Thomas Robbins
May 25, 2011

In-house patent attorneys can beat the bushes to increase invention disclosures.

 

As a former in-house patent attorney, I am familiar with “beating the bushes” to get your assigned division to submit invention disclosures for consideration by the company’s patent committee.  I found that explaining what is “patentable” to inventors, scientists or engineers may increase the number of invention disclosures, which may increase the number of approved patent applications or increase the average value of the pool of invention disclosures, thus increasing the value of approved patent applications.

For example, consider the generic scenario where a group is designing the next generation widget.  In a typical company, the design group is under a crushing time table (which they are likely behind at any given moment) and has a very limited budget (which they are likely over at any given moment).  As a result of the pressure to get the widget to market, the group may develop tunnel vision as to what is patentable – i.e., the end product.  However, there may be many (extremely valuable) patentable inventions that arise during development.  Consider the following example.

During widget development, a team leader comes into work one morning.  A junior engineer (you know, the bright-eyed type that has yet to have their spirit sucked out them as a result of years spent missing deadlines) explains that he has modified a data gathering algorithm to speed things up a bit.  “Yeah, the data was coming in much too slowly - kind of a log jam.  So I changed the algorithm a bit– which increased the data gathering speed by 80% but only changed our accuracy by .05%.”  At this point, the team leader (again, under much pressure to make a deadline) says, “great job – let’s move forward.”  As it turns out, the new data gathering algorithm may have been very valuable to many different types of business.  Oh well.

Explaining this example to the engineers on the line may prove fruitful.  An in-house patent counsel might also want to add that during a day’s work in the lab or on the computer, there may be 100’s of patentable ideas – some very valuable.  Don’t just look to the finish line.  However, because of the limited budget and time, the team clearly can’t prepare all the invention disclosures for every new idea.  I mean, come on, they need to make a widget for market!  Nevertheless, the team leader can do some triage of the ideas and still pursue the good ones.  Supervisors should, in their weekly talks with the team leaders, probe for these nuggets – “Hey Kim, how did your team solve that issue with the power surge during the high pressure test?”  Was that solution new, useful and unobvious?  Would other people benefit from it?  Milk every innovation, do the triage, pass on the valuable ones and then let the patent committee make a determination.

As an in-house person, you can skate through by letting the patent savvy inventors dribble ideas onto your desk.  However, your company might likely be better served if you could create a flood of innovative ideas, wade through the flood and help them pick the cream of the crop.

Just my two cents.