A true originalthe first practical guide to patents written specifically for corporate scientists, engineers, and product developers
Patents and Strategic Inventing spells out exactly what a typical corporate inventor needs to know about patents and patent strategy, as well as how these topics can be used to guide the creation of new products. It explains in clear, easy-to-understand language how to secure patents that deliver the most possible value to the organization and build legal protections into properties from the outset.
Nicholas Nissing was an inventor at Procter & Gamble, founded the consulting firm Luminosity LLC, which focused on new product development and patent strategy for large corporations, and is currently the Biotech Competitive Strategy Lead at the Monsanto Company and an adjunct professor at Washington University.
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About the Author
Nicholas Nissing has a substantial background in the corporate patent strategy field. Currently, he is the Biotech Competitive Strategy Lead at the Monsanto Company, an adjunct professor at Washington University, and a registered patent agent.
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Patents and Strategic Inventing
The Corporate Inventor's Guide to Creating Sustainable Competitive Advantage
By NICHOLAS J. NISSING
The McGraw-Hill Companies, Inc.Copyright © 2013Nicholas J. Nissing
All rights reserved.
Intellectual Property: The Real Estate of Your Mind
One of the most confusing aspects of patents and intellectual property is the terminology. This is one area in which attorneys really do have a language of their own, which can make it difficult for those who aren't legal specialists to understand the issues. One goal of this book is to introduce you to the words and phrases that you'll need to understand in order to recognize opportunities and issues related to patents and inventing.
The phrase intellectual property refers to a group of legally defined categories of things that would be difficult to own in the traditional sense of ownership. In particular, you can think of intellectual property (IP) as defining the boundaries of the real estate created in people's minds. For example, if you have a great idea that you created and developed using your intellect, the boundaries of what you own (your intellectual property) are defined in a manner similar to the way in which the boundaries of a piece of physical property are defined.
For a section of land, the boundaries are defined as geographic locations using an agreed-upon system, perhaps using latitude and longitude coordinates. Once the edges of a property have been defined, a deed is written to register the ownership of the property. The deed contains the name of the owner, when he took possession of the property, and where the boundaries are located. If there is a dispute over the location of one of the edges of the property, a surveyor is called in to locate the boundaries according to the specifications described in the deed. Your neighbor may claim to own part of your backyard, but the boundaries defined in the legal document determine who really owns that piece of land.
This is a reasonable analogy to how intellectual property works, but with one big exception: intellectual property usually deals with things that are hard to define in a meaningful way using purely physical limitations. For example, the supply of intellectual property is not limited. Your neighborhood has only a certain amount of space that can be divided among the residents. On the other hand, a song or invention can be duplicated many times without running into any physical limitations. Nonetheless, the creator of the intellectual property invested significant resources—money, time, and creativity—in the development of this intellectual property. To encourage such endeavors, the creators of intellectual property are granted limited ownership rights to their creations.
The founders of the United States included these concepts in the constitution, Article 1, Section 8, where they describe basic powers of the government:
The Congress shall have Power To lay and collect Taxes, Duties, Imposts and Excises, to pay the Debts and provide for the common Defence and general Welfare of the United States; but all Duties, Imposts and Excises shall be uniform throughout the United States;
To borrow Money on the credit of the United States;
To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes;
To establish an uniform Rule of Naturalization, and uniform Laws on the subject of Bankruptcies throughout the United States;
To coin Money, regulate the Value thereof, and of foreign Coin, and fix the Standard of Weights and Measures;
To provide for the Punishment of counterfeiting the Securities and current Coin of the United States;
To establish Post Offices and post Roads;
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries....
While our primary interest is the form of intellectual property involving inventions (i.e., patents), there are several other categories with which you should be familiar: copyrights, trademarks, and trade secrets. Even within the category of patents, there are several distinctly different types of intellectual property. Note that this book focuses on intellectual property issues from a U.S. perspective. While these general categories are relatively common, IP laws in other countries differ significantly.
This category describes works with a creative or artistic element when they are fixed in a tangible form. Copyright can be used to protect original works, including literary, dramatic, or musical compositions; computer software; architecture; and just about anything else that you could consider an artistic work. Copyright does not protect the facts or ideas contained within the work, but only the work itself. In other words, the form of the work defines the boundaries of what the creator owns. For example, if you create a painting of the Golden Gate Bridge, you own that specific painting—not all paintings, nor even all paintings of the Golden Gate Bridge. Generally, copyright is intended to prevent copying (surprise!), so it would prevent someone from copying your painting without your permission. These days, copyright is extremely important in electronic works like software, digital images, music, and movies that can be easily copied and distributed over the Internet. Works subject to copyright are protected as soon as they are created—they can be registered with the federal government to help substantiate ownership, but this is not required.
The term of a copyright can be tough to figure out because the law has changed over the years, and when the work was created will affect the length of the copyright. The creator of the work can also affect the length of the copyright. For example, for works created after January 1, 1978, copyright usually lasts for the life of the author plus 70 years. However, the copyright on an anonymous work lasts for 95 years from its publication or 120 years from its creation, whichever comes first.
