-monetary reasons for inventors to participate? My own experience is that it’s easy to motivate an aspiring inventor to file her first patent, regardless of financial awards. But if you want that inventor to do so repeatedly, financial compensation provides an incentive.
Ensure Process Transparency
Take steps to ensure decision process transparency. Inventors whose ideas are closed – i.e., not filed – may come back with new ideas if they understand how and why the process worked as it did. But if you lack transparency, cultural transformation will be challenging.
Governance Best Practices
Let’s move to cost controls, quality assurance, and otherwise aligning filings with your business interests.
Use Disclosure Forms
You need a consistent way to effectively capture employee ideas, and disclosure forms allow you to do so. Asking the right questions allows you to assess ideas based on uniform criteria. These completed forms are often then sent to the patent agents or counsel preparing the patent application, speeding its creation and expediting your filing date.
Create Invention Review Boards
As your program scales, subject matter experts should be used to assess technical novelty and business value. Review boards help determine what gets filed. I often look for either reviewers with a “major” in technology and a “minor” in business, or people with strong business knowledge who also speak a little “tech.” A good mix of perspectives helps your organization make well-considered decisions.
Set targets by filing count, technology area, business function, and potentially other parameters. Understand the factors important to your business and set guard rails accordingly. Include diverse products, both tomorrow’s and today’s solutions, and other differentiating elements. If you haven’t thought through your needs and used those for patent targets, then you won’t know how well your portfolio is tracking your business interests.
Manage Your Invention Pipeline
Monitor, measure, and control your invention activity. View your invention pipeline like a deal progression pipeline, and continually manage it to get the desired business results. Are certain emerging technologies or technical functions critical to your business but underrepresented in your portfolio? If so, actions can be taken to stimulate additional inventions in these areas or other steps can be taken to shape your portfolio.
Streamline funding sources and processes. You don’t want tactical cost pressures determining what gets filed. Remove friction from the system to ensure that the right subject matter is patented. This is often accomplished with either a centralized budget or shared services pool, and these strategies should be applied to filing, prosecution, and maintenance payments.
I haven’t spent much time on leading enterprise practices, but you should understand the balance between culture and controls and the processes associated with each. As your business grows, invention processes should evolve from the start-up phase of your journey.
Wrapping it Up
To recap, a handful of best practices should be considered by all technology companies, including those in the focused ultrasound ecosystem. Reasons may exist to deviate from the guidelines laid out here, but ensure that you’ve considered the options, risks, and rewards as you execute your strategy.
As your company grows, learn from best practices established in successful technology enterprises. Consider how to incentivize desired contributions from your employees while creating the governance structures necessary to align those contributions for business success.
If you have questions, or if I can help those of you in the focused ultrasound community with this important topic, please reach out to me. I look forward to these conversations.
Chief Technology Officer, Focused Ultrasound Foundation