How to build a successful development process with seamless IP questions?
Depending on the technology you are involved in and the project development process you follow internally, it is likely that you are using some phase gate model throughout the project from the idea phase to the commercialization phase. Usually, such development processes last anytime between 6 months to a few years before the product or service is launched.
I was recently invited by a client to discuss how we could help the business unit update their existing phase gate model development process to include IP as an integral part. They had unfortunately launched a product after over 2 years of development without realizing, up until the launch, that they could be unintentionally infringing on someone else’s granted patent. In addition, they did not file any new patents related to the new updated technology development during the project, they were only updating their own technology.
I felt honoured and a bit humble to get this opportunity to investigate their development process and to engage with their technical experts whose daily work is spent on solving highly complex problems related to their product portfolio. It became soon clear to me that they had a strong focus on the development cycles and how to reach commercialization as well as to ensure that the process supports the project manager in passing all the gates with as little risk as possible.
Before discussing the problem with the client’s process, I think it is important to emphasize that technology innovation can only succeed if one is able to either to avoid being blocked or hindered by third party IPR, or protect your own brilliant innovations
Do not forget that there are no prizes for reinventing the wheel, and therefore it is important that your IP management supports successful innovation by:
- Protecting the right things (from a customer perspective) in the right way (with broad and strong patents)
- Avoiding future liabilities associated with others’ patents
- Exploiting the rights conferred by IP protection
Therefore, it is very important that the model used in your business unit have relevant IP questions integrated throughout the entire project development process.
When checking the phase gate model of the client, I found out that most relevant IP questions were in place. The problem was mainly due to that R&D project managers lacked access to tools that could enable them to answers all questions, therefore they were many times using own insights based on their experience in that certain technology field. Needless to say, for some cases this could work but in general it might create problems in the long run.
Typical such questions in a phase gate model are:
1) Has a prior-art search been conducted and documented in a prior art search report?
2) Have you set-up a patent monitoring to continuously update the prior art search results?
3) Did any patents in the prior-art search require patent attorney support?
a) If yes, is a legal status patent monitoring activated?
4) Have any new key features and innovations been identified for IP rights protection?
If you would like to receive a template with all relevant questions that helped me be successful in my previous role as a R&D join our free webinar and receive it as a give away.
Let us now shortly discuss why are these questions relevant and why ignoring them is problematic:
1) Such prior art searches are typically conducted by a patent search expert or the project team in the beginning of the project, but unfortunately to rely on a one-time search is not sufficient and risky because one is already working with 18-month-old patent information. Occasionally some teams don’t even see the need to do searches as they consider what they are working with not being new and therefore does not require any prior-art analysis. It is important to not only perform prior art searches but also activate a monitoring process to capture new data automatically in order for the team to follow the development during the whole development. You can read more about it here.
2) With over 100.000 patent being published every week you need to have a digital process to capture and review the latest patents and changes in your space in general, but specifically those that are relevant to your project. It is however important to note that reviewing e.g. over 200 patents a week is not practical for the team members to do. I promise you it will generate frustration within the team and most probably they stop doing it after some weeks and you will not get the support as R&D project manager.
3) Once you have found a patent of interest, the next step is to make sure you can track its development. A very well know example related to the fantastic feature “Facetime” is between #Apple and #VirnetX where the owner rights were transferred from “Science Applications International Corporation” to “VirnetX”. The patent application was filed in 2000 and the transfer of rights was made in 2007. This type of information is publicly available and should be monitored in order not to miss out on something that could affect your business. Read more about the case here.
Clients that have such digital monitoring process in place would most probably not end up in an infringement situation.
5) If you and your team don’t follow you competitors or the technology space and don’t share that information with your team and company it is almost impossible to force an engineer or scientist to come up with new ideas. We are trained from the academia to solve problems and we assume that nothing is patentable unless we invent something totally new, and then I really mean new. Read this interesting blog. Some companies have good processes in place with invention disclosures to capture new ideas but that means that the engineer/scientist have identified the idea as an innovation, but the question is how can we get these to register a new invention? Still today according to EPO over 75% of all patent applications are not enforced (source: www.epo.org/about-us/annual-reports-statistics/statistics.html). Most probably patents are filed without awareness of similar solutions when filing the ideas within the project (basically because that’s what their phase gate model tells them: If you have identified a unique feature you should file an invention disclosure). The question is what defines unique? I would say it is very difficult if you can’t compare it with existing prior-art. The best way to create innovation is by collaboration and therefore make sure that the whole BU and team can exchange insights and information about publicly available patents. Obviously, the R&D staff in my story were not communicating with each other or exchanging information in a structured way I was so surprised when I understood during a coffee break with the client’s team how much some of the people knew about their competitor patents but there was no platform to support this information exchange.
Would you like to know more about how you can seamlessly integrate IP questions in your phase gate model? Or how to digitalize your process and most importantly how to motivate your colleagues to support in this extremely important activity?
Join our first webinar hosted by my co-founder and mentor Falah Hosini. Falah was my mentor when I joined ABB’s largest business unit “Power System” and he was a true inspiration throughout my whole carrier and still is. Join IAMIP’s Falah Hosini for a look inside how he embraced innovation within ABB Corporate Research and fostered innovation that made the power electronic group one the leaders in the space. Falah has 35+ years of experience in industrial research and development and over 45 patents to his name. I promise you one thing he will bring out the magic in IP.
In these series of webinars, you will be able to listen and directly engage with outstanding leaders in the space. We will discuss strategies and how-to methods to raise the bar when integrating IP questions in your phase gate model.
Register here for the webinar"How to build a successful development process" on 27.03.2019 15:00 CET
Attending this webinar will give you strategic as well as hands on tips and tricks on how to integrate IP questions in you companies phase gate model. After registering, you will receive a confirmation email containing information about joining the webinar.
One last thing, did you know that two of IAMIPs IP expert team were formers patent officers in global fortune 500 companies. Do not hesitate to contact them, book a discovery call if you need new and fresh ideas.
My name is Dimitris Giannoccaro, I am helping technology driven companies to unleash the power of patents.