Monthly Archives: January 2011

Companies Adopting Open Innovation Must Incorporate Patent Information at the Front End

(Editorial note:  This is a repost from this blog over 2 years ago, but the content is more relevant than ever.  On January 20, 2010, I am participating in a Yet2.com webinar with Ben DuPont and Jason Lye where we will be sharing our thoughts about marketing technology to “non-traditional” technology buyers, many of whom come to the table because they are adopting Open Innovation into their product and technology development processes.  I thought this “classic” post would be a good overview for anyone of my viewpoint for those who find my blog as a result of this event.  For regular readers, well, I hope you enjoy this too.  I will post a link to the recorded webinar when it is available. )

Open Innvation is increasingly seen as the missing piece of product development at corporations worldwide

Open Innovation is unquestionably becoming a “hot” area of focus for U.S. companies, especially in the current economic climate in which businesses are more than ever focused on smarter ways of doing business. And, why wouldn’t Open Innovation be an intriguing business model when companies can fill their product and technology pipelines for significantly lower cost and with more variability of ideas than typically is possible from their own R&D infrastructures? As a result, more and more business leaders are today viewing Open Innovation as a necessary direction in which to move their company’s innovation efforts.

A fundamental premise of Open Innovation is that good ideas can come from anywhere, even when a company operates in a very specialized core business. Moreover, innovations that come from outside of one’s core business, such as in packaging or transportation, are better left to those who specialize in those areas. Perhaps more controversial is the assertion that by relying only on the ideas generated from within, an organization’s core business innovations can become self-limiting because the pool of knowledge and idea generation may become somewhat myopic. When properly deployed, Open Innovation methodologies not only can be the source of ideas generated outside of the organization, but can also serve as a catalyst for the existing R&D infrastructure to become more creative. In its best forms, Open Innovation becomes a source of new products and technology, as well as a means to spur the creativity of one’s own people.In seeking to capitalize on the promise of Open Innovation for modern business, many companies are developing internal expertise or engaging consultants to assist them in meeting their goals. These efforts are no doubt critical for Open Innovation success. However, I believe that a missing piece in today’s existing Open Innovation methodologies is actionable knowledge regarding how patent information and analysis can be used to improve and accelerate the quest for promising ideas developed outside of one’s organization. This belief emanates from my substantive client experience, as well as discussions with innovation professionals from many organizations.

In the aggregate, most innovation professionals conceptually understand that patent information should serve as a source of Open Innovation subject matter. Nonetheless, few of these professionals fully appreciate how patents can be used to improve the efficiencies and successes of innovation processes. Moreover, few patent professionals possess the business competency to translate their specialized patent legal knowledge into a form deployable in the innovation context. As such, a disconnect currently exists between patent information and Open Innovation methodologies. Failure of organizations to fully capitalize on the information available in patents necessarily results in substantial reductions in the payoff obtainable from the adoption of Open Innovation methodologies by a company.

Why do I believe patents are a critical piece to Open Innovation methodology? Put simply–patents can serve as a vertiable “shopping list” for a company seeking to identify innovations available for adoption from outside the organization. By its very nature, a patent sets forth the fundamental basis of the subject matter that the patentee wishes to exclusively own. If the patentee developed a product or technology and later decided not to introduce it into the market, then that subject matter could be essentially market ready (or nearly market ready) for a significantly less cost than to develop a similar technology from scratch within one’s own organization. Continue reading

Read This to Become a Better Patent Attorney or Agent (Crosspost from GameTime IP Blog)

(Editorial note:  My friend Patrick Anderson, proprietor of the great GameTime IP blog, recently met someone who wrote the Don’t File a Patent book.  As a patent attorney, Patrick was greatly affected by what inventor John Smith–yes, his real name–experienced in his journey in obtaining and enforcing his patent and trademark rights.  While most of us would probably not agree with Mr. Smith’s apparent blanket advice to inventors that a patent is never the right course to take, his negative viewpoint can be instructive to those of us who want to better understand our client’s objectives to create greater business value for them.  Very often the relationship between those who toil in the “foxholes” of the patent world do not stop and think about the expectations and desires of those for whom they are working so diligently.  For solo inventors and small companies, investment in patents could make them or break them, and I think those of us who work on behalf of these types of patentees must be as enthusiastic in understanding and meeting their expectations, as we are about taking their money.  As such, I thought Patrick’s overview of Mr. Smith’s book deserves as broad an audience possible because it can serve as an excellent reality check for patent attorneys and agents, as well as patent examiners.  Patrick’s post–re-printed with permission–follows below in its entirety.)

John Smith's experiences with the patent system can make us better patent attorneys and agents

So, awhile back I promised an update to my post about John Smith (who, incidentally, called me to confirm that John Smith is, in fact, his real name).  Good to meet you John. John runs the website Don’t File A Patent, and has published a book of the same name. I got my hands on a copy of the first edition, but John tells me the second edition will be available soon with more clear separation between the patent office experiences, and his advice for would-be inventor/entrepreneurs.  Regardless of which version you read, I can honestly say that this book should be required reading for anyone who works as a patent attorney.

I work with patent attorneys on a nearly daily basis, and every patent I analyze is, in part, a critique of the patent attorney responsible. There’s few things I enjoy more than reading a patent and trying to understand what it was that was so great and novel to justify its expense, and learning how the attorney and inventor chose to describe the invention. Although its been years since I’ve done any patent drafting myself, I never lose sight of the fact that behind every patent is an inventor or inventors. Even in a “corporate” application, inventors are a critical part of the process. Innovations come from real individuals, not the fictitious corporate “person.”

