Intellectual Property

Archive for the ‘Intellectual Property’ Category

Patents: A Low-Cost Method To Enter New Markets?

Saturday, May 12th, 2012

Did you know that patents offer a company a low-cost and low-risk way to enter a market and potentially earn a high return on investment? In fact, they can offer a way to diversify revenue streams outside traditional markets. Even though inventions may be outside a company’s core space, it may be worthwhile pursuing patents since they can add tremendous upside to a company’s value with limited downside. Here’s how.

Patents provide their owners with the right to exclude unauthorized parties from using the inventions claimed within the patents. This is true whether the patent owners decide to use the claimed invention in a product or not. So, a patent can cover application of the claimed invention outside of the core market of the patent owner, where they may never have considered actually introducing a product.

This versatility can be advantageous for a company seeking to diversify its revenue streams. Instead of launching new products outside of its core markets, a company can simply exclude others from using their patented inventions in these markets. Whereas the development, testing and marketing costs of launching new products can be high, running into the millions in markets with high barriers to entry, filing and maintaining a patent over its lifetime can be done at a fraction of the cost.

If any of these inventions become highly valuable, the potential licensing revenue can easily exceed the filing and maintenance costs of the patents. In addition, the company can sell the patents for a large profit. A patent can be thought of as a call option on an underlying asset, which in this case is the invention. If the invention is successfully adopted, the patent itself becomes valuable. It has a large potential upside relative to its downside. But remember, similar to a call option, the patent does have an expiry date.

Patenting, then monetizing these patents, outside a company’s core space can enable the company to diversify its revenue stream and alleviate the impact of adverse conditions in its traditional markets. The company can use these patents as leverage against competitors if necessary, and as bargaining chips in negotiations. All without the cost, risk and distraction of trying to launch a new product outside its core market space.

Posted in Intellectual Property, Product Management | No Comments »

Domain Names Can Be More Important Than Trademarks

Saturday, March 10th, 2012

In this day and age, when business development, sales and marketing are frequently done through the Internet and social media, the need for formal registration of corporate trademarks can sometimes be less important than registering key domain names.

If domain names are not appropriately secured, someone can link a site of unrelated or inappropriate content to it, creating confusion or worse. Imagine a company that owns only the “companyname.ca” domain because the .com domain was already taken. After a few years in business, pornographic content suddenly appears at the related domain “companyname.com”. The site probably never refers directly to the company’s name, so even if “companyname” is a registered trademark nothing can be done short of trying to buy the domain. Of course at this point buying the domain becomes an expensive affair because the company is in a poor negotiating position. If this seems unlikely, consider the fact that there are many companies devoted to registering domain names that they are never going to use themselves, just like patent trolls.

While it would seem to make sense that trademarks and domain name assignments should be linked in some way so that owners of trademarks automatically own the key domain names associated with them, this isn’t the case. The best advice, if you have a limited budget, is to secure all domain names in all relevant countries related to your company name (and possible variations) before trademarking the company name. The ™ symbol can always be used as a common law trademark for the company name in the meantime. The same applies to securing proper Facebook, Twitter and other social media site account names. Once the relevant domain names are secured, it is less likely someone will bother trying to use the same company name to create mischief.

Think ahead and be prepared. These days it seems there are trolls lurking under every bridge – even the virtual ones!

Tags: domain name trolls, Natalie Giroux, protecting domain names, stratford managers, trademarks
Posted in Intellectual Property, Social Media | Comments Off

A New Understanding of IP Within A Competitive Environment

Saturday, February 25th, 2012

Until now, intellectual property (IP) has been viewed in the same light as other forms of property. Indeed, if we look at the websites of bodies such as the World Intellectual Property Organisation (WIPO), the following is offered as an answer to the question, “What is Intellectual Property?”:

“Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.“

Throughout history, intellectual property has been viewed simply as the assets realized through the process of creative innovation. However the time has come, to take a broader view of intellectual property. It is time for a new understanding of intellectual property within a competitive commercial environment.

