5 Ways To Improve The Quality Of Invention Disclosures

Getting good quality invention disclosures is a challenge if your inventors don’t engage with the innovation capture process. As an innovation manager, you need to fill the innovation funnel with potentially patentable ideas. So, what do you do?

Let’s explore what makes a good quality invention disclosure and how you can get enough of those! 

Good Quality Invention Disclosure:

A good quality invention disclosure captures the novelty, advantages, and utility of the invention. It has to be explained well enough such that those who approve patent filings can understand the invention and how it is strategic to the enterprise. To put it simply, an ideal invention disclosure clearly and precisely describes:

  • The problem that the idea solves
  • How the idea solves the problem
  • How the invention operates
  • The enhanced features in comparison to existing alternatives

How to Make Sure You Get Quality Invention Disclosures?

Here are five ways to improve the quality of the invention disclosures at your organization:

  1. Inventor-focused education 
  2. Walk it through – contextualization 
  3. Timely assistance
  4. Example invention disclosures
  5. Two-way communication between the inventor(s) and innovation manager

#1. Training And Education

It takes training to obtain good quality invention disclosures. Education should be inventor-focused. Explain the patent program and the invention disclosure form to your inventors. Provide insight into how the patent process works. Such an exercise increases engagement. 

Conduct the training at regular intervals including at new employee orientation to keep everyone updated with the patent policy of the organization. Create guidelines for filling the invention disclosure form to demystify what is needed.

A good quality invention disclosure requires a summary of the invention while highlighting its unique features. Also, encourage the inventors to attach detailed documents and drawings to provide an excellent description. Graphic representation leads to better understanding. It should quickly identify the problem, solution, and enhanced features compared to the conventional solutions. The inventors need to explain how the invention works and the value of pursuing a patent.

#2. Walk It Through

Contextualization is key. Apart from training and educating the inventors on filling the invention disclosure forms, you need to explain why it is essential. The inventors need to understand that the invention disclosure is part of a larger process crucial to the success of the enterprise.

Good quality invention disclosures help to:

  • Explain the new innovation
  • Simplify the evaluation process of patentability of the invention
  • Emphasize the chances at successful commercialization
  • Speed up the process by including all essential information

When the inventors understand the motivation behind good quality disclosures, they will be keener to write them better.  The better the innovation disclosure, the more likely that their idea is approved for patenting.

#3. Timely Assistance

Ensuring quick assistance when there is any confusion will speed capture by innovators. Often the inventors struggle with completing invention disclosures as they are not used to framing their contribution in the way. Make sure the inventors know where to seek help when they need it. Your organization can either appoint in-house personnel or outsource the task to IP professionals such as the patent attorney who drafts your patents. Establishing a good working relationship between the inventor and patent attorney will give the inventors insight into the essentials requirements for the invention capture.

#4. Examples

Provide the inventors and R&D staff with sample invention disclosures, where patents have been obtained successfully. If the corresponding product  is well known in the enterprise, that always helps.  Keep the invention disclosure form brief and straightforward, capturing only the necessary information. Allow them to include detailed documentation for the invention and drawings separately. At Triangle IP, we have created a simple, engaging, and customizable invention disclosure form (IDF), which is downloadable in both excel and word formats. Long and complex IDFs often discourage the inventors from filing invention disclosures. A well-written sample invention disclosure can be the yardstick for future disclosures to ensure high quality. 

#5. Two Way Communication

Try to understand the reasons behind low-quality invention disclosures in your enterprise. Address the issues of the inventors to tailor the process to how they are accustomed to doing things. Keep the channel of communication open between inventors and innovation managers with transparency in the process. It allows them to understand each other’s perspectives and how innovation progresses through the process. There has to be clarity about the expectations from the inventors with visibility as their ideas mature into patents. The innovation managers should also be aware of the enablers and blockers of invention disclosure to capture more innovation. The invention disclosure process has to be two-way communication.

Takeaway:

The better the invention disclosure, the easier it is for the innovation manager to push it through to a patent. The more information you can get into the process, the easier it is to evaluate and draft the patent application. The quality of the input data determines the quality of the output.

A good quality invention disclosure should:

  • Provide a solid background and characteristics of the invention 
  • Contain proper technical description, which is the heart of invention disclosure
  • Explain the key terms and jargon
  • Include a list of any known relevant prior art and how the invention is different
  • Be reviewer-friendly so the value to the enterprise is clear
  • Include diagrams or other pre-existing documentation

Find out ways to encourage more invention disclosures in the organization. Don’t miss out on patent protection due to a lack of invention disclosures or poorly filled disclosures.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

Top 5 IdeaScale Alternatives You Must Know in 2021

TOP IDEASCALE ALTERNATIVES

With more than 25,000 customers and 4.5 million users, IdeaScale has been the pioneer in innovation management. The numbers are a testament that it has been a market favorite for a good reason. However, it’s not one-size-fits-all because of various reasons. 

Are you looking for IdeaScale alternatives? You have reached the right place. We hope you’ll find one that suits you. What’s your reason for exploring other options?

  • Better customization for your business or enterprise
  • More features and flexibility
  • Affordable pricing
  • Better UI and UX 
  • Campaign focus
  • Strong workflow process
  • Ease of use
  • End-to-end tracking from ideas to patents

Listed below are some top IdeaScale alternatives we explored:

  1. Ideanote
  2. BrightIdea
  3. Planbox
  4. Idea Drop
  5. Viima

As a bonus we are going to introduce a new entrant, an innovation management tool designed specifically for patent mining.

Two cents about IdeaScale

(Source: IdeaScale)

IdeaScale licenses cloud-based innovation management software to its clients. Some of the key features of the software include

  • Crowdsourcing of ideas
  • Idea ranking through a voting system
  • Workflow management
  • Collaboration
  • Feedback management
  • Trend tracking 

    etc…..

Pricing is a significant factor in choosing the right innovation management tool for your company. Here’s what IdeaScale’s pricing and plans look like:

Pricing

IdeaScale offers subscriptions on a 2-year basis. They have four available plans with features that differ from one to the next. Plans range from $12,999 to $64,999. IdeaScale also charges a one-time setup fee for first-time users.

IdeaScale’s Standout Feature | Crowdsourcing

IdeaScale works on a crowdsourcing model by grouping problem-solvers under communities. Communities may be public or private, thereby helping with restricted access. Here is how the users in a community participate:

  • Launch campaigns to solve problems
  • Submit ideas to solve the problems
  • Vote and comment on ideas

IdeaScale also has a community named IdeaScale Crowd. It’s open for everyone, where anyone can interact with any idea. You can sponsor a campaign here to find a solution to your problems. More than 30,000 problem solvers worldwide are part of this community. 

Pros:

  • Suitable for large enterprises with employees located across different geographies
  • Vote based ranking to choose best ideas for implementation

Cons:

  • High pricing
  • Mobile app only for iOS

IdeaScale Alternative 1: Ideanote 

Source: IdeaNote

Overview

Ideanote is a cloud-based innovation management platform. It provides for the idea and innovation management in 4 different phases – 

  • Capture: This allows you to collect ideas from your employees and your customers. Sub-features include profiles, briefings, and templates
  • Collaborate: Share ideas with specific people or teams because two brains are better than one! Sub-features include phases, ideaBot, custom rating, and segmentation
  • Scale: Once you have a solid idea, the next stage allows you to invite more people to join your team as guest members. You can create a workspace, make teams, assign team managers, etc.
  • Measure: This stage gives you an accessible and actionable interface for your ideas, allowing you to become a smarter innovator. Sub-tools include outcomes, customized outcomes, data export, and insights. 

Source: IdeaNote

Ideanote has done an excellent job of incorporating all the features one would expect in an innovation management software. They do have a mobile-friendly version but not an app yet. 

While Ideanote does allow team member additions, we’d like to see it be a little easier to do so. 

What makes IdeaNote Different from IdeaScale?

AttributesIdeaScaleIdeaNote
SuitabilityMedium to large enterprisesSmall Businesses
Free trialYesYes
Initial setup costYesNo
Ease of UseDecentQuite easy
Training to use the toolNoYes
SupportYesRound the clock for new users, face-to-face assistance
Pricing PlansEngage – $12,999 for 2 years ~ $540 per month
Evolve – $21,999
Advance – $34,999
Transform – $64,999
Starter – $249 per monthBusiness – $649 per monthEnterprise – $2899 per month
Minimum Commitment2 years1 Month

Ideanote’s Standout Feature | MVP Test

Ideanote’s standout feature is the Minimal Viable Product (MVP) test. IdeaNote facilitates semi-surveys and feedback collection within a team or a small customer group. It’s essential to choose the right ideas to pursue in this fast-paced innovation atmosphere. Well-thought selection ensures effective resource utilization. 

Pros:

  • Intuitive interface and ease of use
  • Affordable pricing
  • Great customer support

Cons:

  • No provision to rank ideas
  • No mobile application 

IdeaScale Alternative 2: Brightidea 


Source: BrightIdea

BrightIdea’s IdeaBox is an employee-only innovation management software suitable for large enterprises. IdeaBox offers a collection of apps (shown below). Each app serves a specific function for various innovation stages. For instance:

  • OptimizeIf you want to improve a particular business area, you can invite ideas from employees around the same
  • Name – This one comes in handy if you are looking for names for a new product
  • HackBringing people together for a limited time to solve particular challenges. In concept, this is quite similar to online hackathons
  • Recognize It’s a great way to give shoutouts and increase employee engagement 

Source: Twitter

What Makes BrightIdea Different from IdeaScale?

Both of these tools are very competitive in terms of features and support. However, BightIdea offers a mobile application for iOS and Android users. IdeaScale doesn’t have a mobile application.

Source: iPhone AppStore

AttributesIdeaScaleBrightIdea
CustomizationCustomization of in-site features to change site behaviorCustom CSS to change the look and feel to match your brand
User InterfaceIntuitive and easy to use. Plus points for an infographic generatorSocial media-esque UI. Crowded because of too many apps, hence confusing
Idea pipelineFour stage pipeline – Idea Collection, Refinement, Review, ImplementationDrag and drop tools allow building pipelines to evaluate ideas
Mobile applicationYes – iOS onlyYes
PricingRanges from $12,999 to $64,999 for two yearsNot publicly disclosed

Brightidea’s Standout Feature | Large Scale Crowdsourcing & Hackathons

Large-scale crowdsourcing and hackathons make BrightIdea a standout. Have a problem and want more than the people in your employ to help you solve it? Sure! Use BrightIdea to launch a hackathon. 

What a great way to demonstrate to your workforce that you’re an innovation-driven enterprise! 

Pros:

  • Made for large enterprises, especially those with a global presence
  • Contests and hackathons open up a plethora of ideas
  • Cloud access, iOS, and Android apps
  • Increased employee engagement with mobile app

Cons:

  • Not particularly suited for small businesses and enterprises
  • Allows only one person in charge, which makes it not so conducive to enterprises that have multiple decision-makers

IdeaScale Alternative 3: Planbox 

Source: Planbox

Planbox is an AI-powered, exhaustive, and modular innovation management software. It has four modules:

  • Discovery central: Explore and discover the right problems and prioritize them to find innovative solutions
  • Innovation central: Manage the control innovation lifecycle – from challenge launch to building a business model canvas
  • Agile central: Manage agile work for projects with the ability to track deliverables, plan experiments, and develop a proof of concept
  • Portfolio central: Empower your teams by pitching out of the box reports of commercialized strategies

What Makes Planbox Different From IdeaScale?

