“Invention disclosures are the precursors to patents. They are to patent lawyers what deal flow is to investors.”
3. Harvest Your Innovation
There’s probably lots of innovation in your company, but unless you systematically identify and track it, there will be little opportunity to patent it.
The vehicle for identifying potentially patentable innovation is typically the “invention disclosure,” a formal submission by an inventor of an invention that may be suitable for patenting. Generating disclosures is referred to as “patent harvesting.”
Invention disclosures are to patent lawyers what deal flow is to investors. If an investor does not hear about a potential deal, she cannot invest in it. Similarly, if an invention is not at least submitted for consideration, it often will be put into the product with no opportunity for patenting and ultimately will enter the public domain.
Persuading inventors to divulge their ideas through invention disclosures is the cornerstone of a successful patent program. This, however, is easier said than done. Inventors are often too busy or lack sufficient motivation to bother with disclosures.
A good harvesting program is therefore ongoing, gently persistent, aligned with strategy, and respectful of inventors’ time.
We recommend the following guidelines for patent harvesting:
- Training. At the outset and on a periodic basis, inventors should be trained on the mechanics of invention disclosure and how to identify which of their innovations are candidates for patenting. Training should include tactics for preserving patent and trade secret rights when communicating with third parties.
- Ease of Use. We recommend a two-step invention disclosure process in which the first submission primarily consists of a short description of the problem solved by the invention and the key aspects of the inventive solution. We encourage inventors to provide documentation and presentations that they have already created relating to the invention in order to reduce the time it takes them to provide this description. The ease of completing this initial, short submission encourages widespread inventor participation. If a submission seems promising, the inventor can be asked to provide additional information. This two-step process enables inventors to submit their innovation ideas to the patent team without investing substantial time on disclosures that are never filed as patents, which is wasteful and discourages participation in the patent program.
- Harvesting Sessions. In our practice, we run department-wide harvesting sessions with a handful of engineers and product managers to review past, current, and future development efforts and product plans, and brainstorm to identify patent candidates. The sessions can include a 30-minute breakout to permit individuals to prepare short-form submissions (see above) on the spot. The key to a successful harvesting session is using a moderator (typically a patent professional) who understands the technology and the business (see Section 1 above) and thus can productively direct participants in ways that are aligned with the patent strategy. Alternatively, patent counsel can meet one-on-one with inventors to discuss recent inventions and assist the inventor in preparing promising disclosures.
- Manager Buy-in. Inventors will likely ignore the patent program if their immediate managers do not value it. To secure manager buy-in, companies should send a message from the executive team letting everyone know that patent harvesting is a priority. In larger organizations, invention disclosure targets can be used to encourage submission from each team that is expected to generate new innovations. The patent team should also meet with managers one-on-one or in small groups to explain the process, solicit their ideas, and hear their concerns.
- Establish Inventor Incentives. To encourage inventors to submit invention disclosures, many companies pay modest bonuses (e.g., $500–$1000) when applications are filed and/or patents issue. An inventor incentive program needs to be carefully designed, communicated, and executed to avoid strife over the payment of bonuses.
- Integration into Product Development Cycle. Most companies undertake product releases in defined cycles, which have a cadence and process unique to the organization. Patent harvesting should be integrated into these cycles. For example, harvesting sessions can be synchronized with team-wide meetings that are already scheduled as part of the development process. In any case, each cycle should include an initial patent kick-off meeting during which the product managers can explain the product roadmap and development priorities to the patent team, followed by a mid-cycle harvesting session which extracts invention disclosures as product plans crystalize. As launch approaches, the patent and development teams should have a final interaction to capture last-minute developments before they are released.
- Tracking of Inventions to Specific Products, Features, and Competitors. Although this information may not be immediately actionable, it will ultimately be useful in managing a growing portfolio. The invention disclosure is a good place to capture much of this data, which can then be compiled into a centralized spreadsheet or database.
- Attend to Ownership Issues. Many start-ups are dismayed to discover that the IP they have developed does not belong to them, a situation that arises, for example, when inventions are made in a university setting, using independent contractors, or in collaboration with business partners.
Invention disclosures should always be flagged for ownership issues when they emerge. The company should also implement appropriate employee-assignment-of-invention and independent contractor agreements. Companies should consistently use non-disclosure agreements when sharing proprietary information with third parties.