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June 30, 2021

How Tech Companies Can Protect Their Valuable Ideas Without Losing Their Identities

By Eric Sutton

©2021. Published in Landslide® Extra, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

At big tech companies, patent attorneys and engineers work closely together, but not necessarily in the way that outsiders would imagine. On one hand, securing patent protection for key technologies helps tech companies protect their revenue streams. On the other hand, allowing the engineers to freely innovate and operate helps tech companies generate new revenue streams and adapt to a rapidly changing environment. For big tech companies to remain successful and relevant, they must remain true to their identity:  tech companies, not patent companies. This clear priority on developing valuable future technology is embraced in most big tech companies that are thriving today. That said, big tech companies still need to protect their valuable revenue streams so they can keep thriving.

With these large companies, the level of participation in the patent process from both attorneys and inventors varies wildly. In some cases, visionary engineers work on the bleeding edge of their technologies and have the luxury of moving on to other bleeding edges, while others are tasked with the heavy lifting of implementation, customization, sales, and support. The day-to-day activities of these visionaries are closely tied to the patent pipeline, and they can remain tuned in to the patent process. The level of participation often varies because most employees are either not regularly involved in the patent process or otherwise under informed about the patent process. Even with formal patent training programs in place, training gaps are unavoidable at a large company with hundreds or even thousands of new engineers joining the company each month. For successful tech companies, the top priority for most employees remains on developing valuable products that make customers happy—that topic has some but relatively little overlap with patents.

Variance in patent participation also stems from the degree that inventors care about both patents and the company’s well-being, even if the patent process is well understood. Particularly at tech companies, some inventors are aware of patents and of how patents can help the company—they just do not care to be involved. Even further down the spectrum are inventors who just do not want to secure patent protection for their company, or any company for that matter. This mindset does not serve them or the company well in a capitalist society. Some tech companies have tried to cure the variance in patent participation by boosting filings across the entire company, regardless of what the different groups of engineers are doing on a day-to-day basis. This strategy runs the risk of creating an identity crisis, which could be even more devastating than under filing to tech companies that are often strategically allocating research and development resources to unproven technologies.

Another Way to Look at Boosting Patent Filings

Companies miss out on intellectual property opportunities if valuable patentable technologies go unprotected, but in general boosting patent filings is not a practical solution to the problem. Boosting patent filings across the company will still result in missed intellectual property opportunities and will also result in protecting technologies that were never worthwhile to protect to begin with. Missed opportunities will occur for all the reasons mentioned: lack of patent training, the patent process not being top of mind, a lack of interest in the company’s well-being, and negative patent sentiment. 

Still, as companies strive to align patent filing goals with development, I am often asked for advice on how tech companies can “boost” their patent filings. The usual suggestions patent departments receive are ones like improving the idea intake process or better motivating inventors with better patent awards. The idea intake process is the process by which engineers communicate ideas to the patent attorneys, and the patent awards often include monetary bonuses granted upon patent filing, patent grant, or even the idea submission. 

For companies looking to boost patent filings, my advice is something more: raise expectations for your patent attorneys but keep the idea intake process and patent awards as simple and automated as possible. Your in-house patent counsel have the ability to set goals and stay tuned in to the development pipeline at the company.  If those goals are shared by upper management, and appropriate sub-goals are established for middle management, the patent counsel should be able to meet these goals and sub-goals by staying connected to the development team in their own channels without requiring engineers to speak the language of attorneys. At the end of the day, nobody at the company cares more about patents than the patent team—it is their primary job responsibility. 

Idea intake can be one of the most time-consuming processes for inventors as they attempt to check the patent checkbox and move on to activities that directly generate revenue. For most companies, their inventors, not their attorneys, are their most valuable assets. As such, it is the job of the patent attorneys involved to ensure that idea intake is seamless and that the attorneys do as much of the work as possible. It is certainly easier for patent attorneys to lean heavily on specific inventors to fill in the gaps and meet their goals. But allowing patent attorneys to hijack inventors’ time to explain the world leading up to the invention may leave the company with very few inventors working towards revenue growth.