Planbox’s Innovation Central module is akin to IdeaScale. While both take you through the innovation cycle, Planbox ranks slightly higher on the value addition it provides through external ideation and crowdsourcing. 

AttributesIdeaScalePlanbox
Visualization Built-in reporting as well as the ability to integrate web analytics. Data exports available tooEasily configurable reporting engine for creating effective visualization
Free trialYesNo
ScalabilityIt can handle large volumes of members as well as ideasResources available to scale with the growth of enterprise 
Ease of UseDecentGood. Allows for internal management of site
IntegrationAllows integration with Slack, Twitter, LinkedIn, Yammer, Intercom, Google Analytics, Social ShareAllows for integration with Zapier, Slack, Sharepoint, Teams, G Suite, Microsoft 365 and more
Idea EvaluationVoting system to rank ideasIdea Manager Evaluation and Task-driven Evaluation
PricingRanges from $12,999 to $64,999 for a 2-years period$6/user/month for up to 250 users

Planbox Pricing

Like BrightIdea, Planbox does not disclose its pricing publicly. You can get in touch with their support team to get a quote. 

Planbox’s Standout Feature | The AI Algorithm

Planbox pioneered AI-powered innovation management. The ethos of Planbox using AI is that it helps simplify innovation tasks and the innovation process. It makes them more efficient and provides better analysis. The result of this combination is more accurate predictions with less risky decision-making. 

Organizational resistance can prove to be a significant hurdle in innovation management. An AI algorithm helps overcome that hurdle by using improved processes to choose and implement more potent ideas. 

The risk of loss is another deterrent. With AI, the system can allow management to keep a record of innovation. The system can track and measure all factors that play a part in an idea’s success or failure. Analyzing and archiving these efforts’ results helps cultivate a culture of continuous improvement that drives long-term success.

Source: Planbox

Planbox’s AI-powered algorithms help search for related data from various trusted sources on your recording of an idea in the software. Those sources include Twitter, designated RSS feeds, USPTO and other patent databases, support tickets and emails (of your customers), and any other data source that you have access to.

Pros:

  • The modular structure covers the entire innovation cycle
  • The AI-powered algorithm provides for data gathering pertinent to each invention keyed in
  • PlanBox mobile application available for both iOS and Android
  • Highly customizable

Cons:

  • The reporting/analysis could be better
  • The administrator does not have complete control over the tool. There are times queries need to be routed through the help desk

IdeaScale Alternative 4: Idea Drop 

Source: Idea Drop

Idea Drop is suitable for large enterprises and businesses. With easy connectivity and the option to submit ideas anonymously, it helps collaborate on a large scale towards strategic business goals. 

It has a clear and well-organized dashboard and ranks quite highly on the ease of use scale. 

What Makes IdeaDrop Different from IdeaScale?

It is easier to customize as compared to IdeaScale. It provides a whole list of innovative features, some of which are currently lacking in IdeaScale. Features such as engagement monitoring, evaluation workflow, feedback management, gamification, trend tracking.

IdeaDrop is accessible on the web as well as on mobile with their iOS and Android applications.

Source: iPhone AppStore

IdeaDrop gives you complete access to the platform whether you are a user or an administrator. As a user, you can submit your ideas and engage with others. As an administrator, you have access to the analytics to give you a deeper understanding of each idea. It also sends real-time notifications and reports to keep all the stakeholders updated.

AttributesIdeaScalePlanbox
Collaboration FeaturesBesides community discussion, it goes a level beyond for collaboration by routing ideas to subject matter experts for thorough vetting@mentions, #hashtags, comments, link sharing, and real-time notifications
Duplication CheckNoYes, it flags similar ideas and suggests collaboration
Ease of UseDecentGood. Allows for internal management of the site
IntegrationAllows integration with Slack, Twitter, LinkedIn, Yammer, Intercom, Google Analytics, Social ShareAllows for integration with Yammer, SSO, Microsoft Teams, and Slack
CustomizationAllows for styling customization for branding purposeHighly customizable – workflow, idea evaluation metrics, and branding
PricingRanges from $12,999 to $64,999 for a 2-years periodDetails not publicly available

IdeaDrop’s Standout Feature | Intelligent Algorithms

IdeaDrop’s USP is its intelligent algorithms. There are 3 main algorithms that make it seamless. Those are:

  • Intelligent Duplicate Check: With intelligent pattern recognition technology, IdeaDrop automatically checks for duplication of ideas. If a similar idea is found, the tool recommends the user to collaborate over the existing idea instead.
  • Smart Search: Idea Drop’s intelligent search makes it very easy to search your Idea Drop database, including the content of supporting documents.


  • Idea Score: Once an idea is submitted to your organization’s IdeaDrop, an automated algorithm assigns it a score. It’s a real-time score depending on social interactions with the concept. The higher the social vote on the idea, the higher the score. 

Pros: 

  • Easy to use interface and UI
  • Intelligent algorithms optimize the ideation process
  • Real-time notifications increase engagement
  • Real-time analysis allows for better collaboration

Cons:

  • Notifications come through only if you follow a person
  • No auto-generation of monthly reports on innovations 
  • Additional consultation services are chargeable

IdeaScale Alternative 5: Viima 

Source: Viima

Viima is suitable for middle to large-scale organizations. It is an ideation and discussion platform, with four distinct phases within the software – 

  • Collect: This stage is for collecting ideas. The software then categorizes ideas into predefined buckets. There is also the option to create boards and give access to a selected group. 
  • Develop: You can create a process based on your business needs and methods. Features available include mentioning specific people and adding attachments to ideas. 
  • Prioritize: You can choose metrics to rams and prioritize ideas. These evaluations generate automated scoring. Visualization tools help in making informed decisions. 
  • Analyze: Analytics in the software show you how you can improve your process in real time. Fix bottlenecks and spot trends in data. 

Viima allows you to gather ideas from employees, customers, and other stakeholders.

What Makes Viima Different From IdeaScale?

AttributesIdeaScaleViima
SuitabilityLarge enterprisesScalable from small to large
Localized ServicesNo. Only available as a cloud serviceYes. Available as part of the Enterprise plan
Ease of Use and UIDecentColorful and engaging interface that is easy to use
IntegrationAllows integration with Slack, Twitter, LinkedIn, Yammer, Intercom, Google Analytics, Social ShareBuilt-in Single Sign On for Office365, Google for Business, and Microsoft AD
CustomizationCustom community styling to match the branding aspectsCustomizable – possible to create customized workflow
Mobile Application Yes, for iOS onlyYes, for iOS and Android
PricingRanges from $12,999 to $64,999 for a 2-years periodBasic Plan – Free – for up to 50 users
Premium – $5/user/month – for small organizationsUnlimited – $1799/month – for medium to large scale enterprises

Viima Pricing

Viima’s pricing follows per-user-based model. They offer a free plan too. Their basic plan offers a single board to discuss ideas with the bare minimum features. The per-user plan starts at $5 per month per user. It’s perfect for small organizations. 

For a large organization, it may make sense to purchase the unlimited plan at $1799 per month for unlimited users and access to all its features.

Viima’s Standout Feature | IP Whitelisting

Understanding the need for access to the software from anywhere, Viima has enhanced security with IP Whitelisting. This way, whether employees are in the office or outside, the company can create a list of IP addresses in a whitelist for secure access and privacy of the company’s potential Intellectual Property.

Pros:

  • Simple to set up and use, good UI
  • Great customer support
  • Affordable pricing 
  • Mobile app available on both iOS and Android
  • IP whitelisting feature for security

Cons:

  • Not very effective for decision making 
  • Not the best customization options 

Here is a quick summary of the tools we’ve discussed with their standout features:

Innovation Management ToolFree Trial/DemoMobile AppPricingStandout Feature
IdeaScaleYesNo$12,999 for 2 yearsCommunities
IdeanoteYesNo$249 per monthMVP test
BrightIdeaYesYesNot disclosedCrowdsourcing and Hackathons
PlanboxYesYesNot disclosedAI algorithm for data population
Idea DropYesYesNot disclosedIntelligent algorithm for duplicate check, smart search
ViimaYesYes$5 per user per monthIP Whitelisting

Triangle IP – An Idea Management Tool for Patent Mining

TIP by Triangle IP is an intuitive drag and drop tool to help you track the journey of ideas to patents. TIP’s inventor-friendly idea form helps you capture more innovation. Its collaboration feature brings together people from business, R&D as well as IP departments. This enables thorough vetting of ideas ensuring only the most promising ideas/inventions get patented. The TIP tool is constantly evolving. The team is looking to add more features to help users make better patenting decisions. Currently supported workflow in the software has four stages namely:

  1. Idea Capture: A dashboard where anyone from the enterprise can submit innovative ideas. TIP tools offer a very simple idea form for the same.
  1. Internal Vetting: Submitted ideas can be vetted internally to check for viability by different stakeholders. After thorough vetting the most potential ideas are pursued for patent protection.
  1. Patent Drafting: Ideas that are vetted and considered viable are moved to the patent drafting stage. The patent attorneys take it from here.
  1. Patent Filing: Once the application is filed with the patent office, the serial number and filing date are recorded here with a copy of the patent application.
  1. Portfolio Management: Coming soon! A stage that shall help you keep a track of your patents and patent applications. The analytics in this stage shall help you make better patenting decisions.

Triangle IP – A Quick Video Tour

What’s Unique about Triangle IP?

The TIP tool follows a minimalistic design approach. It is built for ease of use whether used by one person or an enterprise. 

Triangle IP specifically caters to 4 personas:

  • Individual inventors
  • Startups
  • Enterprises
  • Patent practitioners

TIP has a neat UI with simplified login through magic link. Its role based access feature allows for more control. Within the software you can score ideas, merge ideas as well as lock ideas post approval. There may soon be an automatic patentability score option available for evaluating ideas. TIP helps you manage the IP workflow from idea collection to portfolio management. TIP tool is free for all until its most comprehensive version is out

Here are a few key functionalities you would love about the tool. 

TriangleIP’s Standout Feature | Patent Democratization 

The TIP Tool is transparent and allows collaboration and in essence, democratizes the patent process. Generally, in most corporate structures, the handling of innovations and patents is limited to the top brass. The TIP Tool aims at making this a process that involves the whole enterprise. With patent attorneys being looped into the tool through the Patent Drafting, and Patent Filing stages, the attorney can be directly in touch with the innovator.  Hence, the possibility of filing more comprehensive patent applications is enhanced. 

Pros:

  • Intuitive and easy invention disclosure form 
  • Ease of collaboration results in thorough vetting of the ideas
  • Scoring of ideas helps in prioritizing ideas to be pursued for patenting
  • Ease of use with the drag and drop feature

Cons:

  • Patent analytics missing
  • No mobile app

The Final Word

We’ve given you a round up of the IdeaScale alternatives with all of their pros and cons. 

But the final word must only be yours. What suits your business is a personal choice – one that hopefully this post will help you make. While we have given you facts and figures, the best way to figure out what works for you is to give all these options a fair chance. 

Go ahead, try the free versions of these tools before you choose one to commit to. And while you’re at it, give the TriangleIP tool a try for an end-to-end customized solution to your innovation management needs. 

Do consider these 5 factors while you are evaluating any innovation management tools!

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.

Patent Strategies SMEs Can Learn From Large Companies

Patent Stratgies SMEs can learn from Large Companies

Patent strategies could be defined as establishing a plan of action to maximise the returns on IP investments. Let’s explore how SMEs can implement patent strategies used by large companies to make the most of their IP budgets!