The strategies and tools used to develop, build, maintain, and realize value from “creations of the mind” owned by a company must be included in this broader view. Examples are:

Invention disclosure programs

Licensing programs

Acquisition programs

The strategies and tools used to discover, and defend against, the threats posed by the “creations of the mind” owned by actors external to a company must also be included in this broader view. For example:

Competitor patent monitoring programs

Defensive litigation strategies

Therefore, within a commercial environment, IP encompasses:

The assets realized through the process of creative innovation, i.e. the “creations of the mind” owned by a company.
The strategies and tools used to develop, build, maintain, and realize value from the “creations of the mind” owned by a company, and
The strategies and tools to discover, and defend against, the threats posed by the “creations of the mind” owned by actors external to a company.

When IP is considered using this new and broader perspective, a company is able to both improve the return on its IP assets and better prepare for the challenges posed by its competitors.

NB: with this post, we welcome Ramesh Rajaduray, IP Strategist, to Stratford Managers

Tags: definition of intellectual property, Intellectual Property, intellectual property management, ramesh rajaduray, stratford managers
Posted in Intellectual Property | 1 Comment »

Provisional Filings – A False Sense of Security?

Sunday, July 17th, 2011

Your team has developed an innovative solution or significantly improved your product with a novel process. The approach has been tested and will be implemented in the next product release. Everyone agrees that the solution has never been used before and, as a significant differentiator, ought to be protected by a patent.

So you quickly document the solution and file a provisional application. This is cheap (~$500) and does not even require a lawyer! You breathe a sigh of relief. Your solution has been protected and you can forget about the patenting process for a year.

A year later, you ask you patent lawyer to draft a conventional application from the few pages you originally filed with the patent office. It turns out that 15 more pages must be added to properly describe the invention in order to write enabling claims! Worse still, you learn that only claims in which EACH element was FULLY disclosed by the provisional application will bear the date of the filing of the provisional application. The other claims requiring the additional disclosure will be dated with the filing of the conventional application. Sadly, you may have lost a year of protection by neglecting to disclose some minor details that, although not at the center of the invention, are necessary for it to be enabling!

If you really think your invention is worth patenting, I recommend that you do it right and dedicate resources up front to work with a lawyer to file a complete specification and claims. It is only through the process of writing the claims that you can ensure your description is complete. You may still want to file a provisional application initially (to allow for completion of testing), but at least you will know that you have secured the earliest filing date possible. Better safe than sorry!

Tags: Natalie Giroux, patent process, protecting inventions, provisional filings, provisional patents, stratford managers
Posted in Intellectual Property | Comments Off

Married . . . with Intellectual Property

Monday, February 21st, 2011

So your company has cooked up a new product idea just ripe for the market. You’ve found the perfect partner to help execute the project. Everyone is pumped about the potential for success and eager to get the project off the ground.

Odds are that you were careful to sign NDAs with the various potential partners you evaluated including the one you selected so it should be safe to go ahead, right? But wait! Before you go any further, you need to establish who owns the intellectual property (including know-how, trade secrets and other non-patentable ideas). In fact, before meeting with any potential partners it would have been safer to define clearly what IP you are bringing into the project ( “background IP” in legalese) to avoid any ambiguity. Your partner will also want to clearly identify what they are bringing into the project. Make sure you do this before you start talking about your big idea!

Once the background IP of each party is spelled out, you then need to agree on who owns the IP “jointly created” during the project. Even if you are paying for all the development you won’t necessarily own the rights to the IP unless it is agreed upon upfront. You should also agree who will prosecute patentable inventions (filing, examination, maintenance and other fees), who will be allowed to license the patents when issued, who will get royalties, who will decide the inventorship, etc.

There’s a lot to think about but take the time to document things before the project gets underway. Once the inevitable project speed bumps occur (delays, technical problems, cost overruns, personality conflicts and so on) the tensions in the partnership make IP discussions a lot more difficult. And as the prospects for financial success of the project become clearer, the stakes get higher. The last thing you want is to have your product launch stalled by expensive legal proceedings to sort our IP ownership!

You wouldn’t get married without having an honest discussion about where you want to live, how many children you’d like and how the family finances will be handled – a joint venture project should be no different!