Shifting the Focus Away from Mining

At conferences and in-house meetups, I often hear the idea intake process referred to as “mining” idea submissions. This term implies that good engineers plus patent work equals valuable patents. In my experience, generally this is not true. On the contrary, taking good engineers and forcing them to work on patent matters can dilute their potential by distracting them from their true passions. Directly asking inventors for more idea submissions and raising the patent award bonus are both ways of coercing inventors to work on patent matters, but to what end? To patent attorneys, training a good engineer about patents may seem like “mining” idea submissions in the sense that it often results in capturing ideas that have built up over time. Prior to this training, inventors do not naturally know what kinds of ideas to submit—they did not go to law school or study patent law. Although an occasional reminder about patents never hurts, once engineers understand the patent realm, aggressive efforts to “mine” ideas from them could be distracting from their revenue-producing jobs. Seeing ideas from start to finish often requires that good engineers shift focus to projects that do not have as much patent potential before shifting back to the idea phase. As engineers transition between responsibilities, projects might focus on solidifying previously patentable ideas into a high-quality product or service that is applicable to a variety of customers. This is the work that typically generates revenue—unless patent attorneys get in the way.

Beyond Harvesting, Capturing, Brainstorming, and Collaborating

Even if patent attorneys are dealing with seasoned inventors who “know the ropes” of the patent world, it is unlikely that they will be able to passively “harvest” or “capture” ideas to the extent that is needed for a patent application. Even seasoned inventors have difficulty translating their complex and robust technology into salient patentable concepts. The goal of the technology is usually not that it be new but instead that it will solve real problems and improve the lives of real people. It is a separate exercise to consider which parts of that technology are new and non-obvious in light of the world of prior art. Even patent attorneys have difficulty optimizing this task, regardless of how closely they know the technology. The process of converting technology into salient patentable concepts often requires that the inventor is challenged by others—those who are looking at the technology from different perspectives and with different prior art in mind. This back-and-forth process is what distinguishes valuable patentable concepts from the rest.

Valuable litigation-ready patents are typically born from a continuing back-and-forth. The patent attorney is not “mining” the relevant information from the inventor, because the metes and bounds of the patentable aspects of the technology are often not fully known or understood (even by the inventor) before any exchanges with a patent attorney. Inventors often look at their ideas with a lens of optimism whereas patent attorneys are tasked with taking a pessimistic view of the same ideas. The patent attorneys, not the inventors, are the ones who are stuck with the outcomes of these discussions. In fact, prosecution statistics reveal that some patent attorneys regularly fail to challenge their inventors—they rest with optimism. Companies are easily able to see that using that kind of patent attorney results in fewer of their desired patent rights while they are just spending more time and money trying. The conscientious patent attorney, on the other hand, emerges from the back-and-forth with a clear understanding of a patentable concept that she/he can protect with a high probability of success.

Inventors who prefer a pat on the back may well prefer to work with the unquestioning optimistic patent attorney even though their ideas are not being extended or refined in any meaningful way, and even if the resulting patent is either never granted or is worth little to the company. This poses an interesting challenge in the technology and patent communities, where passively harvesting and capturing seem to be a viable option to all parties—except those who are evaluating the end-product. Word of mouth about a patent attorney is not a reliable predictor of her/his ability to distill technology into salient patentable concepts, particularly if the inventor likes the patent attorney because interactions were so “simple” and “easy.” Great patent attorneys question, extend, and refine, while remaining practical, efficient, and likeable to the inventors. They focus and spend their time on the questions at the bleeding edge because they have done their homework prior to any back-and-forth. They are equipped with analogies to well-known art as well as suggestions for how to distinguish from the art. They are less interested in documenting everything that the inventors say verbatim and are more interested in helping the inventor craft valuable patent rights that focus on a protectable technical point of novelty. After all, it is impossible for the patent attorney to know what needs to be documented without first understanding what should be protected.