Large companies and small and medium-sized enterprises (SMEs) undeniably operate with different available resources and business goals. Aside from basic differences in numbers of employees, SMEs typically focus on niche markets while large companies tend to offer a wider variety of products and services. Large companies can raise money by selling shares of stock while SMEs often seek financing from outside investors such as venture capital firms or pursue opportunities to be acquired by larger entities. 

One area where differences between SMEs and large companies is particularly salient is how these entities approach their patent portfolios. Some of those differences are driven by budgetary constraints, some are driven by availability of manpower, and some are driven by business goals. In some cases, however, SMEs simply have not had as much experience with patents as larger entities. SMEs are unaware of how to change their approach to patenting in ways that provide strategic business advantages.

What are some patent strategies that large companies employ that SMEs do not, and how can those strategies be adopted or adapted by SMEs?  

Patent Strategy #1 – Large Companies Employ Best Possible Legal Expertise

Not all patents are the same. In fact, many are not worth the paper they are printed on. That is because patents often issue with claims that are too narrow or with terms that are interpreted to mean something different than what was intended. 

The more elements that are included in a claim, the easier it is to distinguish the claim from what has come before and therefore establish patentability. That is why it is often relatively easy to obtain an issued patent with very narrow claims. The problem with such claims is that they are easy for competitors to get around. For example, a claim to an incandescent lightbulb with a carbon filament would not cover a competitor’s incandescent lightbulb with a tungsten filament. If the claim had been drafted instead to recite an incandescent lightbulb with a filament, this broader claim would better protect against commercially viable variations of the patented product. 

Sometimes a seemingly simple word choice is enough to render a patent completely worthless. In an infamous patent case involving baking dough, a patent was rendered useless because of the phrase “heat the dough to 450 degrees.” The phrase was literally interpreted to mean that the internal temperature of the dough had to reach 450 degrees, when what was intended was “heat the oven to 450 degrees.”    

In addition to general issues of claim interpretation, particular technology areas require specialized claim language and structure, and there are also many legal requirements that must be met for a patent to hold up in court. All of this adds up to the fact that patent law is a highly specialized area of law that requires a lot of training and skill. Large companies understand this and typically use established expert patent law firms or build their own in-house patent departments and budget for that expertise. In contrast, SMEs, due to their limited budgets, often try to cut corners by drafting patent applications themselves or seeking affordable (not necessarily expert) service provider, only to discover years down the road that a core part of their business is not adequately protected.

Patent Strategy #2 – Large Companies Look for Broader IP Protection for Key Products

Large companies with significant financial resources often pursue a strategy of procuring and maintaining a large quantity of patents. As an example, Samsung Electronics had 76,638 active US patent application families across all its subsidiaries in 2019

Large patent portfolios allow more varied levels of coverage for key products while also allowing large companies to pursue protection for products or aspects of their business of lesser importance but that still have value. Large companies use multiple patents to protect a broad class of products and services around an invention, with follow-on filings used to cover new developments as they arise. For instance, different patents may have broad vs. narrow claims, or claims directed to different aspects of a product or service such as component parts, software elements, electrical systems, methods of use, and manufacturing aspects. The cumulative effect of such an approach is to minimize the importance of any one patent to a company’s business goals.    

Another aspect of large patent portfolios that large companies leverage to their advantage is their ability to deter potential infringers and competitors from trying to compete in the marketplace. It is time intensive and expensive to analyze a patent and determine whether it is invalid or whether a proposed competing product would infringe. The more patents a company holds in a given area, the more resources others need to spend to determine if they have freedom to operate in that area. 

In contrast, SMEs have budget constraints that typically drive them to focus on a small number of core patents. For many SMEs, every patent matters, and a single patent can make or break the company. SMEs are often under a threat to be gobbled up by large companies in the absence of a strong defensive patent portfolio.

Patent Strategy #3 – Large Companies Do More Strategic Patent Planning Than SMEs

Decision makers at large companies know that not every product needs to be protected in every potential market. For example, if the market for a product is only in the US and Europe, it doesn’t make sense to apply a one-size-fits-all patent strategy that includes patent filings in Canada, Japan, and Australia. However, if it is anticipated that a market for the product will emerge down the road in one of those countries, then a patent filing is justified.  

Large companies tend to employ more strategic planning when it comes to mapping their patent strategies onto what is known or anticipated about markets for a product, where manufacturing plants are planned, and the location of potential partners/licensees or competitors. They typically develop a clear plan early on for which countries are most important for patent coverage for a given product, and also reassess those decisions over time. If market forces change over time, large companies identify these trends and adjust their patent strategy accordingly by abandoning applications or deciding not to pay patent maintenance fees in different countries.

SMEs may either seek too few countries for protection in an effort to save costs, or pursue applications in as many countries as possible in an effort to make their portfolio more attractive to potential investors or acquirers – neither of which aligns their patent approach with the true market for their product.   

Patent Strategy #4 – Large Companies Seek to Invalidate Competitors’ Patents More Than SMEs

Just because a patent is issued does not mean that it is valid and enforceable. Invalidity actions can be pursued either through litigation in court or via pre- or post-grant proceedings before the issuing patent office. For example, the US provides several avenues to challenge the validity of a patent after it has been granted, and almost 11,000 petitions to initiate such proceedings were filed in the USPTO between 2012 and 2019. Whether invalidity actions are decided by a US district court or in a proceeding before the USPTO, around 40-45% of all challenged US patents are determined to be invalid in whole or in part.

Large companies typically monitor and analyze their competitors’ patent portfolios on an ongoing basis. Such monitoring allows the opportunity to initiate offensive actions to invalidate patents of strategic business interest, but also provides additional benefits. Competitive patent monitoring can provide insight into competitors’ future product offerings and marketing strategies, allowing companies to modify their own market or product strategies in response. Tracking patent filings can also highlight untapped markets where a low number of patent applications have been filed and where a company can potentially gain a patent foothold or technological advantage.

SMEs often lack the resources or the sophistication to monitor and analyze their competitors’ patent portfolios on an ongoing basis. And hence it not in their capacity to initiate offensive actions to invalidate patents.

What Can SMEs Do Differently?

You Get what you Pay for

The US Supreme Court has long recognized that a patent application constitutes one of the most difficult legal instruments to draw with accuracy. SMEs can take big leaps based on the strength of its core patents, they should consider not to cut costs especially from the drafting budgets.  

SMEs should avoid basing their hiring of a patent attorney or agent solely on who provides the cheapest services. Of course, budget is a factor. But sacrificing top notch skill and experience for the lowest bidder may not be a great move.

Drafting Patent Applications

SMEs should also avoid trying to have the application written in whole or in part by a non-patent professional. SMEs often think that they can cut costs by having one of their scientists or engineers prepare the application, and that a patent attorney or agent can just edit it or add claims to it. This is dangerous – a patent application is not an academic manuscript or a summary of technical specifications. While a write-up from the inventors is very useful to a patent attorney or agent, as described above there are ways of drafting patent claims that can either provide broad scope or severely limit protection. In addition, there are legal requirements that must be met for the application as a whole – for example, claims are routinely invalidated on the basis that a particular element was not described adequately or at all in the supporting text (specification) of the patent.   

Provisional Patent Applications

Another danger area is improper use of provisional patent applications. Provisional patent applications have relaxed requirements regarding formatting, supporting documents, and claims compared to full patent applications, but allow applicants to establish a filing date so long as the full application is filed no more than a year later. Because they can be produced faster and cheaper than full applications, SMEs often file bare-bones provisional patent applications with the intention of fleshing out their description of the invention in the full application. This is dangerous because provisional patent applications are still held to the same standard as full patent applications when it comes to legal requirements for describing the invention completely and in a way that explains how to make and use the invention. Patent cases abound where claims are held to be not entitled to the filing date of their provisional patent applications because of inadequate disclosure, with consequences that often result in findings of invalidity.  

A Hybrid Approach for Quantity with Quality

SMEs obviously have budgetary constraints on the number of patent applications they can file and maintain. There are, however, some cost-conscious approaches they can pursue to expand their patent portfolios without sacrificing quality. 

Even with large companies, not every patent application is treated the same. Some are extremely high value and receive extra time and attention, while others are of lesser value and receive merely the resources needed to competently provide reasonable coverage. SMEs can follow suit on their own scales by prioritizing patent applications into first and second tier filings based on their strategic value. A second tier of applications can be pursued while controlling costs by narrowing the scope of the drafting (and limiting the number of countries in which applications are filed – more on that below.) 

Where available, SMEs should also explore their options when it comes to continuation applications. A continuation application enables an applicant to pursue additional claims based on an earlier-filed patent application, so long as that earlier application has not been issued or abandoned yet. The continuation application is afforded the same priority date as the earlier application. Because it is often easier to get narrow claims allowed compared to broader claims, SMEs should consider narrowing claims initially or in response to an examiner’s rejection. This will allow them to quickly obtain a first patent with narrow claims (e.g., a specific version of a product) while filing one or more continuation applications to obtain additional related patents with claims of varying scope (e.g., to a range of different versions of the product). 

Work Smarter, not Harder

In order to avoid pursuing patent applications in either too few or too many countries, SMEs should, ideally, clearly identify their markets when the patent application is initially being drafted and develop a country-by-country filing strategy accordingly. Of course, that is not always possible. When decisions on where to file need to be delayed, SMEs should take full advantage of the time allowed to them when filing an international patent application under the Patent Cooperation Treaty (PCT). SMEs can file a provisional patent application followed a year later by a PCT application, and then they do not have to decide upon (or pay for) related patent filings in individual countries until 30 months from the filing date of the provisional application. 

The provisional to PCT strategy described above assumes that SMEs only want to file in one of the 153 countries covered by the PCT. If a market falls outside of those countries, then related patent applications need to be filed directly in those non-PCT countries within a year of the provisional application filing date. This also highlights the importance of making these decisions as early as possible.  

Global Patent Portfolio Strategy

When determining what countries to file in, SMEs should consider the following questions with respect to current markets and anticipated markets in the future:

  • Where do I expect to sell/manufacture/distribute the product?
  • Where is patent protection available (e.g. software is not patentable in Europe, Russia, Argentina, or Brazil)? 
  • Which countries are competitors filing patent applications in?
  • Where do competitors want to sell/manufacture/distribute their product?
  • Where are your potential investors or acquirers doing business?

In addition, SMEs should review their patent portfolios every one to two years and/or any time there is a substantial change in business focus to make sure that patent filings still align with business goals. This review should focus not only on the relevance of geographic locations, but also to make sure that applications and claims are still relevant to the business. If either a location or the scope of an application or patent are no longer relevant, sell/license it or abandon it.  

Targeted Monitoring

Even if SMEs don’t have the resources to initiate invalidation actions against competitors, there is value in knowing what patents are issuing around your core product or technology. Many companies offer patent monitoring services through which an SME can be alerted whenever a new patent issues or patent application publishes meeting search criteria of interest. 

Some of the key benefits of patent monitoring searches include:

  • Gaining insight into competitors’ product market strategies and the technology areas they are investing in.
  • Identify new market opportunities where patent applications directed to certain inventions have not been filed.
  • Reassess business goals if a market is “too crowded” (i.e., too many patent applications filed on similar inventions.) 
  • Where a competitor’s patent or patent application has claims that cover an SMEs product, the SME can develop a strategy to either defend against a patent infringement action or proactively initiate an invalidity challenge. 
  • Identify potential infringers of the SME’s patents, allowing for attempts to either pursue a license or initiate a patent infringement action. 