Tags: background IP, joint venture, jointly created IP, Natalie Giroux, partnerships, stratford managers
Posted in Intellectual Property, Product Management, Project Management | Comments Off

The Joy of Cooking . . . Your IP Portfolio

Sunday, January 30th, 2011

If you work for an innovation-based company, your company likely has a portfolio of one or more patent families consisting of applications filed in one or more countries. As the portfolio grows you must adopt the right approaches to “cook” it to perfection. Just as different cuts of meat are cooked differently to obtain the best flavor and tenderness, each application in your IP portfolio should be treated individually to achieve the company’s overall IP objective.

One recipe is to “slow cook” an application… in this case you wait until near the 3-month deadline to answer an office action. You might even consider paying the late fees to further delay the expense of writing and filing the response. Be aware that this strategy will also delay the issuance of the patent, possibly by many years. This might makes sense if you have sibling applications (from the same family) being prosecuted on the fast track (see below) in another country like the US. The results of the US prosecution once completed, can be used to speed up the other applications in the family.

The other recipe is to “microwave” the application. In this case, you answer each office action as soon as it is received. In the US, if you respond to a final office action within 2 months, the examiner is also required to respond within 2 months, saving a considerable amount of time in the prosecution cycle! There are other programs available to speed up the examination process, such as the green program (which applies to inventions related to green energy and environmentally sensitive products) or the Patent Prosecution Highway (PPH).

Another very effective way to accelerate prosecution is to discuss an office action in person with the examiner. It is now possible for patent lawyers or patent agents to book face-to-face interviews with the patent examiner in Washington, to discuss his findings and explain differences between the application and the cited art. This process can significantly reduce the churn of office actions required to obtain a patent, shortening the prosecution time and lowering costs. Inventors may also be allowed, in some cases, to participate in the interview to provide their expert opinion on the differences between their invention and the cited art.

The “slow cooker” and the “microwave” approaches are at the extremes of the spectrum. Remember that each application should be treated individually to decide on the best prosecution strategy. For a larger portfolio, organize it like a recipe book – by dividing it into several categories and selecting the right strategy depending on the category. Happy cooking!

Tags: IP portfolio, Natalie Giroux, office action, patent applicaton, patent prosecution, stratford managers
Posted in Innovation, Intellectual Property | Comments Off

Does Your Company’s Hierarchy Stifle Innovative Thinking?

Sunday, December 5th, 2010

“The best way to have a good idea is to have a lot of ideas.” – Dr. Linus Pauling

In most innovation-based companies, the CTO, architects or senior designers are relied upon for the key innovations driving the business. Because of their experience and positions, innovative thinking and problem-solving are expected from these employees.

Unfortunately younger, lower-ranked (but no less creative) employees, including the most recent hires, are often afraid to speak up about their own innovative ideas. To encourage more widespread innovation, these individuals must also see that their ideas are welcomed even if they are not immediately applicable or implementable.

One way to make the work environment more conducive to innovation from all employees is to hold regular brainstorming sessions. Open the floor to all staff for solutions to problems or ideas to improve existing products. It can be serious work, but have some fun with it!

Another good way to incite more employees to think outside the box is to award an “innovation prize” on a regular basis for the best new idea. The prize can be as simple as a plaque that moves around the office and can also be accompanied by a nominal gift (e.g. gift card). Again successful ideas need not imply something patentable, just some new thinking that advances your company in some way. Recognition by peers and management is an important motivator, particularly for new staff members trying to make a name for themselves.

To encourage the expression of innovative thinking, some companies have implemented anonymous internal invention disclosure processes for patentable subject matter. Employees can submit invention disclosures through an internal web site or through a colleague that is not involved in patent selection. Invention disclosures are periodically judged strictly on their value without consideration for the rank or position of the inventor. If the invention is deemed implementable or patentable, then anonymity is lifted so the employee can benefit from having originated the idea.

However you do it, imagine how successful your company could be if, rather than relying on tired solutions from the same old soldiers, every employee was encouraged, inspired and rewarded to think creatively to solve problems.

Tags: brainstorming, Innovation, inventions, Natalie Giroux, stratford managers
Posted in Human Resources, Innovation, Intellectual Property, Management | Comments Off

Keeping your Innovation-Based Company Innovative

Saturday, October 16th, 2010

Your company was probably created and funded because there was an innovative technology or idea that led to the development of a unique product or service that satisfies your target market hopefully better than your competition.

