By Jackie Maguire, CEO, Coller IP Management and Louis Trichard, Patent Attorney, Coller IP Management
Inventions are the lifeblood of many communications and electronics companies. But if those ideas and products are not protected from theft, all that hard work and creativity has been in vain. Unfortunately too many organizations are failing to ensure that their intellectual property (IP) is secure. In addition, many businesses are not clear about how to value their IP, nor how to commercialise those designs and inventions.
IP is one part of a much larger entity known as intellectual capital which includes a number of aspects including workforce skills, business processes, customer and business relationships, branding, reputation and the know-how of employees. Ideas and inventions indeed are the lifeblood, but it is the wider intellectual capital that drives growth and sustainability – the elements are shown in the diagram below.
It is in the standards arena that many electronics companies may not realize how important their IP may be or how vulnerable they are without it. Standards are integral in allowing electronics companies to develop or make products that will work with each other and to the customer’s expectations. The strategy for these companies is to ensure their organisation’s technology is incorporated into the standard. For each standard or proposed standard, there are numerous standards meetings – often several per year. At these meetings, R&D employees present their recommendations as to how the standard should evolve. If they are fortunate, they will have included some if not all of their recommendation into the standard. These recommendations will, of course, relate to an organisation’s technology and to possible patentable inventions or patents.
Some companies have used standards to leverage their competitive advantage, for example, most large telcos, chipmakers, and consumer electronics manufacturers have developed very large patent portfolios based around the standards pertinent to their business. These patents can be used to prevent others from even making or selling a product compliant with these standards, unless they take out a license from the company holding the patent.
The larger consumer electronics manufacturers bypass this by cross-licensing portions of their patent portfolios with each other. This means they can continue to design and manufacture the latest phones, chips, and electronics without fear of infringement issues and expensive litigation from one to the other. Alternatively, companies or even the standardization bodies may form an alliance and pool their patents together into a “patent pool”, from which other companies can take out a general license to use technologies that are covered by the patents in the patent pool.
To build a patent portfolio that is worth cross-licensing or to contribute to a patent pool, it is necessary to have good patents/or good pending patent applications. This may seem obvious to some. But it is not as clear cut as it would appear. Understanding the fundamentals of patents is essential – the larger companies already do – but it is the small to medium sized enterprises that need to know as well, because not knowing will constrain their future growth.
Simply put, a patent is a “tool” defining an invention that gives its owner (e.g. inventor or assignee) exclusive rights for a limited period of time (usually 20 years) granted by a national government in exchange for making the invention available to the public. In most countries the patent gives its owner the right to stop others from making, using, selling, or importing the patented invention without permission.
But, first you need a patent. To get a patent, a patent application that describes and defines the scope of the invention needs to be filed at a patent office. Patent attorneys are specifically trained and have experience in drafting patent applications to satisfy the necessary requirements. The day the patent application is filed at the patent office is called the filing date and the limited 20 year patent term usually starts from this date.
The patent application is then examined by the patent office to determine whether it satisfies the myriad of requirements for patentability, the main requirements being that the invention must be new and inventive.
An invention is new if, at the filing date of the patent application, the invention had not previously been disclosed to the public. The various ways of disclosing an invention is by publication, oral disclosure, or using the invention in public such that an “unimaginative” expert can figure out how the invention works.
To decide if the invention is new, the patent office compares the invention with all disclosures prior to the filing date, these disclosures are known as the prior art. However, the patent office only looks at patents, patent applications, or journal articles published prior to the filing date.
Once an invention is considered to be new, it is examined to see if it is inventive. This is a difficult test because each invention has to be considered on its own merits. Generally, an invention is considered not inventive if the unimaginative expert would have found it obvious from, say, combining several published documents and using their common general knowledge prior to the filing date to figure out how the invention works. Patent case law suggests an expert needs to be unimaginative because using imagination to figure out how the invention works may indicate the invention is not obvious or is inventive.
During the examination, there are several rounds of review/discussion with the patent office. This can result in amending and narrowing the scope of the invention to ensure it is new and inventive over the prior art. Care must be taken during examination when amending the application because of the delicate balancing act between having a patented invention and having a commercially valuable patented invention. It is essential that you and your patent attorney communicate with each other to understand this balance in terms of your business goals, the prior art, and the requirements of patentability.
Once the patent office is satisfied that all requirements have been met they will grant a patent. If not, the application may be refused. Patent applications are refused because they are not new or not inventive. There are many reasons for this, e.g. the invention was just a minor obvious improvement, or the inventor (for example, R&D employees) prematurely disclosed the invention to the public, or someone else has discovered and implemented the invention independently before the application was filed.
Should R&D employees be more aware of what disclosing their recommendations at standards meetings means to their companies’ patent portfolio? Yes, they should.
Simply by disclosing their contributions in standards meetings, R&D employees are potentially making their company’s technology available to the public. From that point onwards, if a patent application has not been filed, then it may not be new or inventive, and it will become evermore difficult to get a commercially valuable patent for it.
We recommend prior to employees attending standards meetings – or publishing in journals or conference papers – that organizations take advice on precisely when they should patent their inventions and how they should go about it. Otherwise, they run the risk of giving away their ideas or inventions for free.
Although the concept of filing a patent before a meeting may sound simple, it is not necessarily so, especially in a large organization with a lot of employees. If the organization is active in standards meetings then it is essential for the organization’s IP manager to know the what, when, where, how, who, and why for any disclosure that the R&D department’s employees may make. They must be given a chance to determine if the disclosure is important to the business, and whether the disclosure should be patented. All IP managers must know what the overall corporate strategy is, what the product base is, and the strategic direction the company is headed, especially with the company’s technology in mind.
Once the IP manager has knowledge of all the facts, they will be in a better position to know when to file useful patent applications for building a good patent portfolio. Simply put, everyone in an organization needs to communicate, communicate, and communicate.
The large telcos have managed to get policies in place, but all too often, people will leave everything to the last minute, and there will be a very short time – one to two weeks or less – to decide whether to draft and file a patent application before the meeting date or disclosure. This short time is critical. Organisations need patent attorneys that can quickly get up to speed with the technology (ideas and concepts), “interrogate” employees to determine if there is an invention, make sure the invention is not too specific (i.e. it will be generalized), check what is being disclosed at the standards meeting, run a draft patent application by the employees to include any further developments, and file the patent application. This all needs to be done before each potential disclosure.
In the telecommunications/electronics industries it is important to find a patent attorney who has an excellent technical grounding in electronic engineering, computer science, and/or physics, who is not only able to understand a complex technical brief quickly, can draft a specification rapidly, but also is able to engage the inventor and draw out alternative embodiments or examples of the invention, and alternative ways of doing something, in order to fully claim the invention.
Protecting intellectual assets is essential. It need not be difficult or even expensive and can pay dividends. Making IP a boardroom issue and ensuring its importance is communicated throughout the organisation is a good point from which to start.