Conclusion

Let’s summarize how SMEs can implement the patent strategies outlined above. Large companies have in-house patent counsel responsible for the company’s patent portfolio, either performing the patent preparation and prosecution themselves or directing every move made by outside counsel. Such in-house counsel can oversee and carry out the types of strategic approaches described above. SMEs typically solely rely on their outside patent counsel to alert them regarding such issues.  Alternatively, SMEs should consider assigning someone in-house as a point person for patent management who is responsible for working with management and outside counsel to coordinate and implement various patent strategies. 

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Patent Monetization: Busting the Myth | Idea = Money

Patent Monetization Busting the Myths

People buy businesses. They don’t buy patents. The news will tell you about the one guy who won the lottery but never about the thousands who bought tickets for nothing. Hollywood will share with you success stories of idea men who sold an idea for millions. Not much is ever said of those whose ideas didn’t convert to big money. Naturally, the notion that most people have is that an idea means money. However, ideas backed by businesses means money. People buy businesses. Thus, patent monetization is synonymous with building a business around it.

Why Patent Monetization?

The most cited example of a company that has aced its patent monetization game is IBM. They make tremendous amounts of money by licensing their patents. In 2019 alone, IBM was estimated to have earned US$367 million in revenue on patent licensing activities. They can do this because they have amassed one of the largest patent portfolios that exist today.

The IBM example is tantalizing as a patent monetization example. But really, how many IBMs can there be? And how many years does it take for a company to get there? 

We know each granted patent costs somewhere between USD 50000 on average and annuities are a further significant expense. As a company, you may choose to monetize your patents by: 

  • Enforcement, or
  • Sale

Is Enforcement Really A Way to Go?

Licensing 

Patent licensing is a form of patent enforcement. Licensing feels like a threat to most companies. This puts companies on the defensive and the instinctive reaction is to countersue. More often than not the licensing approach leads to courts and litigation. Walking down this path means money spent in legal fees, and a possible settlement. And spending money becomes the antithesis to your primary goal of monetization. 

Patent Monetisation: Is Enforcement Really A Way To Go?

A lot of companies shy away from monetization by licensing because of the risk of a countersuit.

Reduce The Risk Of Countersuit While Licensing

Here are a few things you can do to reduce the risk of countersuit while licensing.

  • Use patents from nascent areas within your corporation
  • Roll patents into your Business Sale Package

Use Patents from Nascent Areas Within your Corporation

A nascent area is one where

  • You no longer practice
  • You no longer sell products, or
  • The division is shut down 

but you still have existing patents.

Licensing is a great approach to monetization in nascent areas because it nullifies your risk of litigation. With no products backing your patents, businesses are more likely to invest and less likely to sue. And even if there is a chance of a lawsuit, you have nothing to lose because you no longer sell the products in these areas.

Roll Patents Into Your Business Sale Package

Every business is built for sale; it depends on what’s the price the buyer is willing to pay. Whether your business is booming or you are looking to shut it, roll your patents into the business package when you sell it. This also holds true for a single factory or product line. This will boost the chances of the sale of your business and meet your goals of monetization. 

Investors find it easier to comprehend the purchase of a business that has a potential revenue stream. Patents in the business are a great lure for potential investors. 

Patent Monetization by Sale | Be Strategic, It’s Arduous

Sale is less threatening when compared to licensing a patent or patents. Enforcing a patent comes with its set of challenges – more often than not, lawsuits. Sale, on the other hand, is a clean cut that comes with no risk. 

But where does one sell a patent and for how much? Who buys them and what is its marketplace?

There’s good news and there’s bad news. Let’s give you the bad news first: 

There was a time, not too long ago that patent portfolios were bought and sold with 7 figure transactions. Those times have now changed. Today, these figures have dropped to 5 figure transactions, on a good day.

The good news is patents are for businesses. And people buy businesses. Patents can still be bought and sold today, just not how they used to be earlier. Today, patents and businesses are a package deal. And you can sell these anywhere you like, but the legal department is not the best place to go.

There are circumstances where you will be able to sell a patent without a business. However, these circumstances are rare. In 2012, Yahoo sued Facebook for infringing a bunch of their patents relating advertising, privacy, customization, messaging and social networking. Facebook countersued Yahoo with specific patents, most of which they acquired, almost overnight. It usually is only circumstances such as these where businesses are willing to buy just patents. And waiting for these chances to come by is like waiting for a month of Sundays. 

The best and probably the only effective way to monetize a patent is to build a business around it. When you are selling just a patent, you are selling a right around an idea for a business. People aren’t used to buying that. When you back your patent with a product and a business though, everything changes. 

Patents are easier to monetize when bundled with a business

Selling To A Business

As a thumb rule, unless circumstances are exceptional, selling a single patent is impossible. Patents are best sold as families. So, who do you approach when you are looking to sell a patent portfolio? It’s best to take a patent portfolio to a business development team in an organisation. Our advice would be to prefer the businessmen over the lawyers. Lawyers are wired to deflect risk. Businessmen, they enjoy risk and innovation. 

Patent Brokerage

There are a bunch of patent brokerage firms. These work through patent brokers who represent patent buyers and sellers by serving as intermediaries to facilitate patent sales. They help throughout the process of patent transactions including the initial identification of suitable patent assets to sell, selection of sellers, screening of patents and identification of important patents and claims.

However, the brokers do not show any interest in single patent deals. They prefer selling patent portfolios altogether so that they can make a decent amount of money in the brokerage.

Let’s Sum It Up

Patent monetization is a tantalizing prospect. Reading stories of companies that have made millions from patent sales is exciting, hopeful and tempting. But like most things, there’s a lot more to those big numbers than meets the eye. As someone who is looking to monetize their patents, it is important to be fully aware of the challenges that you may face. Here are some pointers and reminders for you.

  1. In the traditional sense, patent monetization requires you to have a large patent portfolio. This may take years to build and a considerable amount of resources to maintain. As a large company with resources, this may be an option. Be reminded though, that you are looking at a long timeline here. 
  2. You can choose to go down the enforcement route when monetizing. This means you can license your patents to businesses in the marketplace. Licensing can backfire with a countersuit as a consequence. Be mindful when going down this route. Choose strategically – patents from nascent areas or inactive areas in your business. 
  3. When looking to sell, remember – patents without businesses have little to no value. If you are looking to monetize your patents, build a business around them. You can choose to sell them at any stage this way. Either as a fledgling business or as a spin out. 
  4. The business development teams in organizations are your go-to people for sales. Avoid sales through the legal team because they will be more likely to avert risk rather than take it. 
  5. When looking to sell patents, look to sell in bulk. Sell your patents as a family. As a general rule, patents don’t sell in isolation. You can choose to make sales to business directly or through patent brokers or marketplaces. 

In summary, monetizing patents is not an easy task. There are costs involved through the process of monetization as well. However, if you have a good strategy in place, transactions can be very fruitful. Thumb rule: Selling patents with businesses will be a win-win situation for all concerned. 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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Innovation Management Software | Ideas To Patents

Designing A Winning Innovation Management System

A winning innovation management software for your journey from ideas to patents!

The 50 Most Innovative Companies Of 2020

As per a research conducted by BCG (Boston Consulting Group), listed below are 50 most innovative companies of 2020. 

50 Most Innovative Companies list

Do you aspire to see your company make it to this prestigious list of most innovative companies? 

One of the criteria for ranking the above listed companies was the innovation management systems used by these companies. What were these systems that set them apart? Let’s find out.

Designing A Winning Innovation System

As per the BCG report the leading innovators pay a lot of importance to following five things:

  • Talent
  • Ambition
  • Governance
  • Innovation Funnel management
  • Project management

Portfolio Mindset: 

Leaders pay close attention to the shape and quality of their innovation funnel—and the processes to manage it. 

Leaders tend to have broader funnels. This is to increase their capacity to generate more potentially valuable ideas. This also allows them to invest in their best ideas as scalable products or services. 

Innovation funnel management comes down to:

1. The quality of decision making in a few critical go or no-go decisions. 

2. The ability to take both a project and a portfolio perspective at the same time. 

Winners take better decisions by establishing a set of tools and criteria to make the right call. Additionally, leaders find the ideal balance between hands-off and hands-on involvement. They set the right incentives to encourage innovation. 

Also, leaders continually analyze to make sure that they learn from their mistakes. The best innovators don’t do this only for failed projects. They also review funding decisions that look like false positives or false negatives. This ensures better-quality decision making going forward.

From Ideas & Innovations To Patents

“Each production is an idea that grows and gathers other ideas until the final event (read patent). The management of this creative process is the challenge.” – Don Mischer 

Every project starts in someone’s mind before it begins a complex path. Most ideas do not survive the journey. They die because the person who thought of the idea fails to properly capture it. Without these ideas finding a place in a system to study, analyse and vet, they are mostly forgotten and ultimately shelved in a hidden recess of the mind of the thinker. Ideas have the potential to be your biggest assets. When an enterprise invests in human resources to find the best it is largely for their minds and their promising ideas. 

Source: giphy.com

With great ideas, comes great responsibility! 

The more the ideas, the more difficult they become to capture and catalog. With improper cataloging and idea storage systems, path altering ideas are sometimes lost at the bottom of the pile. If IP creation is a goal, these ingenious innovations need systematic management to convert them into IP. 

And what helps is a good innovation management software

In this article, we share with you

  • how to determine if your organization needs an innovation management software
  • the informal ways in which you can catalog your ideas with its pros and cons
  • why you should use an innovation capture program 
  • how your company and employees will benefit from well-cataloged ideas
  • how TIP Innovation Management Tool can help you take the first step towards winning innovation system

Do You Need An Innovation Management Software?

Here are two factors to consider before you decide to invest in an innovation management program:

1. The size and structure of your company

2. The inclination of your company towards innovation

If you are a small enterprise that is not innovation-driven, an informal system to catalog your ideas may work for you. Here are some ways to develop that system for your enterprise:

  • Capturing ideas on an idea capture form that is made available on your company’s intranet
  • Training programs conducted from time to time to explain the process
  • Creation of bonus programs to incentivize innovation
  • Tracking of ideas through a spreadsheet or database

If you are an innovation-driven enterprise, you may find the need for a more formal structure to capture ideas. Here are some markers to help you decide: 

  • Filing more than a few patents each year?
  • Is your company large? Is innovation happening in different areas?
  • Are you working towards strategic intellectual property creation?
  • Is it too difficult for one person to manage all these ideas?
  • Have you set monthly/quarterly/yearly goals for patent filings? Or do you wish to?

Why Use A Tool For Ideation Cataloging?

An innovation management tool records all your ideas in one place. Not only does this serve as a centralized repository for the company, but it also provides transparent access to all to spur complementary innovation.

 Source: giphy.com

A good tool is a companion through the entire innovation management process. We, the human race, are very visual. A platform that provides clearly viewable ideas, and allows one to quickly recognize the precise stage in the pipeline is a great tool. Not only does it encourage innovation in the organization, but it also provides an opportunity to transparently assess the idea from various perspectives including assessing the prospect for an issued patent, alignment with business strategy, feasibility, etc. 

Innovation Management Software | Internal Vetting

Innovation Management Software For Charting Growth Trends 

Also, with all ideas in one place, it is easier to strategize. Charting a course for your company and the direction you wish to grow it in becomes clearer. A good innovation management software will give you access to all your ideas at a glance. Now, instead of rummaging documents and notes, you have them all in one place. Whether you are a large company or a start-up looking to grow/build a patent portfolio, the right tool will empower that process. With all your ideas organized and transparently shared in a pipeline of stages, legal coordination and management are easy. 

How An Innovation Management Software Builds Workplace Idea Fertility

“Innovative enterprises often see their patentable ideas inadvertently ceded to the public domain unless there are business processes and capture systems in place.”Thomas Franklin, Founder @ Triangle IP.