Once its first product reaches the market, a company frequently enters a mode of feature enhancements, customer support and quality improvement. For small to medium size firms, these activities usually consume the attention of the entire R&D and product management team and that of the CTO. There is so much to do in order to meet customer expectations leaving little time to continue to innovate.

Beware! It was Andy Grove, the CEO of Intel who said, “Only the paranoid survive”. You need a healthy dose of paranoia that your competitors will continue to innovate and find the next gem that will transform your market landscape, overcome your strengths and surpass you.

If time is a problem, holding monthly lunch & brainstorming sessions with your team is a great way to find new areas to innovate. Invite all levels of the company including new hires. They often have a different perspective on things, but may not feel comfortable speaking out just yet.

Remember, innovation is not necessarily something that requires a patent. It could be a more efficient way of testing, a cheaper way to design or a more efficient code implementation. It could even be a better way to serve your customers.

Boards of directors of innovation-based companies should set innovation targets on a quarterly basis, similar to revenue targets, which will positively influence the company to maintain a culture of innovation.

A true innovation-based company innovates continuously. It does not simply accept status-quo or wait until a good idea presents itself.

Tags: Innovation, Natalie Giroux, patents, stratford managers
Posted in Competition, Governance, Intellectual Property, Management, Product Management | Comments Off

Be In The Know Using Patent Databases

Sunday, August 29th, 2010

He who knows when he can fight and when he cannot, will be victorious – Sun Tzu

Patent databases are excellent free sources of information on whether there are existing technologies related to your new product plans. As you initiate the design phase of a project, researching these databases can provide very useful data points. Patent databases offer huge insight into existing technologies and also provide essential information on who owns a technology and who the major players are in a particular field.

There are many reasons you should systematically use patent databases as a source of technical information:

Gain competitive intelligence – Although the patents are published 18 months after their initial filing, the technologies and innovations that your competitors cover in patent submissions provide very useful insights into their R&D direction and the possible content of upcoming product releases. Maintaining a patent landscape on each of your key competitors and possible partners can help your business development activities by providing intelligence on their plans.
Ensure freedom to operate – Searching patent databases also provides a good assessment of your freedom to operate by ensuring that existing patents or published applications do not already cover the key differentiators in your products. Some proof of freedom to operate is generally a requirement during due diligence performed by investors or potential acquirers. If there is doubt over the ability to operate freely with the current product design there are some options:
- Change the design to get around the patent. Note that it is much easier to alter the design at the conception phase than when you are into high volume sales!
- Purchase the patent to have exclusive rights
- Negotiate a license or cross-license
Monitor the activity in your field – By maintaining a patent landscape of your key technologies, you can identify new applications that could interfere with your own pending application and file oppositions or re-examination requests. This process can prevent the granting of invalid patents that could later haunt you.
Find technologies and solutions – patent database searches can reveal improved solutions for your technical problems and thus reduce development times. For example, there is a wealth of patented innovations created by universities, which are the fruit of in-depth focused research, available to license, often at low cost.
Assess patentability of your ideas – often it is tempting to file for patent protection without properly determining whether there is any prior art. Would you not prefer to know the chances of obtaining a patent before committing to the long term cost of drafting and prosecuting the application?

It is true that the first search may be a daunting and time consuming task because of the amount of information that will be revealed. But by selecting the right filters, and carefully organizing and parsing the information, subsequent quarterly updates will become a simple task that will yield significant rewards in competitive intelligence and improvements to your products.

Tags: competitive intelligence, freedome to operate, Intellectual Property, licensing, Natalie Giroux, patent databases, patent landscape, patents, prior art, stratford managers
Posted in Competition, Intellectual Property, Product Management | Comments Off

To Know Or Not To Know?

Saturday, July 31st, 2010

If you know the enemy and know yourself you need not fear the results of a hundred battles – Sun Tzu

When you buy a property or a car, you usually invest the time and effort to verify the ownership prior to closing the transaction. However, some companies invest large sums of money to develop a new product without determining whether the underlying technology already exists and is owned by someone else.

