Innovation professionals must work closely with patent lawyers to ensure desired ROI of their efforts is achieved
Recently, I have been spending considerable time working with innovation professionals to demonstrate the value-creation opportunities available by embracing IP strategy as an aspect of their processes, and why patent drafting should be an aspect of their roles and responsibilities. More specifically, my efforts have focused on why and how patents matter to the ROI of corporate innovation today. Most business people would likely acknowledge that patents are important to protect their products from competition, however, the vast majority of the innovation professionals whom I meet have no idea how critical patent strategy can be to the success of their business plans.
Modern innovation processes typically start with identification of a consumer need or the like. In so doing, the innovation team undertakes detailed research to draw dimension around a product that will solve this consumer need. This research will be directed toward identifying the multiple ways the consumer need can be addressed. For a number of reasons–some of which will be related to specific competencies of the company–only one of these ways will be selected as the go-to-market product strategy. By the time the product is fleshed out, these myriad alternative ways to solve the consumer need will be left by the wayside when the patent application is prepared. This means that the resulting patent intended to protect the innovative product from competitive threats will not successfully do so.
Let me be clear here: most patent attorneys competently work with their clients to obtain claims as broad as possible. This means that a patent application covering a product design will typically encompass a variety of different product designs. However, the broadening of the claimed product will center on the actual product design. This claim broadening exercise will almost always occur between the inventor (i.e., R & D personnel) and the patent attorney. The inevitable result of this siloed patent drafting process is that the detailed research conducted to identify and solve the consumer need is not considered in preparing the patent application. Continue reading →
Checklists can reveal whether a company's patent team is obtaining quality patents
My friend Mary Adams of the Smarter Companies blog posted a brief article about Atul Gawande’s recent book The Checklist Manifesto. I agree with Mary that checklists can be a powerful way to improve the work product quality of experts, and wanted to expand on her discussion as they relate to intellectual property, in particular patents. Also, I think that corporate managers who rely on the expertise of their company’s patent lawyers can gain insights into the quality of their team’s work product, even when they do not themselves seemingly hold the requisite skills to make such assessments just by starting a conversation about checklists.
MY CHECKLIST STORY I read Dr. Gawande’s original New Yorker article that formed the basis for the book at the same time I a good friend of mine–with whom I practiced law at a prestigious IP boutique–lost her corporate job in about December 2007. While there were many reasons why she was let go, the growing economic crisis and her high salary being major factors, my friend was open to the fact that the head of the patent department and she clashed repeatedly about about her view that the patent group needed to establish processes and procedures to ensure that the patent work product our group pushed out was not flawed. One way my friend suggested to do this was to have checklists, which she and I had used at the law firm where we had been trained. From the way we were trained, it seemed so obvious that the patent department should follow established procedures, but her boss disagreed vehemently and even seemed offended that she would suggest that he and his team could not do their jobs without checklists.
My friend’s boss proved the point made in Dr. Gawande’s writings that knowledge workers often think they are “too important” for something as mundane as checklists. To this end, the department head rejected my friend’s suggestion, saying “it is the attorneys’ responsibility to make sure they are doing their jobs right.” This was magical thinking: without proper training and/or proper procedural safeguards, no attorney can do his or her job correctly. Speaking for my friend, she certainly possessed a high level of training after working for many years at a prestigious law firm, and yet she knew with virtual certainty that mistakes were being made by her and her support staff on a regular basis. Put simply, there is far too much minutiae in patent practice for anyone to keep up with in the absence of a checklist. And, since my friend’s lawyer colleagues possessed much less training than she did, one can come to their own conclusions about whether mistakes were made throughout the department. Continue reading →