Innovation quote by founder of Triangle IP - Thomas Franklin

Another advantage of using a tool is that it creates the right environment to promote innovation. Not only is ideation with a tool time-effective, it is also resource-effective. With all ideas being freely available, there will be less duplication of ideas and a faster timeline for development.  Also, this brings people from different parts of the company together to leverage each other’s innovation. Synergy happens between employees when working on similar ideas from different perspectives. This cross-pollination leads to more brilliance! Two heads are always better than one. 

Source: giphy.com

Ford launched a program within the company to encourage innovation a few years ago. In the words of the Ford Global Technologies chief executive Bill Coughlin, “We weren’t targeting just an increase in inventions, we were targeting an increase in Ford inventors. Once you start thinking like an inventor, you cannot turn that off. Problems become opportunities, and it’s a fun game that you can play in your mind on how to solve this in a new and different way.” In 2016, Ford employees submitted over 8,000 ideas for patents within the company. To deal with the numbers, Ford had to come up with an internal vetting and quality assurance process for which they set up a panel for internal review and even roped in external counsel. Without an internal review system, the innovation program would have been a complete failure

The Innovation Management Software from Triangle IP

The Triangle IP Innovation Capture Tool (“TIP Tool”) is an intuitive drag-and-drop tool to take control of your patent mining and capture process.

We believe that innovation needs management like any other company asset. Enterprises often overlook effective idea management. But the TIP Tool simplifies the process, as easy as A-B-C! The tool gives you the most straightforward single-page view into a patent capture program for your company – the complete innovation management pipeline. 

The TIP Tool has been developed with years of algorithm research directed by thought leaders having a half-century of experience in intellectual capital management. Four patents have already been awarded to Triangle IP on data science to provide clear analytics with many more in progress while using the same TIP Tool freely available to any enterprise.

https://youtu.be/7K4q8LP16Lo

Not only is this tool user friendly, but it also provides a four-stage pipeline with visual tracking of the mined ideas through to their filing as a patent:

Idea Capture / Mining

The Idea Capture Form is designed for the inventors, in particular. Intuitive and easy to fill, this form has fields ideal for those who come up with new ideas. The simple form is designed to capture your ideas while avoiding confusing questions and complexity. 

Once the IDF is filled in and saved, it displays a  summary of the idea, key contacts, and any attachments. A manager may be assigned to the idea who can help in reviewing and refining the idea to take it to the next stage. The tool also allows any inventor to edit or embellish the idea at any time by accessing the saved form.  Inventors will collaborate virtually to add sufficient detail to the IDF.

Like the innovation at your company, the TIP tool is constantly evolving too! We have three exciting new features to make idea logging easier and more fulfilling. The TIP tool also plans to provide the users the capability to customize its already-friendly IDF to add customized fields to support your internal process. And you don’t have to worry about remembering to save your additions to the form each time. The TIP tool does it for you. It even gives you the option to upload drafts and images separately for easy distinction and access. Want contributions to your ideas from someone specific in your organization? TIP tool plans to provide the capability to the users to add comments as ideas and notes within the form and also tag specific people within your organization for their inputs. 

Innovation Management Software | Idea Capture Form

You can download the Invention Disclosure Form below:

Download IDF in Word Format

Download IDF in Excel Format

Internal Vetting

Once ideas are captured using the IDF, they are selectively moved to the internal vetting stage. During this stage in the TIP Tool, these ideas become open to input from a patent committee or other decision makers. With persons from different parts of the organization viewing an idea, it becomes easy to vet the same from different perspectives. For example, the R&D team can suggest refinement over an idea, the finance team could give its perspective on how financially viable this idea could be for the company, the marketing team could study the demand for the potential product in the market.  This is the point at which the IP counsel or the legal team also steps in to give its inputs on whether the idea is a good candidate for patenting. Patentability searches at this stage will save resources for the company too. 

Patent Drafting

Once an idea is vetted to qualify for patent drafting, it is moved to the next phase. For a patent to be successful, it must have the idea fully captured in the application. For this, the input of the inventor is essential through the drafting process, or at the very least during the review of the draft. The TIP Tool provides for the details of the prosecutor assigned to draft a patent application for the idea. This allows for the prosecutor and the inventor to be connected through the process with all ideas including underlying ideas made available in one place through the tool. The TIP Tool allows exchanging drafts securely while avoiding email.

Patent Filing

Once the patent application has been drafted and approved, the TIP Tool even provides for a section that sets out all the patents that have been filed. It allows all interested parties to have access to the application after filing.

Patent Portfolio Management

The TIP tool also allows the company to manage its patent portfolio from within the tool. Details of filing dates, office actions, renewal dates etc. are all made available on the tool which will make it easy for the internal legal team to liaison with its external patent attorney. (This feature of the tool is currently a work-in-progress, stay tuned!)

Here is a video showing the complete workflow process:

https://youtu.be/x7uHHEJ7ihY

Additional Key Features Of The TIP Tool

Years of research and the best minds have created this tool to simplify and energize the innovation process in your organization. Here’s a quick look at some of the features that make this tool the best in the business:

  • It allows you to define user roles for the people in your organization and gives access to different areas of the tool based on the roles assigned.
  • It details the ideas that have been approved within the company in a separate space and even allows you to lock them for an additional layer of security.
  • If you think ideas, when merged, will make for stronger patents and/or better products, it allows you to create a filing with any number of ideas. Also, the same idea can be included in multiple filings.
  • All ideas can be scored on different parameters in the tool. Use these scores to prioritize and rank the patentability of each idea. 
  • This tool understands that passwords are hard to remember for SaaS tools. Use the magic link login which comes straight to your inbox, and don’t worry about having to remember the password again! 
  • If you think an idea doesn’t suit the market you are currently targeting or the needs of the company at the moment, or if the idea doesn’t score too highly, the tool allows you to archive it for later consideration.
  • The tool understands the importance of having a system of organization. So it provides you with the option to tag, group, and filter ideas.

Innovation Management Software | Key Features | TIP Tool by TriangleIP

Let’s Sum It Up

Economists estimate that innovation in its various forms accounts for 30 percent to 40 percent of the gains in growth and productivity by the American economy during the 20th century, more than any other factor. Moreover, in recent years, the pace of innovation and its impact have increased. The successful capture of innovations does not occur by chance; rather, it requires a well designed capture process. As evidenced earlier, innovation management is just as important if not more important than generation of new ideas.

With these fantastic features, the TIP Tool by Triangle IP is the best in the business. The TIP tool is available as a demo version that gives you some pre-populated data that helps you explore the tool and understand its features for a month. After the passage of 30 days, you can enjoy a completely free version of the TIP Tool for free by registering with your email address. 

So, what are you waiting for? Get on the TIP bandwagon and make innovation capture happen! 

If you like this article, join us where we share patent information that matters to you. Don’t worry, we only send emails that we feel are highly relevant for you. 🙂



Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.

How To Seek Investment Using Patents?

Seeking Investment using Patents Triangle IP

Seeking investment using patents? Is a patent enough?

Seeking Investment Using Patent, Look for Strategic Partner

Myth: Having a patent is enough to seek investment!

The Hard Truth: Sorry to break this to you but a patent alone cannot get you an investment. In the absence of a proven business, it does not make sense for the investor to risk his money.

When you seek investment the most common questions asked by a probable investor are:

  • What are your sales?
  • How much does it cost you to make that product?
  • What are your margins?
  • Is your product unique? Do you have a patent?
  • Why do you need the money?

The purpose of all these questions is to find out if their investment can earn them good returns or not.

If you have a revenue stream that can show sales, it’s really easy for investors to value a business. It’s just a function of some sort of multiple on earnings or some sort of anticipated growth in the market. Most investors are very well equipped to understand something like that.

But, when you don’t have a prototype, sales or anything like that and you simply have a patent seeking investment, it is a much more difficult task. Because a patent is only the right to exclude somebody from doing what’s covered in the patent. You have to convince somebody that doing it perhaps exclusively has value and because the patent has so much value that even licensing the patent shall fetch them a good amount of money.

Seeking Investment Using Patents | Look for Strategic Partner

Seeking Investment Using Patents | Look For A Strategic Partner

When you only have a patent, what you need is a strategic partner not an investor. Your strategic partner is a business which gets into an agreement with you where they are as much a partner to you as they are an investor. The usual investor is only interested in profits whereas a strategic partner will help manufacture products based on your patent.

Seeking Investment Using Patents | Look for Strategic Partner

Side Note | Investment Using Patents

In this article, we have only covered the strategic partnership for seeking investment using patents. There are other ways of monetizing a patent like selling the complete patent or mortgaging it with the bank etc. We shall be covering these and more such ways for seeking investments using patents in the series of articles about patent monetization. Shall you be interested in learning more about patent monetization, kindly fill the form below!

Steps To Find The Strategic Partner

  1. List down the companies that manufacture products in the space you have the patent in.
  2. Study these companies to find out:
    1. Which of these would be interested in having the next new feature in their product?
    2. Which of these companies is looking to differentiate itself from the competitors?
    3. Is there any company that is in the tight position that hasn’t had a good technology in a while?
    4. Which of these companies is an established player that always wants to stay on the top?
    5. There also is a possibility to find a supplier to the company that manufactures these products and might be interested in your idea.
  3. Select 2-3 companies from this list and propose the partnership to them to progress further.

Finding the information mentioned above is a difficult task and IP research firms shall be your best choice to help here.

IP Research Firm To Your Rescue

Curating the list of probable strategic partners shall require IP expertise. Best would be to hire an IP research firm

Here’s what IP firms shall do: 

  1. The IP research firm will try to understand your motivations behind creating the patent to familiarize themselves with your invention.
  2. The IP research firm shall then study the market players in the domain of your patent. By study we mean their product lines, patent portfolios, competitors, financial standing etc.
  3. Not just curating the list of strategic partners, the IP firm will be able to position your patent in such a way that prospective partners can identify its value. 

Impediment for Strategic Partner

“To invest into something that doesn’t exist is expensive.”

However, there is a way to justify this expense – ‘Exclusivity’.

Let’s take a look at the timeline below to understand this better.

Seeking Investment Using Patents | Offer Exclusivity To Strategic Partner

Once you get into a strategic partnership the partner shall help you with the development of the product. The average time for a patent to be developed into a product is around 18 months. That’s a conservative estimate. After the product is ready, the strategic partner should have unbridled access or exclusivity rights to sell the product for at least 2 years. Once the 2-year period is over, it is expected for the product to have broader demand and more competitors wanting a piece of it. 

After the period of exclusivity rights for the strategic partner is over, you can increase the exclusivity period by taking a fee. Or you can license the product and earn royalty. 

Reduce The Risk For The Strategic Partner

Having a patent is good, gradually you should progress on a path that minimizes the risk for probable partner or investor to venture in your idea. By progressing through each step from patent, to prototype, to beta-testing, to product, to sales you are minimizing the investment risk. Once you manage to get good sales, you shall need the investment to scale. And that shall be comparatively easier to get.

Conclusion:

If you have a patent and not a proven market for your product; seeking investment using patents becomes a herculean task. The best option is to look for a strategic partner. A partner who is in the same product line and can help you manufacture your product. At the same time, you need to convince that strategic partner that it shall also benefit hugely in this venture.

For finding and convincing a strategic partner, you shall need help from an IP research firm. The research firm shall create a report showing the unique value proposition of your patent. The firm shall also curate a list of probable strategic partners. You can select 2-3 from the list to work out the strategic partnership.  Offer exclusivity to convince for partnership.