There is a school of thought, based on old case law, that searching patent databases can lead to willful infringement liability. Therefore some companies avoid performing any research on these databases. However, recent case law (MIT vs Seagate) requires that the accuser shows definite proof that the defendant has willfully infringed their patent, not merely innuendo based on the active searching of patent databases.

Furthermore, the USA Patent Reform Act (2007), which is at its final approval stages in the Congress, will require that the accuser formally notifies an infringer and gives the company time to respond. Only if the infringer continues to practice the invention and is found to actually infringe the patent for which it was notified, can it be held liable for willful infringement.

There is a wealth of information in patent databases that can be used to understand new technologies and solutions, competitive positioning and industry trends. More importantly, searching patent databases can prevent incurring costly patent filing expenses, can significantly improve the chance of obtaining a valid issued patent and will reduce the cost of the examination process.

So, when it comes to your intellectual property, it is good to know!

I will cover some other good reasons to search patent databases in a future post . . .

Tags: infringement, patent, patent database, patent filing, patent infringement
Posted in Intellectual Property | Comments Off

Does Size Really Matter?

Monday, June 14th, 2010

What counts is not necessarily the size of the dog in the fight; it’s the size of the fight in the dog – Dwight D. Eisenhower

There is a common perception that a bigger patent portfolio is better than a smaller one. In fact, this is often not the case.

Many licensing battles start by comparing the height of the pile of patents (Microsoft and Alcatel have more than 5,000 and 6,000 issued patents respectively!). For smaller companies, this game will never be won simply because of the cost of developing and maintaining a large patent portfolio. However, smaller companies can succeed in defending their rights using a single very strong patent even against large multinationals (e.g. i4i vs. Microsoft).

What is key in the development of a patent portfolio is to cover what you don’t want your competition to do, and not necessarily to cover in detail how your product is implemented. In many cases using trade secrets is a much more efficient means to stand out from the competition. Regardless of the size of the portfolio, each patent needs to be written carefully and the claims have to be rock solid.

Inventors should be involved at all stages of prosecution to ensure that the required changes to the claims of the inventions do not detract from the initial intent. As the portfolio grows, it sometimes becomes difficult to maintain quality, so the company needs to rely on a good infrastructure to manage the process.

When it comes to patents, remember, what really matters is quality not quantity!

Tags: licensing, Natalie Giroux, patent claims, patent portfolio, patents, trade secrets
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Turning University Research Into Riches

Monday, May 17th, 2010

This post is an excerpt from an article published May 17, 2010 in the Ottawa Business Journal.

Every year, billions of dollars are spent in this country on university based R&D. How do we get more societal value from this investment? We must continue to support academic freedom but we also have to do a better job of achieving commercial benefits. Here are some things to consider.

Timeframes
Most inventions take a surprisingly long time to get broadly deployed. For example, many of the core technologies differentiating the iPhone were originally invented in the 1980s. The time from discovery to commercial success is frequently measured in decades. So, we shouldn’t demand commercial output today from the dollars we’ve just invested (which we tend to do). We should instead measure the commercial success of university research relative to the funds we invested twenty-five or so years ago.

People
One of the valuable outputs of university research activity is the highly qualified people who are trained in the process. While many remain in university to continue their work and teach the next generation, most of these highly qualified individuals find their way into industry. It isn’t easy to measure the value that these people bring to our economy but there is no doubt that this is one of the significant benefits we get from funding university research.

Intellectual Property
One barrier to commercialization of research is the varied intellectual property (IP) policies among universities. Most claim some right to all inventions made at the institution. Yet most Canadian university Industry Liaison Offices (ILOs) don’t actually make any money. The model isn’t working.

It sounds radical, but why not allow the inventor to own the IP outright? This has been shown to accelerate commercialization. It benefits Canada through the jobs and taxes generated. The university also benefits indirectly from the bounty of these successful ventures. Think about how the University of Waterloo (one of the few Canadian universities that have adopted this enlightened approach to IP) benefits from RIM, Open Text, DALSA and others.

Cultures
To successfully commercialize university research, we must bridge the worlds of academia and industry through closer interaction. Recently, one of Canada’s leading research funders, NSERC, instituted a program that funds small industry-university collaboration projects with a view to closing the divide. This is especially valuable to innovative small and medium companies that don’t have the infrastructure to support formal university partnerships. Programs like this reduce the cultural barriers to successful commercialization.

