By: Bonnie Smith, Partner

 

Intellectual Property rights are invaluable assets that deter competitors, create successful brands, and develop company cultures.  Companies that generate a lot of IP typically have internal procedures in place for “invention harvesting,” to ensure they're obtaining the most ideas and best innovations from employees.  Regardless of your company size, consider the following tips for developing your own formal IP procedures:

Establish an Invention Disclosure Process

Employees should be able to freely submit their ideas, and many companies use standardized invention disclosure forms.  These forms should be straightforward and should require the inventor to indicate: the problem solved by the invention, the prior art known to the inventor, details of the invention, alternative embodiments of the invention, who is considered to be "the inventor" and whether there was any activity that would provide a bar to filing for a patent, e.g. a public disclosure, offer for sale, etc. 

Generating Invention Disclosures

“Push” and “pull” methods may be used to generate invention disclosures.  The “push” method may enable employees to freely submit disclosures on their own time.  The “pull” method includes brainstorming sessions that are conducted during company time.  Brainstorming sessions may include discussing the state of the art in the relevant industry and the known levels of competition.  Concepts such as patent inventorship, patent ownership, patent claims, and prior art may also be discussed during these sessions.  For example, employees should understand that a reduction to practice does not necessarily mean that the employee is an inventor and the company may own the IP generated by the employee per the employment agreement.

Managing Invention Disclosures

Once an invention disclosure form is submitted, the contents of the form must be evaluated to determine whether the IP is viable for the company.  This may include performing a prior art search or a patent portfolio check.  Other considerations include: whether the potential commercial value justifies the cost of obtaining IP, the longevity of the technology (since obtaining a patent may take several years) and whether the idea may be protected by other IP, e.g. trade secret.

Track and Promote Successes

Brainstorming sessions, the number of filed patent applications and issued patents should be tracked, along with the revenue attributable to the issued patents.  Inventors may be incentivized to generate more IP by providing monetary and non-monetary awards when invention disclosures are submitted, patent applications are filed, and patents are issued.  Monetary awards may include bonuses, gift cards, etc. and non-monetary awards may include recognition, plaques, etc.

At Renner Otto, we specialize in assisting our clients with developing efficient IP strategies that are tailored to you and your needs.  If you are looking for assistance in developing new IP strategies or updating your current strategies, we would be happy to assist you! Contact us for a complimentary consultation