While looking for a partner, keep progressing to minimize the investment risk; patent -> prototype -> beta-testing -> product-to-market -> sales.

With this we wish you all the very best to find the right partner!

Want to know more about IP Strategy?

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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6 Ways to Strengthen Your Patent Portfolio

6 Ways to Strengthen Your Patent Portfolio

The other day I was speaking to a portfolio manager at a large enterprise.  He was given a task to enhance the patent portfolio for the company. My first question to him was about the process of capturing ideas from inventors.

Me: “How do you capture the ideas and collaborate over the ideas to transform them into valuable IP?”

He: “We conduct certain brainstorming sessions, capture ideas in excel sheets and pursue as and when we feel a need for the same.”

In my experience of working for over 20 years with so many enterprises, the scenario is pretty much the same. Most enterprises use excel sheets, emails, docketing softwares (that’s like giving a factory when all that’s needed is a simple machine), or some other make-do softwares to capture ideas.

You Might Wonder What’s Wrong With Using Such Tools?

Well, in the absence of easy capturing and thorough vetting, a lot of things may happen which hurt the value of a patent portfolio.

  • Great ideas get lost while traveling amongst various stakeholders.
  • Weak ideas get pursued for filing a patent resulting in either a rejected patent or a low-value patent.
  • Filed/Granted patents are sometimes great in terms of innovation but do not have a market demand as the business team did not collaborate while persuasion.
  • Effort gets wasted on an idea which the company has already filed a patent on in the past by some other inventor.
  • Sometimes inventors get so busy with the progress of the invention that the idea gets completely missed out of the patenting process. Even worse, the product reaches the market without IP protection. And, competitors take full advantage of it.

Hence what’s needed is a defined process to capture ideas. A way to collaborate over ideas to conduct thorough internal vetting. A place where all the stakeholders from different arenas of a business and research can contribute. Thus making sure that only the finest ideas are pursued for filing patents. 

Strengthen Your Patent Portfolio Proactively

Strengthen Your Patent Portfolio Proactively

Besides this, a strong culture of innovation at the workplace and a time-to-time audit of the portfolio shall also be beneficial towards a valuable patent portfolio.

Here are 6 quick pointers that can help you strengthen your patent portfolio:

1./Effective Innovation Capturing

2. Thorough Vetting

3. Curating An Innovation Driven Culture

4. Getting Patent Experts Onboard

5. Pruning To Strengthen Your Patent Portfolio

6. Expediting Patenting Process

#1 Effective Innovation Capturing

It all starts with an idea. So, the inventor comes up with an idea. Maybe he shares the idea with you, maybe he does not. Maybe you review or maybe it gets slipped as you were too busy. And the inventor gets busy working on that idea totally forgetting about the protection it might need. Whether patent or trade secret or defensive publication. 

Now the product that gets created based on the inventor’s idea is revolutionary. And it reaches the public domain without any IP protection. It’s under the threat of fast followers. Companies out there who have resources and capital are always on a look for products which they can easily copy and sell for a lower cost. These guys also save on money that you spend on R&D and engineering of the product. Thus, grabbing the market share that your company deserved actually.

And the worst part is you cannot do anything about it. 

This necessitates to have a defined place to capture innovations and track their progress throughout the lifecycle.

Another thing that acts as a friction for inventors to disclose inventions and add them in the patent pipeline is: “long, non-intuitive invention disclosure forms with jargons that only attorneys understand”. At TriangleIP, we understand this friction and thus we have kept the idea capture form very simple in the TIP tool.  

An Easy Idea Form For Inventors | Strengthen Your Patent Portfolio

#2 Thorough Vetting

If you have a bunch of ideas coming in from different inventors; it’s very much possible that you might not have a budget to pursue them all for IP protection. So in order to choose which ideas to pursue, the ideas need to get evaluated from different aspects. You might wish to keep some ideas as trade secrets or give some to public domain with patent protection. Hence what’s needed here is a thorough vetting of ideas.

Thorough Internal vetting of Ideas | Strengthen Your Patent Portfolio

Innovation happens quite early in a process. Typically before you have any customer or market validation. Hence all that can be done is speculation on which ideas will generate revenue a few years down the line. It takes around 3-5 years to get patent protection for an invention.

However, one thing that helps you mitigate the risk and choose the best of ideas is to have it vetted by people from different streams; business, legal, engineering, strategy, etc.

Listed below are some important factors to consider to zero down on the ideas for patenting:

  • Strategic vision of the enterprise.
    • Alignment with a product line to have market dominance. 
      • Say there is a company that deals in smart refrigerators. It would want to have patents around advanced functions of refrigerator like: Ordering groceries based on the supplements about to finish in the refrigerator.
    • Market expansion across geographies.
    • Just for defensive purposes against probable lawsuits.
  • Relevance of technology to be patented in long term. Technologies go out of date as industries evolve. 
    • Example: Mobile phones have almost out-dated the landline phones in the last few years.  
  • Budget allocated towards IP.

#3 Curating An Innovation-Driven Work Culture.

“When failure is not an option, we can forget about creativity, learning and innovation. – Brene Brown”

Embracing failure is the key to have an innovation driven culture. Because the studies suggest that a significant percentage of innovations fail. The companies must have enough risk appetite (financially) to handle the failures. (Because somewhere there are chances of blockbuster success too).

And that’s not all, there are many other factors that can encourage or kill innovation culture at an enterprise.

The other day I was reading a book called “The Invincible Company” and in that, I came across a beautiful concept called “The Culture Map”. The culture map talked about the Enablers and Blockers of innovation at a company. It resonated really well with me. 

Innovation Culture Blockers:

  1. Lack of Innovation Strategy.
  2. General Fear of Failure.
  3. Bureaucracy slowing down innovation.
  4. Locked into Current Business Model.
  5. Lack of skills, knowledge and experience.

Innovation Culture Blockers | Strengthen Your Patent Portfolio

Innovation Culture Enablers

  1. Strategic guidance.
  2. Resource allocation.
  3. Innovation Tools.
  4. Legitimacy and Power.
  5. Skills development.

Innovation Culture Enablers | Strengthen Your Patent Portfolio

It would be beneficial to take a quick look inside your organization for these enablers and blockers. This shall further be helpful in creating an environment where innovation shall flourish for the organizational good.

#4 Getting Patent Experts Onboard:

Lack of expertise in drafting patents may result in rejection. Mentioned below are some of the top reasons for rejection of patent applications:

  • Improper and Insufficient description of the invention and how it works.
  • Lack of novelty.
  • Non-patentable subject matter; e.g. new use of a known substance.
  • Erroneous Writing: Issues with line numbers, reference numbers on drawings, or paragraph numbers.

If you don’t have in-house experts to write the patent, we suggest that you choose an IP firm that has the reputation and the experience to handle the end-to-end process. You need to have the right people on the job to draft the patent. Ensure that the one who is writing the patent has deep knowledge of the technology, has the right background, understands the fundamentals of a patent, and so on. 

#5 Pruning Patent Portfolio | Abandoning ‘Out-of-Date’ Patents

Let’s say you have a portfolio of many patents (50 or more), only a few of them would be worth a lot. The rest will guzzle your time, effort and money.

Maintenance fee alone can become a significant expense if there are many patents in a portfolio and for quite a long time. The snapshot below  shows the maintenance fee to be paid for patents at different time intervals.

Maintenance Fee USPTO| Patent Pruning | Strengthen Your Patent Portfolio | Abandoning Out-of-date Patents

The ability to know when to stop investing in bad IP assets is important to have a strong patent portfolio.

If you look carefully in your portfolio, you will find that there are patents that are areas in orphaned technology or where there is no commercial interest. Free up the budget allocated for it to work on an innovation that is more promising. A technology that was once highly used does not mean it is going to be relevant forever. Some of the patents might have run their utility. 

Let’s take a look at how IBM has pruned it’s patent portfolio over the last 2 decades. IBM has abandoned thousands of patents across T0, T1 and T2. This probably saved them millions of dollars and strengthened the patent portfolio.

IBM US Abandoned Patents by Pruning 1999-2020 | Strengthen Your Patent Portfolio

There can be many reasons for abandoning the patents:

We, at Triangle IP, are on the way to bring analytics to the TIP tool  that shall help the users identify hopelessly expensive cases.

  • Out-of-date technology as the industry evolved over the years.
  • Change in patent laws in different geographies.
  • No market presence, say you got patents in the UK but the business related to those patents never really took off in the UK. So, maintaining those patents does not make sense.

#6 Expediting the patenting process to be at the right time in the market.

There was a time when it took more than three to five years to get your patent up and running. Thankfully, that’s not the case anymore as you can easily get an expedited patent for a few thousand dollars in the US. While it might sound like a big number for a new startup, if it means that you can build your portfolio quicker, then it is wise to get that leverage for yourself. 

You can also watch this video by our co-founder where he explain portfolio management in a greater detail:

To Sum It Up:

Here is a quick recap of the pointers that shall help you progress towards a strong patent portfolio.

1..A well-defined business process to capture ideas and progress them to valuable IP (Intellectual Property). 

2. The process must provide for thorough vetting from strategy, market, legal, feasibility, financial aspects.

3. Curating an innovation culture by removing the blockers and supporting the enablers shall help your people to come up with more valuable inventions.

4. Ensure that your patent applications do not fall in the rejection bucket by hiring experts to write your patent applications.

5. Time-to-time pruning of the patent portfolio i.e. abandoning the patents (due for renewal) can help you strengthen the patent portfolio.

6. Expediting the patenting process for a few thousand dollars shall be a good tradeoff to be at the right place at the right time.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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3 Ingredients of High-Quality Patent Application

Understanding and decoding a patent can feel like reading a foreign language. Patent claims are littered with legalese and hard to parse. We might rely on recommendations or go to an established firm to get a patent drafted. Sometimes, the tendency is also to get it done as inexpensively as possible.

However, when you can’t judge the quality, then you can’t make a sure decision. So, differentiating a good quality patent from a not so good quality patent may seem like a daunting task. But it doesn’t have to be. Here are a few tips and tricks that make this easy.

There are three ingredients of a high-quality patent application you must look for:

1. Substantive coverage

2. Simple language without ambiguity

3. Technical details: Visuals, Citations, and References

Substantive Coverage

Contrary to popular belief, in a patent application, less is not more. A detailed description of the invention along with alternative solutions is essential to ensure broad coverage. 

Good patents tend not to be short. A short patent may have 4-5 figures and are very high level. They have very little detail in them. A really good patent would have about 10-15 figures correspondingly with detail that can be added to the claims if needed. Hence, when you get a draft back, check whether it is 3 pages long or 15 pages long. Generally, the more said about the innovation, the more likely you are going to get a better coverage.  Description of alternative solutions to the underlying problem will allow claiming those later as your competition tries to design around your roadblocks.

Claims are a very important part of a patent application. It’s quite debatable on what the claims should look like. A long book could be written on the topic and still would not make things easier. As a broad rule a high-quality patent application must have claims directed to how your innovation uniquely solves the underlying problem that originally motivated the invention. Dependent claims can add details as possible fallback positions. 

However there are few red flags you can look for while evaluating the claims:

  • Claims should be written in such a way that others cannot design around that would create legal gaps.
  • Too narrow claims reduce infringement opportunities, but if they are too broad it is unlikely that they would be allowed.
  • Technology covered in claims must be relevant 10-15 years down the line as the industry evolves.

