Friday, May 26, 2017

R&D Mining for Patentable Ideas

Remember the story about a drunkard searching for his keys under a streetlight, simply because that is where the light is?  Does this story have any parallels to your current efforts to increase your patent portfolio?
Termed the “streetlight effect”, the above-referenced story refers to a type of observational bias that occurs when something is being searched for only where it is easiest.  With expected continued growth in products related to outdoor activities, spurred in large part by an increase in health-conscious lifestyles and adventure tourism, it will continue to be important for companies looking to compete in the outdoor gear and apparel market to make the most of their research and development efforts.  Effectively mining research and development efforts may include rethinking strategy, and not only “looking where the light is”.
There are some simple strategies that can help to increase your effectiveness at mining your research and development efforts for concepts that can increase your intellectual property portfolio.  Most importantly, it is imperative that IP managers (which may include in-house counsel or technology transfer personnel), and the research and development team(s) are working together to effectively mine innovative ideas from research and development efforts.  In our experience, we have observed instances where invention ideas are not disclosed because people on the research and development side were not attuned to what types of inventions are patentable.  Other issues involve the research and development team avoiding the process of invention disclosure altogether because it is viewed as a distraction.
So what can be done to more effectively mine research and development efforts?
We recommend educating research and development teams of the significance of their work in terms of securing intellectual property.  This can involve seminars, meetings over lunch, etc.  The important thing is to emphasize the importance of establishing communication between the research and development teams and the intellectual property managers.  At such meetings, we recommend the intellectual property managers provide some level of training to the research and development teams, regarding how to recognize patentable inventions, as it may not always be obvious to someone working in research and development just what constitutes an inventive step.  Such meetings may further serve to educate research and development teams on what financial agreements are in place for inventors, and to provide information regarding ownership agreements, for example.
We thus believe that establishing a robust working relationship between a company’s research and development teams and intellectual property management teams is crucial to effectively mining research and development efforts for patentable ideas.  While we recommend some sort of formal meetings and training sessions, we further recommend that intellectual property managers regularly check in with research and development teams in a non-formal way, to encourage discussion and to foster innovation.
In a complementary approach, incentivizing the generation of patentable concepts may serve to focus research and developments in a way that is beneficial to everyone involved.  Examples can include offering bonuses, royalty revenue sharing, etc., for patentable ideas that result in a filed application to the USPTO.  Incentives can be additionally or alternatively offered responsive to a filed application being approved by the USPTO.  Other ideas include non-monetary incentives, including employee recognition awards, etc.
In conclusion, we encourage companies and entrepreneurs in the outdoor gear and apparel space to turn their costly research and development investments into lucrative intellectual property portfolios by bridging the gap between research and development teams and intellectual property managers.  By utilizing the strategies discussed in this article, our hope is that you can “shine light” on novel concepts that were previously in the dark.


Note that the views expressed herein do not represent the views of any law firm or client, and may not even represent the views of the author. This blog is NOT legal advice and is for informational purposes only. No attorney client relationship can be formed by reading this blog or using any of the information provided. The accuracy of the information provided has not been verified.