IP strategist: Capturing innovation in technology companies

Atechnology company with a patent portfolio is likely to have processes in place to collect inventions – for example, engineers might be instructed to write up an invention disclosure form and submit it to a committee which then accepts or rejects the idea. However, when engineers are up against deadlines to get products out of the door, they have little time to fill in forms. Unless they are seasoned inventors, engineers may not realise that their work is patentable or they may not be confident enough to present ideas to be judged by management. Therefore, companies that simply wait for invention disclosures to drop into the inbox of their IP departments are likely to miss out on protecting novel and inventive technology. Technology companies must therefore find ways to proactively capture innovation from their organisations.

What a good IP department looks like

In order to capture innovation, a precondition is a deep-seated innovation culture. In the most successful technology companies, chief technical officers (CTO) send the crucial message that precisely because there is a pressure to meet deadlines, there must be time to invent better ways to do things, to experiment and even to play. Further, they help to foster an environment where everyone’s ideas will be met with respect and consideration.

A second precondition is an agreed IP strategy for the organisation. IP departments must have clear objectives and criteria to judge the value of innovations to the organisation and the industry in which it operates. The IP strategy must be supported with appropriate financial and headcount resources.

Assuming a synergistic environment for invention, proactive IP departments can capture innovation by taking advantage of processes within the organisation. For example, many technology companies follow a defined development process, punctuated by gated reviews. By coordinating with development managers, the IP department can ensure that intellectual property is captured at each gate. For example, new trademark applications can be considered at the gate approving a new product concept. At each subsequent gate throughout the process, the IP department should work with the engineers to identify new intellectual property and thus uncover patentable material and trade secrets. In addition to enabling IP protection, being able to spawn patents directly from products may enable a claim for patent box tax relief. A further benefit of formally discussing the origin of intellectual property is that it may uncover other issues – for example, whether licences are in place for incorporated third-party intellectual property and whether there is open-source content in the product.

Besides capturing innovation in development, it is also crucial to explore research activities. The IP department should agree with the CTO on strategic research areas and identify which teams in the organisation are working on them. By being aware of this – together with development timelines and knowledge of the gaps in the company’s IP portfolio – the IP manager can then host targeted innovation capture sessions with those teams. Going further, he or she might suggest to the HR department that participation in a session is set as a goal for team members at their annual performance reviews.

The best innovation capture sessions follow classic brainstorm rules. They should be carefully planned and the number of invitees should be limited so as to be manageable, yet include sufficient people to engender debate. In the spirit of spreading innovation culture, there should be a spread of ages, experience and backgrounds among the invitees. At the end of the session it is helpful if the room collectively prioritises the ideas that have been discussed. Following the session, the host should follow up promptly with the team to draft patent applications. It is beneficial to revisit dismissed ideas at a later date and reconsider their relevance.

Easy wins

A significant benefit of proactively capturing innovation is that it helps to avoid premature disclosure. An organised IP department should therefore coordinate with marketing and never be caught out when a new product is demonstrated at a trade show, since any applicable patents and trademarks will have been filed well in advance. Similarly, a hands-on IP department should be able to anticipate the dates of industry standards meetings and remind company representatives who intend to contribute intellectual property in plenty of time to secure appropriate protection for what potentially may become standard-essential patents.

In addition to planning for innovation capture, the best IP departments spontaneously capture innovation by getting to know the inventors and being visible in the organisation. While IP training sessions do raise awareness, hanging around the coffee machine for a chat may be a more effective way to reach the busiest inventors. Even in the largest organisations, the IP department can walk around the labs, attend product demonstrations, play with prototypes and ask questions. With knowledge of the organisation, its talents and its technology, the IP department may even see opportunities to put inventors from different parts of the organisation working on complementary technologies in touch with one another and spark yet more innovation.

In conclusion, rather than just waiting for innovations to be declared by inventors, truly innovative organisations should have organised and visible IP departments which actively capture valuable inventions through cooperation and communication with their colleagues.