Substantive Coverage Example: Techniques In Transit Advertising

Let’s take a look at the claims of this high-quality  patent application on “Techniques in Transit Advertising” for example. It has 3 independent and 13 dependent claims with 26 figures.

In summary the patent is for a method to generate a request for an advertisement based on an identified ridership pattern of a user of a transit system:

Let’s take a look at claims.

The illustration above is from the patent AU2013262776B2 picked up using Google Patents Database.

Let’s take a look at the coverage of this claim:

  1. The claim talks about retrieving information to find the advertising preference for the rider of the transit system to tailor the experience.
  2. It also talks about the kind of information that shall be retrieved: entry point, exit point, duration of transit, time and location of plurality of such transactions so that the advertising is location relevant.
  3. The claim also covers the places for displaying the advertisement like faregates, kiosks, countertops, etc. for the rider.

Going through the complete claims set of this patent, gives a good idea of what claims should look like. The other claims cover a lot of possibilities around the invention like merchant proximity, information that can be displayed other than advertisements, type of media (machine readable) etc. to provide further detail and fallback positions.

The Heart Of The Invention

Once you have a draft patent application, the inventor(s) should read it critically. Has the draft properly detailed the heart of the invention (i.e., the key differentiator that enables your invention). Is the heart of the invention only mentioned in a cursory manner? Or, is it filled with creative detail and alternatives? Reading of the draft should surprise the inventor with its thoroughness and detail. This goes to show how much thinking has gone into describing the invention. Remember, the patent application is not a marketing tool. It doesn’t need to be flashy with marketing language. The purpose of a patent application is to get the patent granted. And for that, the application must be detailed and thorough. Failure to disclose the details of the invention amounts to a failure to describe how the inventor was in the possession of the claimed invention.

The patent office requires the inner workings and technical detail on how the heart or the core of the invention works.  It should provide the detail to allow another to make and use the invention.  The drafter should go in much deeper detail even if the product has not been built.

You should see that detail in the draft.

Think about what the most important technological thing is. For one, it should be captured in the claim. Because it is hard to parse the claims, ask the drafter, where it is mentioned in the claims. Then work your way back and see how much writing is there about that. A good patent application should have at least 2-3 pages of the core of the invention i.e. selling point of the innovation. 

Scope of Application

Does the draft speak to what is unique about that invention and define its scope too?

In addition to the uniqueness of the invention, the application must also have a wide scope to enable others to understand how it might be built. Ensure that it covers the existing and future scope of innovation as far out into the future as you might imagine. 

Simple Language

High-quality patent specifications are written in unambiguous language to be easily understood. The simple language also ensures that the ideas are not lost in translation.

This means the application must read like something familiar to you or any other similarly trained engineer, developer or scientist. If vague or confusing, it leads to potential attack down the road. If only the claims could be written to avoid the legalese, but the precision of their meaning requires the use of language that the courts have defined in their legal decisions.

Technical Details

A long, thoroughly drafted specification with thorough technical detail must have 

  • Block Diagrams
  • Citations
  • References

Block Diagrams

The visual impact of an application is almost as important as the written word. Make sure that the application includes pictographic representations of the invention – block diagrams, mechanical drawings, graphs, screenshots, etc.

Like ample description, the visuals should portray the innovation from different perspectives. For example the block diagram shown below is from a patent on “Techniques in Transit Advertising” (We have used the same patent as a reference throughout the post for easier understanding :)). The patent has 26 figures – a sign of high-quality patent application.

The illustration above is from the patent AU2013262776B2 (Google Patents Database).

Citations

A citation is a reference to prior art that’s relevant to a current patent application. 

There are two different types of citations 

Backward Citations

Backward citations are patents that are cited by a specific patent and forward citations are patents that cite a specific patent. In other words, these are earlier published documents that are publicly available before the filing date of a new patent application/prior art. 

Forward Citations

A good application must find and cite documents that 

  1. may anticipate the claimed invention, 
  2. or might be similar to the claimed invention and limit the scope of the patent protection, 
  3. or which generally reveal the state of the art of the technology.

These are forward citations. The number of forward citations a patent receives is often reflects on a patent’s significance.

The use of citations in a patent application shows the thoroughness of research. These can also act as markers to detail the scope of the invention. 

References 

A patent includes citations to other patents and literature that the examiner may find relevant to patentability (i.e., prior art). Adding references to the patent application makes it easier for the examiner to evaluate the same and indicates sophistication by the filer and generally indicates searching may have guided the draft.

They also add weight and credibility to the application, thereby increasing the chances of a grant.  The examiner will also search for references.  All the references will appear on the face of the patent application and more is better.

A good search prior to drafting helps define the novelty in the context of what others have done.  Claims should be drafted to broadly cover the innovation, but not step too far into the prior art.  Especially where your drafter may be unfamiliar with your technology, a good search can help familiarise them.

Tools To Evaluate Patent Quality

You might consider using a tool to evaluate patent quality. That is not a bad idea, but it has a downside. Let’s see how.

The quality of a patent encompass objective as well as subjective factors.

Objective factors are the ones that can be computed or measured by software. These include

  • Length of Specification
  • Number of claims
  • The number of words in the independent claims

Subjective factors are more traditional like:

  • Scope of the application
  • A correct and complete description of the heart of the innovation
  • How important innovation is to your business?

The tools available in the market can help you judge the quality of a patent defined by objective factors. It’s even possible to manipulate these objective factors. In fact, experienced and expert drafters can remarkably improve the quality of a patent. But for the subjective factors, human feedback is necessary.

In case you want to watch more about filing high quality patents, I suggest watching below video:

 

A Quick Recap

With this post we have tried to equip you with the ability to differentiate between a low and a high-quality patent application. To summarize presented below is a 7-points checklist for high-quality patent applications.

  1. High-quality patent specifications are written in unambiguous language to ensure that the ideas are not lost in translation.
  2. Claims should be directed to how your innovation uniquely solves the underlying problem that originally motivated the invention. Dependent claims can add details as possible fallback positions. 
  3. A high-quality patent application should have at least 2-3 pages of the core of the invention i.e. selling point of the innovation. Failure to disclose the details of the invention amounts to a failure to describe how the inventor was in the possession of the claimed invention.
  4. Make sure that the application includes pictographic representations of the invention – block diagrams, mechanical drawings, graphs, screenshots, etc. Like ample description, the visuals should portray the innovation from different perspectives.
  5. Numerous references in a  patent application make it easier for the examiner to evaluate the same and indicate sophistication by the filer. They also add weight and credibility to the application, thereby increasing the chances of a grant.
  6. A high-quality patent application covers the existing and future scope of innovation as far out into the future as you might imagine.
  7. The use of citations in a patent application shows the thoroughness of research. These can also act as markers to detail the scope of the invention. 

Conclusion

A well-drafted patent application, as expensive as it may be, is one of your best business investments. To ensure a high-quality patent application, hire the best. Read and re-read, keep editing, and amending and make the application thorough. In exchange for a limited monopoly, description and enablement are the “consideration” that you must provide to the public. 

To make the patent application even stronger, ask the following questions:

  1. Can this patent be adapted to the jurisdictions you would like to take it to in the future? Gain some insights here on the global patent portfolio strategy.
  2. How easy or difficult does the application make it to detect or prove infringement based on public information?
  3. Will competitors be able to understand the relevance of the patent?

Let’s keep that discussion for another day!

Wondering if your IP strategy is strong or not; read this “Is My IP Strategy Headed In Right Direction”!

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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Does My Company Need A Global Patent Portfolio Strategy?

WHEN IS THE RIGHT TIME TO THINK ABOUT GLOBAL PATENT PORTFOLIO STRATEGY

A global patent portfolio strategy depends on the vision of the enterprise. The three main considerations are:

  1. Market Expansion in Different Geographies.
  2. Patenting Costs Vs Profits.
  3. Studying Competitor Markets.

There is a golden rule for successful global patent portfolio strategy:

Pick key markets that lock up at least 60% of the future revenues for the product as inexpensively as possible. 

Filing patents is an expensive affair. Let’s say, you wish to get patent protection on your product in China. It shall cost you somewhere between 20000 to 50000 USD. This cost involves not just filing but also patent attorney expenses, professional drawing expenses, patent office expenses, government taxes, etc. Say you wish to expand your product line in China, the IP investment shall make sense only if there is a good demand for that product in China. Otherwise, spending so much money without significant returns is going to hurt you.

Here is how you can create a global patent portfolio strategy without breaking your bank: 

Market Expansion in Different Geographies

Why do you need to file patents outside the country? The answer to this is simple:  you may be making profits in those areas. Your product may have a market outside the country and you plan to expand in those markets.

If you own the IP rights for a product only in the US, you can not stop anyone else in the rest of the world from making that product. You need to apply for patents in each country. Multi-country protection is possible in places like Europe, Africa and Russia.

But, do you need IP protection in each of the 195 countries in the world? 

No, there is no need to protect your IP in countries that might not have potential customers. 

Credits: Pexels

Patenting Costs Vs Profits

Before you make a decision, it would be great to do little math because the different costs involved in patent protection add up real quick and the sums become humongous. To give you a quick idea, in the US, the costs for filing a utility patent ranges anywhere between $8,000 and $15,000. Under the Euro-Patent Cooperation Treaty (PCT), the cost of filing a patent is 47,000 Euros and it is valid in eight European countries. In India, the cost of drafting a patent application costs anywhere from $350 and above. You can know more about patent filing costs in more countries by using this link here. The more countries you look for protection in, the costlier it gets. 

Unless these costs can be covered up with the huge market potential in those countries, you should think hard before spending money in procuring patent protection there. If you think that stopping your competitors from being able to sell a similar product will add to your bottom line, then do go ahead with protecting your IP. The question to ask yourself is would you be able to recoup the money and make a profit if you sell in this market?

Look to see where you are going to make money and how the market is going to evolve over the term of the patent. The market landscape keeps changing. Although a patent protects you for 20 years, things keep evolving much more rapidly. You need to have a pulse of where the market is heading, the costs associated with IP protection, and your own objectives.

Studying Competitor Markets

Apart from having a patent in the country that you operate, you should also identify what your competitors are up to. A local competitor might be making huge money by selling a product like yours in another country. But you cannot stop them as you do not have any IP protection in that country. You need to protect your IP assets in that country to either stop them or license your technology. 

For example, you have a patent in the United States and you are only doing business there, but your competitor makes most of their money in Mexico. Picking up a patent battle with them in the United States may not be harmful to them, hence you would want to expand in Mexico and assert your patent there.

Does this make you worried about the IP expenses in various countries? Here’s the good news: you don’t have to protect your IP in all the countries in the world. That would be a frivolous waste of money, time, and resources. All you need to do is ‘make it painful enough so that the competition doesn’t want to introduce a competing product.’ Identify the key markets and lock these markets. The following section tells you how.

Lock key markets (Rule of Thumb)

Sometimes the thing to consider is that you get a broader protection in the countries you file in. For example you have a big patent portfolio in the United States. The likelihood that a competitor can launch a really similar product and sell only in Canada (which has only 1/6th of the population of the United States) is very less as some of the products require a lot of investment before you can make money in a country. Hence, the economics of protecting the market and building the market may not be there in Canada. So if some of the profits can not spill to the United States, it would be very difficult to build out the North America market. Thus, the United States becomes one of the key markets.

Similarly, there are key markets in Europe such as France, Germany and the UK. Once you get a protection in these countries, there is very less likelihood that a competitor is going to release a product in the other smaller jurisdictions such as Monaco, Liechtenstein. Hence, you don’t need to file in all jurisdictions. All you need to do is ‘make it painful enough so that the competition doesn’t want to introduce a competing product.’ 