Interestingly, at the time of this writing the government's copyright website includes "How do I protect my sighting of Elvis?" in the copyright FAQ (http://www.copyright.gov/help/faq/faq-protect.html#elvis). As the FAQ points out, you can protect only a photo of the event or some other fixed work based on the event.
This category describes words, phrases, symbols, or designs that identify a particular source of goods and services in commerce in order to distinguish them from similar products from a different manufacturer. For example, if you buy a soft drink, you'd like to be sure that you're buying an actual Coke made by the Coca-Cola Company, not an imitation made by a local start-up in the owner's garage. Because Coke is a valid trademark, no one else is allowed to use that name for a soft drink. In other words, trademarks are designed to prevent confusion in the marketplace by allowing a particular manufacturer or service provider to own distinctive names or symbols that people associate with its product. Trademarks can include more than just names and logos, though; they even include "trade dress," or a distinctive product or packaging appearance. As with copyrights, registering the mark with the federal government is not required. However, doing so strengthens your claim of ownership and will be a significant advantage if there should ever be a dispute over ownership or over other similar marks that competitors might use. Trademarks last as long as the mark is being used in commerce—if you stop using a mark for a significant period of time, you may lose your right to it.
This category of intellectual property describes information that is known to you or your company and has economic value but is not known by others. Trade secrets can include technical information like formulas or design specifications, but they can also include nontechnical information like customer lists or business plans. The key aspects of a trade secret are that it provides economic value and that it is in fact a secret. Consequently, not all secrets are trade secrets. For example, information about your health may be secret or otherwise "confidential" information, but it doesn't have economic value, so it isn't protected as a trade secret (it is protected by privacy and HIPAA laws, however). On the other hand, if you accidentally spill your marketing plans during an interview on TV, those plans are no longer secret, so they aren't protected. Unlike copyrights and patents, trade secrets can last forever—or at least as long as you can keep them secret. Any invention that you hope to get patented should generally be kept as a trade secret at least until the patent is filed (we'll talk more about this later).
This category of intellectual property is what people usually mean when they refer to patents. As mentioned earlier, there are other types of patents, so it's important to be aware of this distinction if there is ever any question as to the topic of interest. Utility patents are used to protect inventions for the inventor's exclusive use for a limited time. Specifically, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title" (35 U.S.C. 101). We'll spend plenty of time discussing this category in more detail later, so for now just think of these patents as protecting what you would typically call an invention in the common usage of the word.
Design patents can be used to protect the ornamental or aesthetic design of an otherwise functional item. For example, design patents can protect designs of bottles, containers, packaging, furniture, car parts, shoe soles, and even tire treads. The only thing protected by the design patent is the appearance of the device—not its material or function. That being said, there are usually opportunities to get both design patents and utility patents related to a new product. The design of computer icons and graphical user interfaces (GUIs) can also be protected using design patents.
There is a separate category for plant patents that can be used to protect new and unique varieties of plants. Plant patents are limited to new varieties that have been asexually reproduced (by grafting, for example). Sexually reproducing plants (i.e., in general, those that reproduce through seeds) can also be protected by "plant variety protection" (PVP) and standard utility patents.
INTELLECTUAL PROPERTY IN THE REAL WORLD
As you can see, there are many different concepts that are lumped into the basket of intellectual property. As mentioned earlier, they generally have in common an assignment of rights to the creator; the relative lack of physical limitations on copying, distribution, or disseminating; and the establishment of boundaries for what defines the property. Furthermore, it is important to recognize that several of these categories will often be used simultaneously to maximize the competitive advantage of a particular product in commerce.
Consider your mobile phone, for example. There are probably hundreds of utility patents on the technology employed in the device, additional design patents on the case and the user interface, trademarks on the brand of phone, and copyrights on the software. Even more intellectual property will be involved when you consider the packaging (potential trade dress, design, and utility patents), sales and marketing materials (trademarks and copyrights), and even the instructions and user's guide (trademarks and copyrights). While this book will focus on patents and related strategies, it is worthwhile to note that every product has multiple opportunities for intellectual property protection in many different categories. Furthermore, the intersection of these categories can often be an interesting area for establishing a competitive advantage. For example, can you use a design patent to protect against knockoff replacement parts for your technological invention? Could you use a copyrighted limerick as a device identifier to prevent competitive hardware from being recognized? Should your device have a peculiarly shaped plug instead of a more common rectangle to provide differentiation and potential design protection? Should you intentionally create inventions to maximize your patent protection? We'll talk more about these concepts in Part 3 of the book, when we discuss strategic inventing.