Taking human ingenuity and turning it into a real, physical embodiment is what the patent system is supposed to encourage. So when an inventor/entrepreneur writes an open letter to the whole world, saying “Don’t File A Patent,” I pay attention, and so should you. Unfortunately, many in my profession are likely to ignore John, dismissing him as a disgruntled inventor with an axe to grind. Perhaps he is, but the better question to ask is, is he entitled to be? John Smith is a person who clearly isn’t motivated by the US patent system. For John, the patent system has been a series of broken promises. This is not a post about defending or attacking the patent system. There’s enough of that going on, and I personally will return to that debate, probably in the near future. But not today. This post is about John, his experiences, and why patent attorneys should care. Continue reading

False Patent Marking Lawsuit Update: A Tale of Successful Defense Strategy

How a client prevailed in the first round of a false marking lawsuit

In November, 2010, I wrote a blog post where I talked about a client who was sued for false marking, even though they had months before the suit changed the packaging of their product.  We subsequently obtained a good result with our litigation strategy, and I think others may benefit from this experience.  Moreover, I think it is important for we lawyers to share strategies for the overall benefit of our respective clients.  This is not done enough:  we legal experts all-too-frequently provide sagely advice from the comfort of our own siloed client experiences.  For the past 3 years as a blogger, I have been working to build a more public dialogue on IP strategy, and did not want to let this opportunity go by to let others know of a successful strategy in dealing with a false marking litigation.  (I feel comfortable sharing my experiences with this litigation, which I think others can benefit from, because my relationship with this client is confidential.  I work for them as a consultant on various IP strategy and innovation management issues, and I have been helping out with this matter to my patent litigation background.)

As related in the November blog post, the client, a US-based manufacturer of technology products, was sued by West Coast patent firm that apparently has decided that being a false marking plaintiff was a more noble (or more lucrative?!) aspect of the legal profession than writing patents for clients.  (I say this because the “aggrieved” plaintiff in our false marking suit has filed many false marking cases, which makes one think the firm has more time to be a plaintiff these days, than to represent clients other than the members of the firm.)   This lawsuit was brought some time after the client had changed its packaging to remove the recently expired patent, the number of which had remained on the product through an oversight.

Upon being sued, we thought it prudent to immediately file a motion to dismiss the lawsuit based upon the recent Federal Circuit case that stated that intent needs to be shown in order for a plaintiff to prevail in a false marking suit.  Specifically, it was contended in the motion to dismiss that the plaintiff had not pleaded the facts now necessary to show the requisite intent to sustain the lawsuit past the filing stage. Given the fact that different courts require different levels of pleading in federal court filings requiring a showing of intent, we weren’t sure how this contention would be met by the judge.  But, this is an unsettled aspect of false marking litigation, and the Federal Circuit is expected to rule on this issue in coming months, so we thought it was worth a shot.

What we thought was a really good argument, at least when looking at the equitable aspects of the case, was the fact that the plaintiff sued my client in a distant location, but which was quite far from the base of operations of my client, which meant that almost all evidence and witnesses would be located far from the place where the lawsuit was filed.  Accordingly, in addition to the motion to dismiss, we filed a motion to transfer the case and argued all the facts that made it seem like it made more sense to hear the case closer to my client’s business operations.  It would, of course, be more convenient (and cheaper) for us to litigate this false marking case nearer to the client’s base of operations, but the underlying goal was to make it so the false marking plaintiff would have to spend his own money litigating the case because he would have to take discovery in a distant location. Continue reading

Success at Open Innovation Requires Finding the Right Partners: Here’s How to Improve Your Success Rates

Success in open innovation is a lot like the dating world.

With more companies building open innovation into their product development platforms, there would appear to be increasing opportunities for companies and independent IP owners to sell or license their technology.  In my many conversations with corporate innovation professionals, I find that that the desire to in-source externally developed products and technology may be strong, but few know how to go about finding and acquiring what their companies need.  As I have written about before, developing fruitful open innovation relationships is very much like dating:  you may want to do so, but unless you know where to show up, and how to initiate conversation, chances are you will remain single for a long time unless you engage a matchmaker.

Well, I guess you could be your own “matchmaker” and search for potential partners.  This is easier today than it used to be because many corporations have idea submission portals and a few, like General Mills and Clorox, are even publicizing their detailed needs to the public.  This is a lot like finding your own mate, however.  You may show up someone all dolled up, but if your ideal mate isn’t also at the same place with the same message at the same time, you likely are never going to meet.

In this regard, in the open innovation space, there is no central source that categorizes and indexes all of the sites, and a look today or next week may mean you miss the one time your perfect match is in the room.  If you are really not looking to enter into a partnership in the near future, then periodic review of these websites might be enough for you.  But, if this is the case, you and your company need to admit that you are not really interested in open innovation or technology licensing because you can’t succeed on such an ad hoc basis other than by sheer luck.  (Of course, there are many long term relationships that started with an unexpected meeting somewhere, I just don’t think you want to bet your business success on random events.)

It would be great if a large number of companies who were in the “open innovation scene” would publicize the fact to others who might be interested in meeting them.  Unfortunately for those seeking the perfect match for their open innovation efforts, there is not the equivalent to a Match.com dating site where everyone who is pitching technology can be reviewed by everyone who is catching outside technology on an ongoing basis even after the bars are closed.   But we are getting closer, as more and more resources become part of the open innovation marketplace.  In this regard, I am a big fan of companies like Yet2.com, NineSigma and Innocentive as places where those seeking technology can put forth their technology needs for the public to see.  Even more powerful is the fact that these companies can serve as the hub for a number of technology spokes.  In other words, companies like Yet2.com, NineSigma and Innocentive can not only operate as matchmakers for technology seekers and solution providers, they can also be means to accelerate innovation among a number of different parties who would otherwise not know about the other. Continue reading