ANAQUA IAM Perspectives:

Ralph Schroeder Esq., VP Intellectual Property
February 2008

 

Harvesting Ideas: Enterprise Invention Management

Invention Management is a critical component of enterprise Intellectual Asset Management.  Invention management is a multi-step process that requires active coordination across various functional areas, including R&D, product management and the legal department.  Increasingly, companies are finding that their past-practices of ad hoc invention management are failing to provide the quality or quantity of ideas necessary to build a world-class, strategically aligned patent portfolio.  And with the expanding globalization of businesses, the ability to reach inventors is a logistical and information management challenge.  The solution for many organizations is the implementation of enterprise Invention Management systems that enable an electronic, paperless process that fits within the end-to-end IAM process.

While the specific steps may differ from company to company, we find that leading IP companies generally use a common approach that coordinates the people, process and information needed for efficient and effective invention management. In this edition of Anaqua IAM Perspectives, we discuss the essential components of an enterprise Invention Management solution.

Paperless, Electronic Invention Disclosure Form  The use of standard electronic invention disclosure forms (IDF) is a common feature of an automated invention process.  Replacing paper-based or emailed forms, the process begins with submission of an IDF through a full featured web form, which helps guide inventors through the process of describing the subject matter and merits of their idea. In addition to the electronic IDF form, these systems often also provide the following additional features:

• Easily select co-inventors including contact and employee information pulled from the company directory;
• Upload documents that provide supporting information to the IDF;
• Identify and list related inventions or patents which may be useful references;
• Ability for inventors to “self rate” the technical and business value of the idea;
• Identify critical dates which may affect the time period or urgency of application filing;
• Support active collaboration between co-inventors
• Indicate the invention’s technology, R&D project,  product, market position and any other related classifications
• “Lock” the disclosure to preserve the invention date of the idea;
• Provide electronic signatures for the IDF;
• Validate submission with an auto generated email to the inventors providing the disclosure number, date and other explanation of the process;

 

Invention Evaluation and Patent Review Boards.  Increasingly, most organizations are using some form of a structured review process to evaluate their invention disclosures. A common approach is to organize incoming inventions by business units and technology, and route a new IDF to a list of designated reviewers.  Often a Patent Review Board (PRB) will be periodically scheduled which brings together both inventors and subject matter experts as well as business and legal representatives .  The PRB will provide a forum for inventors to present the merits of their ideas and an evaluation process that rates the technical, business and legal value of the idea.  In supporting these processes, the system should provide the following capabilities:

• Ability to automatically organize new disclosures by business unit, technology or other classification based on information provided in the IDF;
• Enable a centralized department to manage and report on all incoming IDFs across the entire company;
• A way to easily schedule the PRB meeting, including the agenda of new disclosures to be reviewed and supporting documents;
• Provide a defined rating system that scores ideas in a consistent manner, and which can vary by technology or business unit;
• A system that captures the technical, business and legal merits of the invention;
• A way to facilitate the “file” / “no file” decision from the PRB meeting, and to automatically notify the inventors;

 

Foreign Filing Plan and Budgeting –The need for global patent coverage and the high cost of foreign filing requires a structured filing plan and budgeting process.  Based on an approved disclosure’s rating, as well as the related product’s market profile, a company will identify the countries in which patent applications will likely be filed.  Often the filing plan will be based on a set of pre-defined “tiers” which correspond to a group of countries.  The filing plan should also provide a budget estimate calculated from both the official fees and the company’s typical professional fees.  To support this process, the system should provide the following capabilities:

• Ability to set up and name geographic areas containing multiple countries/jurisdictions;
• Ability to set up and apply pre-defined filing plans showing priority and secondary filings;
• Ability to apply filing plans automatically based on product/technology or other classification  and the evaluation ranking of the invention;
• Ability to project budget costs of a proposed filing plan

 

Inventor Recognition and Awards – Creating a corporate culture that values participation in the invention process is an important responsibility of the IP organization.  Inventor recognition programs and inventor awards are common ways for companies to incent their would-be inventors to participate, and to compensate them for the time spent on creating high value IP.  In addition, some countries—such as Germany and Japan—have inventor remuneration laws which require structured payments to inventors.  To help manage these processes, the system should provide the following features:

• An invention award scheme that allows awards to be paid at defined milestones, such as disclosure, application filing or grant;
• An automated process to calculate the award based on such factors as historical number of disclosures, number of inventors and quality rating;
• An interface to financial systems to automate the payment and receipt tracking of awards;
• A way for inventors to easily check on the status of their inventions through an Inventor Portal;

 

Conclusion

Effective, high quality invention management is the critical first step in a world-class patent process.  Providing a structured, automated system to coordinate the myriad of functional and information aspects is an increasingly common solution for companies that are leaders in IP management.  In working with some of the world’s most highly regarded IP owners, Anaqua has developed a full suite of tools that enable companies to implement complete end-to-end invention management—integrated within the broader IAM process.

 

For additional information, please contact Ralph Schroeder at rschroeder@anaqua.com or (617) 375-5808

 

About IAM Perspectives

Anaqua's IAM Perspectives is a quarterly article written by Ralph Schroeder, Anaqua's VP of Intellectual Property. These articles discuss pressing topics or events relating to Intellectual Property today. For more IAM Perspectives click here.