Some readers may be asking why the government should create new forms of ownership for things like intellectual property—things that aren't limited by physical exclusion like most other forms of property. The Constitution provides a straightforward answer: to promote the progress of science and useful arts. However, there continue to be differences of opinion on this issue. A discussion of these differences could easily take up the rest of this book, so I will offer only a few brief thoughts and leave the philosophical wrangling to others. Many of the most valuable aspects of our society couldn't be "owned" in any meaningful way without creating propertylike attributes by legal statute. The benefit of ownership is primarily the economic incentive provided by limited or controlled availability. Why should we provide an economic incentive to authors, inventors, and purveyors of goods? Time, effort, and resources are required to create these contributions, and some degree of ownership is rightfully ascribed to those who have invested in their creation. If something isn't really an improvement, as is often highlighted by fanciful or pointless patents, for example, then who cares? What is owned is of no value. On the other hand, if it is a valuable improvement, shouldn't we encourage such developments?
In short, a bargain is struck between society and the creator/owner so that the owner enjoys some form of exclusivity in exchange for contributing to the general knowledge and information available to society—that is, in order to "increase the store of public knowledge." Many people argue against patent rights, citing drugs as an example. If there were no patent rights, drugs would be cheaper, they say. And they are most likely correct—existing drugs would get cheaper. On the other hand, companies that are doing research into new medicines would make less profit or even go out of business. With little incentive for investing in costly research, there would be fewer new drugs in the future.
What You Need to Know About Patentability and Inventorship
Our friends and colleagues in the legal profession have many wonderful talents and contribute immensely to our discussion of patents. Unfortunately, simple language and ease of understanding are not hallmarks of legal discussions. Many peculiar words are used when writing patents. It's even acceptable to make up new words or assign new meanings to words that are in common use. Many new inventors are discouraged by these complications—such as when their attorney tells them their idea "isn't nonobvious enough." As it turns out, there are a few words and definitions that you do need to know, but not as many as you might think. Learning these words can greatly improve your ease of communication with your attorney and your overall effectiveness as an inventor. This is an area where the Pareto principle is definitely in play—most of the things you need to know can be enumerated with a short list of key terms.
The first of those words is patentability. This is a fancy way of describing the likelihood that a potential invention will actually be granted a patent. For example, a breakthrough new technology is more likely to be patentable than a minor variation. Also, an attorney might ask for a "patentability search" to determine how similar the potential invention is to what has been done before. When you ask about patentability, you're asking whether or not you can get a patent.
In order to determine whether or not your invention is patentable, your attorney will probably ask you about any specific embodiment of the invention that you have tested. An embodiment is a specific instance of a product or process. This is usually different from the scope of the entire invention, because the invention will usually cover many possible embodiments. Your invention may be any toothpaste that includes Component X, while an embodiment would be one specific toothpaste formula that contains Component X. Many different toothpaste formulas (specific embodiments) could be made that all fit within the definition of the invention.
While we often use the term invention loosely for the purpose of patentability, the invention is defined by the claims of the patent, a precise description in the form of a numbered list. In some ways, the claims are analogous to a mining claim, which specifically states the location and boundaries of the mine. Patent claims specifically define the boundaries of the invention. The claims can be found at the end of a patent or application and are always numbered, starting with Claim 1. We'll discuss claims in more detail in later chapters, but for now it's important to recognize that the invention is defined by how it is characterized in the claims of the patent.
Excerpted from Patents and Strategic Inventing by NICHOLAS J. NISSING. Copyright © 2013 by Nicholas J. Nissing. Excerpted by permission of The McGraw-Hill Companies, Inc..
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Table of Contents
Part 1 Key Concepts
Chapter 1 Intellectual Property: The Real Estate of Your Mind 3
Chapter 2 What You Need to Know About Patentability and Inventorship 9
Chapter 3 Claims and Your Freedom to Operate 21
Chapter 4 A Simplified View of the Patenting Process 29
Chapter 5 The Corporate Inventor's Role 41
Chapter 6 Practical Tools for Patent Searching Online 49
Chapter 7 The Joy of Reading Patents 57
Chapter 8 The Impact of the 2011 America Invents Act 67
Chapter 9 Working with your Attorney: Nine Steps to a Better Utility Patent Byron V. Olsen 73
Part 2 Patent Strategy
Chapter 10 Key Elements of a Patent Strategy 85
Chapter 11 Patent Landscapes: Dividing Up the Pie 95
Chapter 12 Visualizing Patent Space 109
Chapter 13 Not All Claims Are Created Equal 115
Chapter 14 Eight Portfolio Strategy Models 125
Chapter 15 Portfolio Building: A Business Perspective Dr. Elvir Causevic 135
Chapter 16 Enhancing Product Value Through Life-Cycle Management 145
Chapter 17 Intellectual Property as a Currency of Collaboration Mark B. Mondry 153
Part 3 Strategic Inventing
Chapter 18 The Cart or the Horse? An Introduction to Strategic Inventing 167
Chapter 19 Competitive Advantage and the Magic of Differentiation 177
Chapter 20 Intellectual Property and Disruptive Innovation: Strategies, Tactics, and Lessons from China Jeffrey D. Lindsay, PhD 183
Chapter 21 What Makes a Great Invention? 193
Chapter 22 Strategic Inventing Techniques 201
Chapter 23 Using TRIZ for Strategic Inventing 211
Chapter 24 Implementing a Patent Strategy at the Project Level 219