Bloomberg Law
Oct. 24, 2019, 8:00 AM

INSIGHT: Not Sure Which Products are Patentable? Create an IP Harvesting Program

John C. Phillips
John C. Phillips
Fish & Richardson

Any company that engages in substantial research and development efforts must obtain patent protection on its innovations if the innovations are to deliver value back to the company. But many companies struggle with identifying patentable material and determining which innovations should be patented to advance their products and services goals.

A comprehensive IP harvesting program can identify the most promising innovations for patenting and can also dramatically increase a company’s patent filings in a manner that ultimately results in a high-quality and valuable patent portfolio.

For those implementing an IP harvesting program for the first time or reinvigorating an existing one, the following strategies will help you maximize its effectiveness.

Start at the Top

Buy-in from upper management is essential to the IP harvesting program’s long-term viability. That buy-in must be articulated with vigor to all levels of management and should communicate two main points:

  1. Patents are vital to the company’s long-term health, and
  2. All talent—including the entire research and development team—must participate in the program.

A top-down approach sends a clear message the company is serious about its IP harvesting program, which can eventually lead to a pro-IP change in corporate culture. It can also guide harvesting strategies so they align with future business objectives about which the rank and file may be unaware.

IP harvesting programs also require time and money—resources that sometimes must be diverted away from product development—and upper management is in the best position to ensure that the program has the funding and support it needs to thrive.

Educate the Team

IP law can be an opaque and intimidating subject for non-attorneys, some of whom will have had little to no experience with patents or the patenting process. Ignorance of IP basics can discourage participation in the IP harvesting program and lead to apathy or even hostility toward it.

Before launching an IP harvesting program, ensure all employees who will be involved know what patents are, why patents are important, how to identify patentable material, what the patenting process involves, and how patents can be used.

Upper management should also ensure that everyone has a clear understanding of what the IP harvesting program is and how they can contribute to it. An effective technique to build excitement is to dispatch “champions” to liaise with each division and communicate upper management’s goals for the program. Each champion should make it clear to innovators that the program is an effort that depends on them, while also ensuring that they have the tools and support they need to proactively implement IP harvesting strategies.

Map IP Harvesting to the Company’s Products and Services

An IP harvesting program should take into account not only the company’s current products and services, but its planned future products and services as well. When identifying potentially patentable inventions in IP harvesting sessions, be sure to consider the company’s current products and services, competitors’ current products and services, and future products and services.

Strategic scheduling of sessions can help map IP harvesting efforts. To start, identify ongoing R&D meetings where it might be advantageous for a patent attorney to sit in and capture potential inventions that are being discussed. Also establish a periodic schedule of check-in points where it makes sense to hold IP harvesting sessions (e.g., just prior to the release of a new product).

To ensure that IP harvesting efforts occur as planned, allocate time and budget for IP harvesting activities at the outset of every project.

Engage and Reward the Team

Employees are more likely to meaningfully engage with an IP harvesting program when there is a culture of enthusiasm surrounding it. Make participation in the program as easy as possible by setting up a company extranet where employees can submit invention disclosure forms (IDFs) and obtain information about the patent program.

Instilling a wider pro-patent culture can be challenging, but there are several initiatives that can serve as jumping-off points. One strategy is to highlight the work of productive team members through awards ceremonies, company-wide announcements, or a patent wall of fame.

Another is to incentivize participation through a rewards program where rewards increase as the employee’s idea moves through the patenting process, from submitting an IDF to filing a patent application to receiving a notice of allowance.

Establish a Patent Review Committee

The committee will have the power to decide which submissions to pass on for patenting, which to return for clarification or further work, and which to reject.

Ideally, the committee will include at least one of each of the following individuals:

  • the chief technology officer;
  • a technology visionary who knows the company’s technologies, products, and history;
  • an outside patent attorney;
  • an in-house patent specialist; and
  • a marketing expert who knows the competition and the market.

While its main purpose will be to review patent submissions, the patent review committee can serve a larger role by tracking the progress of the IP harvesting program, responding to participant feedback, and making any changes that may be necessary. Patent review committee members should also hold periodic office hours to meet with would-be inventors on their teams, to help guide them in spotting inventions and completing IDFs.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

Author Information

John C. Phillips is a principal at Fish & Richardson in the firm’s San Diego office. His practice emphasizes inter partes and ex parte post-grant work; due diligence and freedom-to-operate investigations; patent opinions; and strategic patent prosecution with special expertise in internet-related technologies, computer software, telecommunications, and electronics.

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