Customers
Most business people would agree that studying the marketplace is essential before launching a new product. Of course, at the earliest stages of university-based discovery research, there actually is no market. As we get closer to the coal face of commercialization, rather than just pushing a new technology out the door, we need to study the market and listen to potential customers. Closer interaction with industry at this stage of research would help tremendously. So too would closer ties with business schools in the same universities.

We should be proud that Canada is among the world’s leaders in per capita investments in scientific research. Without impinging on academic freedom or constraining discovery-based research, we can take actions to ensure the fruits of this investment have a bigger impact on our economy.

Tags: commercialization, ILO, Intellectual Property, jim roche, NSERC, obj, Ottawa Business Journal, research, University of Waterloo, university R&D
Posted in Intellectual Property, Policy | Comments Off

Harvest The Full Potential of Your Intellectual Property

Wednesday, April 28th, 2010

Spring has come early this year to everybody’s excitement. We are all eager to work on our gardens so we can enjoy their beauty during the summer. Whether you are creating a new landscaping project from scratch or upgrading an older backyard, you need a good plan. It is exactly the same thing with your company’s intellectual property (IP) portfolio!

Even if you currently have no patents but have some unique technology, it is a good idea to map out your business direction and what your competition is doing so you can identify the key areas that require IP protection. Don’t just think short term; also speculate on the different long term directions your company could take and how these could influence your IP protection. This approach could save you a lot of money by avoiding unnecessary filings while ensuring that you protect yourself in key areas.

Mind mapping tools (such as the MindMap software from MindJet) are excellent ways to provide a visual representation of your IP landscape in collaboration with your technical team.

Remember, the most beautiful gardens don’t necessarily have the most flowers. They are the ones that were planned carefully from the beginning, thinking about the long term growth of each plant, their ideal location and how they interact with each other and the environment.

To harvest the full potential of your IP investment, you have to plan early and maintain the plan in synch with your business strategies and long term objectives.

Tags: gardening, Intellectual Property, mind map, Natalie Giroux, patent, patent landscape, spring
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Mining The Intellectual Property Buried in Your Company

Tuesday, April 13th, 2010

Innovation is what distinguishes between a leader and a follower – Steve Jobs

Innovation is what differentiates your company from your competitors. But do you and your employee know how innovative your company truly is? Are you fostering an innovation-minded employee base? When was the last time an employee came forward with innovative solutions?

Innovation can be in products, features and services but also in creating a better way to build the product or deliver it. If your employees do not proactively come forward with their innovative solutions, it could be because they don’t know how to recognize them as such. Worse still, perhaps they don’t naturally look beyond existing approaches to make things better, simpler and more efficient.

“Invention mining” sessions are an excellent way to promote innovative thinking. You should perform quarterly invention mining sessions with different groups of employees; not only the designers, but those testing, manufacturing and delivering the product. These brainstorming sessions are very useful to extract and document the innovation underlying your product offering.

Don’t just look at what has been implemented or designed. Also consider other potential applications for a feature or how something could be done differently if an alternate underlying technology were available. Often, we think that innovation needs to be complicated. In fact the best ideas are generally the simplest! As long as it is novel and non-obvious to someone skilled in the art, it should be treated as an innovation.

As they identify innovation, employees will start to understand the value of innovating and will take pride in finding better solutions. If you reward them by celebrating innovation milestones (the allowance of a patent for example) you boost their morale and encourage further innovation. Not only will you be able to protect some of these innovations but you will also end up with better products or services!

Inventions should be carefully documented and a decision should be made as to the best way to protect them. Remember that trade secrets are a viable and cost-effective alternative to patents as long as they can be effectively protected, since reverse engineering is legal.

You should also maintain an innovation “landscape” which shows where your solution (product or services) is innovative and exactly what is protected. Keep these ideas well organized and documented; they are very valuable during due diligence.

By fostering an innovation-minded culture, you will quickly see the benefits in your product offerings and your success in the market. Imagine the wealth of innovation that could be driving your company to the next level of success!

Tags: Innovation, Intellectual Property, Natalie Giroux, patents, stratford managers, trade secrets
Posted in Intellectual Property | 2 Comments »