4 Ways Your IP Counsel Can Help Identify & Capture Patentable Innovation
Feb 27th, 2023 by Thomas DeFelice | News |
If your IP asset portfolio is the most important value-driver for your innovation or technology company, then your research and development department and the work they do every day to move your IP-aligned business strategy forward is your company’s wellspring of growth. Ensuring your R&D team is equipped with the knowledge and resources they need to drive your innovation engine is of vital importance to your company’s current and future solvency.
Too often, however, R&D teams may not be fully aligned with their counterpart patent counsel. Valuable innovations may frequently slip through the cracks under the assumption that their ideas are too basic, too straightforward, or too easy to warrant legal protections like patents. Establishing a culture of IP awareness within your R&D department, and arming them with an organized set of protocols around the identification and capture of possible IP assets is among the most important operational structures you can establish.
To help you shore up the process your R&D team uses to net your company’s valuable IP, and to aid in the direction of their innovation work going forward, an experienced IP legal team is an indispensable resource to help optimize the growth of your portfolio. Following are four ways your IP counsel can leverage their expertise in the identification and capture of potentially valuable intellectual property.
Develop invention disclosure templates
An invention disclosure is a standardized document prepared by your inventors and developers to demonstrate the possible patentability of their invention. In addition to forming the basis for the potential patent application to be drafted by your patent counsel, a well-crafted invention disclosure will also provide the relevant information needed by department leads, legal, and C-level executives to determine if the investment into its further development and into a patent application is worthwhile.
Capturing patentable inventions as early as possible in the innovation pipeline is vital to the future protection of your company’s valuable intellectual property. Implementing standardized invention disclosure forms ensures your inventors remain IP aware even at the earliest stages in the development process.
Your IP legal counsel plays an integral role in drafting the invention disclosure templates your inventors will complete and submit. A properly designed invention disclosure will solicit a detailed description of the invention in terms of its composition, manufacturing requirements, and how it will be put to practical use, along with the data required to demonstrate the effectiveness of the invention. It will seek a detailed outline of research into comparable products and patents to demonstrate uniqueness and improvements to existing technology. Finally, it will make a case from a business and fiduciary standpoint for the further development and patenting of the invention.
Design and execute IP education curriculum for R&D teams
In order to support your inventors and other innovation stakeholders in their roles in realizing your IP-aligned business strategy, it’s important to promote an active culture of IP awareness throughout your enterprise. Your IP counsel can play a key role in the development and execution of ongoing professional development programs aimed at, among other important objectives, the identification and capture of patentable IP.
While implementing codified invention disclosure forms is an important step in netting asset-class innovation at its inception, those forms are only as good as the training behind them. From the perspective of your developers, work that will often appear to them as pro forma or otherwise basic may actually hold value as an IP asset if only it is recognized and documented as such. Therefore, it is vitally important to create a sustained curriculum that constantly encourages their awareness, reinforces the rubrics and processes around invention documentation, and helps to support the incentivization programs you put in place to motivate their important work.
Conduct invention mining sessions
If your R&D team is doing their due diligence in capturing their work with invention disclosures, then after a while those forms will begin to accumulate. While some of what they’ve recorded will ultimately enhance your company’s IP asset portfolio, not every potential invention will make it into your IP development pipeline. Your IP counsel can help you set up the protocols and procedures around choosing what innovations are worth the investment and what projects need to stay on the drawing board.
One effective way to make those decisions is to establish a regular cadence of invention mining sessions. Depending on the output of your R&D department, you can schedule monthly or quarterly meetings with representatives from your IP legal team, R&D management, and executive-level stakeholders to learn first-hand from the inventors what projects they’re working on to uncover potential patentable inventions that may have been overlooked. These sessions are also an opportunity to review the accumulated invention disclosures and make choices around what’s worth moving forward into the patent application process.
It is within meetings like these that the future vision of your IP portfolio and its potential monetized value comes into focus. Some inventions will be obvious candidates for further development, either as standalone products or as components for use in other products. Other inventions, however, will live their lives on paper and realize their value in the form of patent licenses or salable assets. Further, the outcomes of these sessions can help R&D leads in establishing a clear direction with which their team can move forward.
Finally, invention mining may reveal technology, like proprietary software or processes, that could be useful for the internal functioning of your company. An invention mining session can surface opportunities for development here as well, although the value of these trade secret assets may not be realized through the patent process, but rather in the efficiencies or other advantages they provide to the growth and operation of your business.
Engage in landscape and whitespace analysis to surface areas for development
The direction your R&D team takes is dictated not only by internal company objectives laid out in your IP-aligned business strategy, but also by the wider competitive landscape. Other market actors can and will influence your company’s innovation activity. Leveraging your IP legal team to use their specialized analytic tools and methodologies is an important factor in identifying favorable areas for future IP development.
Beyond identifying threats to the ownership rights of your IP, your IP counsel can use their specific expertise to perform regular landscape and whitespace analysis. These ongoing activities can help you recognize technology trends and other influential currents in your market space and pinpoint exploitable territory for your own development opportunities.
By giving your R&D team clear directives based on both internal mission objectives and external marketplace data, you can confidently steer the growth of your IP portfolio. With tools in place like codified invention disclosure forms, and consistent training around how to evaluate the patentability of their work, your IP counsel can help you establish and execute an effective series of processes and procedures to undergird the important work of developing your most valuable innovation assets.
This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.