For example, you have a strong patent portfolio built out in Germany. Because in Europe, the borders are very porous and Germany is a big market, any patent asserted in Germany is going to be very painful to your competitor, who might have wanted to sell a similar product. Most of the retailers, and sales channels are all across Europe, and a lot of retailers would not want to sell a product only in one part of Europe and not in the other (as it makes the logistics very difficult). Hence, if you are asserting a patent in one of the key markets in Europe, which is Germany, the competition may have to shut doors to all of Europe. 

While a world-dominion for your IP protection might sound fancy, it will certainly not be the smartest move in your playbook. Here’s what we would suggest to you:

Pick key markets which will lock up at least 60% of the future revenues for the product as inexpensively as possible. 

Let’s say you are in the electronics and software space, just by protecting your IP in Europe, USA, and a few Asian countries, such as China, you can lock up most of the market for many products. Getting coverage in these jurisdictions will cost you roughly $100,000. (Disclaimer: The rates of getting your IP protected also depends on the kind of patent. The $100,000 number is approximate for basic IP protection.) By protecting your product in these markets, you leave your competitor high and dry as they are forced to compete in secondary markets. Would that even be worthwhile for them? Chances are high that they may end up focusing on a different product which will make financial sense for them. 

While some companies might look at rich markets, there are industries where a huge population is appealing when they sell low-cost items. Drug manufacturers might prefer to go by headcount when it comes to deciding the countries that can be a part of the 60%. 

Hence, figure out what the revenue model for your product is, identify the key markets and lock 60% of your market as inexpensively as possible.

Conclusion

Protecting your IP can be a tricky business in itself. Coming up with a strategy to protect it from competitors in countries where your IP is not protected deserves a lot of your time and effort. Having the right strategy in place with an IP Consulting firm can save your firm big money. Hire an experienced IP attorney to help create a global patent portfolio strategy.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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5 Innovations In IP Domain To Empower Patent Attorneys

5 Legal Tech Innovations to Empower Patent Attorney

Digitalisation Everywhere

Today I wish to share with you guys an interesting instance that happened with me last week. One of us was sneezing non-stop & it was a weekday. You can imagine how difficult it is to squeeze out time on a weekday for a doctor’s visit. The long queues and fear of catching the coronavirus at the doctor’s clinic. 

So, instead of going physically to a clinic, we tried something new. We consulted the doctor over a video call using a mobile app. And received the medication within 3 hours of the call. It took us just a few minutes to connect and speak to a doctor. It saved us 2 hours of the day which we would have otherwise spent on visiting a clinic. Thanks to digitalisation!

PC: Vecteezy

Digitalisation | Innovations in IP

Digitalisation is happening everywhere be it education domain or medical. And Covid-19 has acted as a strong catalyst to fuel it all up. This made me curious to know how digitalisation is transforming the legal domain. And my search began. 

I started looking for innovations in the IP domain leveraging digitalisation. While searching I stumbled upon a podcast channel -“Technically Legal”. The channel talks about innovations aimed to empower IP attorneys. I found exactly what I was looking for.  

Technically Legal” is a podcast channel hosted by Chad Main that revolves around tech innovations in the legal field. Chad has worked as a litigator and is now a founder of a legal tech services company.

I found a lot of interesting innovations spoken about in different episodes on the channel. Most of the innovations are targeted to automate mundane stuff that eats up a lot of time of legal professionals. Some innovations are based on AI (Artificial Intelligence) while some leverage VR (Virtual Reality). I believe that with innovations like these, the legal professionals can truly benefit & save time to pursue “real legal work”.

I was also hoping to find something that strengthens the patent mining process  at an organization. After all, we belong to an industry that’s centric to innovations. Innovation capture is the first step to patent mining which inturn brings a competitive edge to enterprises. Based on years of experience in the IP domain we felt a lack of business process that supports the complete workflow from ideas to patents. And that led the conception of a tool that specifically caters to capturing and collaborating over innovations.

This post speaks about 5 of my favourite innovations from different episodes of the podcast. Hope with this post, you’ll be able to make the much needed next move in digitalisation.

PC: Vecteezy

LegalMation | AI-Powered Automation Of Routine Litigation Tasks

The legal professionals lose a lot of time in certain mundane routine litigation tasks but with the advancement of technology, here is a time saviour on their way. LegalMation, an AI powered tool, automates document creation, promotes consistency and conserves the use of resources. 

LegalMation automates a lot of repetitive drafting of standard documents along the spectrum of litigation tasks such as:

  • Discovery responses,
  • RFPs (Request for Proposal),
  • RFAs (Regular First Appeal), 
  • Pleadings.

AI is bound to change the face of the legal industry. However, AI is not ready to perform a task without spoon-feeding it the details. The samples or specimens ought to be put by way of a supervisory process as it never forgets what you feed it. 

For example, at LegalMation, it took the AI tool about six months to understand and prepare suitable results for employment discrimination. 

One thing is set in stone that AI can never be an attorney’s replacement, and only be a compliment to attorneys. If you feed the AI with the correct and requisite information, then as the founder of LegalMation says “it will make attorneys do the ‘real legal work’ and not the routine or grunt work”.

Several law firms are using LegalMation for handling high stake litigation and also coming at par with the bigger law firms by leveraging automation to save time and conserve resources. 

CRM & Chatbots | Automation to Improve Client Communication

“Attorneys fail to respond to more than 60% of inquiries from prospective clients.” –  Clio’s Legal Trends Report.

60% sounds staggering. But, it can be brought down!

In this episode from the ”Technically Legal” podcast it was interesting to hear from Gyi Tsakalakis, founder of Attorney Sync,  on how certain parts of client communications can be automated to reduce this number.

Email automation or auto-responses can be set if the majority of your work is taking place on emails. Autoresponders help to set the client’s expectations for a follow-up. The automation tool has been designed for nurturing a client. 

For some of the common questions like fee structure or kinds of services available, a virtual assistant may be placed by the firm. A firm can add questions and answers to the hotline or virtual assistant and it further grasps the method on how to answer the queries. 

PC: Vecteezy

Using technology to improve responsiveness and strengthening client relationships ought to be at the forefront of legal professionals as it is often said that “old clients are untapped resources and they generate the majority of the work as compared to the new clients”. 

Client Relationship Management (CRM) tools are user friendly and are very well appreciated in maintaining relationships with clients by enabling the legal professionals to be more responsive to client queries, winning new business, tracking and answering calls, etc. 

CRM also takes potential client queries by way of preparing client lists, tracking leads, and managing the schedule.

PacerPro | Automating The Distribution & Data Capture From Federal Court Filings

An attorney always runs after saving time as doing that would provide him with an extra period of time to spend on “real legal work”.  

For example, somebody on the team receives notice for filing from the court via email. Afterward, everybody will download the document to see the court order, and doing this will take 6-7 minutes of everybody’s time. From the record department, paralegals, attorneys, to junior associates on the team, everybody will download the document and follow the process to label the pdf file and further, distributing it to the team on the case. This takes up everybody’s time in question which can be potentially saved.

Pacer Pro Manifold - Streamlined case management and automated data capture

To solve the above problem, Pacerpro is an application that streamlines and automates the distribution and captures data from the federal court website. 

Pacerpro does a one-time backend setup wherein the application adds the software’s email address to the attorney Electronic Court filing (ECF) profile and then on a going-forward basis, the attorney or legal associate will automatically receive the email after 1-2 minutes of the court notice that has the labeled pdf attached. 

Further on, the staff associate or the junior associate on the case can easily distribute the court order among the legal team in real-time. By way of this application, everyone will save time and distribute the court order to everybody on the team without them downloading the court order individually. 

The Pacerpro founders conducted a study on several law firms wherein they found out that automating the distribution and processing of federal court filings saved nearly 50,000 hours of human time.

Slack | Automating Legal Workflows And (Not) Using Email

Another problem which attorneys often face is the exchange of a plethora of emails and the availability of the staff or clients to receive emails. There is a lot of hassle in back and forth email conversations and keeping all data in one email trail mail. 

To counter this problem, many firms and organizations have started using Slack as a platform for their virtual workspace or to keep the entire work product in one place. The productivity and effectiveness of the legal team have also increased. 

Slack as a platform is not limited to being a communication hub. It possesses features such as workflows and bots which the legal departments can use to automate common legal tasks. 

Slack workflows are majorly utilized for answering field questions, review documents and agreements as well as to close sales deals. 

Email Killer | Slack

Slack is known as the email killer or replacement for email. There are multiple channels for different work or teams. One can easily put the information, announcement, or any other important document for everybody to read on a multi-party channel. It gets rid of the traditional way of sending emails to everybody individually to send one particular message or announcement. 

Channels are defined as building blocks of work. Different channels will have different people in them and they can view the whole inbox trail. If a new person gets added to the channel, then they can easily view the previous conversation by way of the archive on the said channel. 

One can also connect with external stakeholders on Slack. The Platform also provides the option of creating public/private channels wherein anyone can enter or get added on a public channel but there are private channels available for one particular team or for the client for maintaining attorney-client communication by the Attorney. Nobody has access to the conversations on the Private Channel. 

You may easily turn off the notifications on weekends or as and when you please. You can also correct typos or other information as there is an option of editing a message on Slack. Whereas you need to double or triple check the content you type in the email body because you cannot retract the Email or edit the typos if you have any. 

ESI | Virtual Reality As An Aid in Patent Cases

Litigation in high stakes cases often lacks scientific accuracy.

To resolve the problem of lack of scientific accuracy in complex legal cases, one Virtual Reality (VR) technology by Engineering Systems Inc. (ESI) has emerged which tends to help jurors clearly understand what happened in a case and under what circumstances.

PC: Vecteezy

Virtual Reality is a technology that can aid in patent cases, tort cases as well as in personal injury cases. The court of law and legal practitioners appreciate the visualizations and demonstrations which help the case reach its verdict faster. 

For example, in patent law, courts are facing a surge in the amount of litigation over patents that only exist by way of prototypes. VR patents help those patents come to existence by utilising the patent specifications and claims. Afterward, they are presented before the courts as evidence which help reach the verdict faster and in a more effective way. 

VR technology is very accurate in capturing measurements or dimensions through the process of laser scanning. 

In a few cases, drones are also used to capture imagery and model the property virtually to eliminate the list of events that cannot occur and figure out events that may have occurred.

The creation of 3D models and virtual reality applications help attorneys to better argue their case after understanding the case in depth. The technology also demonstrates to the judges and juries how exactly the situations occurred.

Let’s Sum It Up

Law firms all over the world are now being disrupted by the changes provided via technological developments. All these innovations and softwares are bound to change the nature of legal practice and bring efficiency. 

Law firms and attorneys ought to opt for these changes and be at the top of their game to maintain their competitive edge. Below we have summarised the 5 innovations we spoke about in the post.

LegalMation helps the attorneys by automating a lot of repetitive drafting of standard documents. 

Gyi Tsakalakis, founder of Attorney Sync proposed utilisation of technology to improve responsiveness and strengthen client relationships. 

Pacerpro as a software streamlines and automates the distribution of federal court websites, thereby capturing the relevant data. 

Slack comes off as an effective alternative to email communication for automating the legal workflows. 

VR technology has contributed vastly to the legal industry through its scientific accuracy.

We are happy to join the battalion of innovators in the Intellectual Property (IP) domain. At Triangle IP, we have created an innovation capture and tracking tool to empower patent portfolio managers, inventors, patent prosecutors and startup founders.

We look forward to seeing you go digital wherever possible. Wishing you good times ahead! 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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