If the World Was Perfect

In a perfect world, inventors would be able to tap into the patent attorney’s wisdom and different perspectives without spending any time at all on the patent process. They would focus their time on developing valuable products and services and efficiently offload the patent puzzle. Ideally, inventors would become aware of extensions and refinements through the natural course of their development cycle, with the patent attorney refraining from commentary that is not relevant to the products or services being developed (even if that commentary would be relevant to competitors’ products). If the patent attorney does have wisdom relevant to changing the products or services or developing new products or services, ideally the inventors would absorb this wisdom without a significant transaction cost.

In this perfect world, patent attorneys would also understand precisely the invention that needs to be protected based on existing documentation about the product or service being developed. The patent attorneys would focus their time on competitive analytics and prosecution analytics that guide them to draft patent applications that are most likely to be allowed and add the most value to the company once allowed, all with the lowest possible cost to the company.

In reality, there are exchanges and interactions that every inventor needs before finalizing the write-up of their invention. This back-and-forth often involves brainstorming among the inventors and sometimes even collaboration among colleagues who might then become co-inventors. The ongoing dialogue between inventors and their patent attorney is where the patentable aspects of the idea take shape, where the patent rights are optimized, and even where seeds are planted for the next ideas in the pipeline. As ideas transition through this back-and-forth, as the inventors answer challenging questions, the ideas mature to become more differentiated, more robust, and sometimes even more marketable than what was initially conceived. That is the job of the patent attorney—to optimize the patent rights as much as possible, without pulling the inventor away from her/his other activities that directly generate revenue.

Idea Intake: Simple and Efficient  

While the process of brainstorming and collaborating is more time consuming than mining, harvesting, or capturing, the idea intake process needs to efficiently extend to these value-added components in order to produce valuable IP. The process leading up to and following the value-added exchange with attorneys and collaborators should therefore be as innocuous and efficient as possible, so as to not pull the inventors away from their core job of generating valuable technology for the company while still allowing them to generate valuable IP. If the right inventors have been paired with the right patent attorneys to discuss the right technologies, valuable IP is borne from the back-and-forth between them. As long as the idea intake process can accomplish this pairing and trigger the desired back-and-forth, the process otherwise can do little to improve the company’s patent portfolio. Assuming the ideal pairings are in place, a company’s focus should shift to targets, budgets, and efficiency (in terms of inventor time). Inefficient use of the inventors’ time, disproportionate emphasis on patents, and procedural distractions can dilute the company’s identity as a tech company.

In our imperfect world, an idea intake process is still necessary. The process should result in getting the best ideas from the inventors who are most likely to generate valuable patents, and on protecting the new technologies that are most likely to be valuable—whether or not they come from the top inventors. Since these intake processes do not themselves drive value for companies, the goal of idea intake should be efficiency: consume as little inventor time as possible leading up to the valuable back-and-forth.

The process should also do a good job of approximating who should be talking to whom about what. Most idea intake processes ask inventors to develop their equivalent of an elevator pitch: what did you do, and why is it important to the company. Hopefully, the idea intake process then automatically captures as much information as possible about the inventor and her/his ongoing projects to provide the proper context for the patent attorney—all while minimizing the inventor’s time and focus on patents. 

Optimizing Patent Coverage

With all these overall goals in mind, companies should consider the following questions:

  • Are they are requiring too much information from their inventors up front?
  • Are they are placing the onus on the patent attorneys to meet the inventors at the bleeding edge? Or
  • Are they expecting the inventors to drag their patent attorneys to the bleeding edge with them?

Tech companies have a lot more engineers than patent attorneys; this allows them to keep the focus on activities that directly generate revenue. To help patent attorneys stay on the bleeding edge without consuming inventor time, all tech companies should continually require more automation and integration between product development, HR, and the patent team to equip the patent attorneys with useful information that does not need to be reproduced by the inventors. Patent attorneys who are tapped into project management tools and involved in development discussions can effectively minimize inventor time spent on patent matters without sacrificing patent quality or quantity. It is hard work, but the payoff is a healthy patent portfolio along with an exciting revenue stream and outlook of product offerings.  

Image: Getty Images

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Eric Sutton

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Eric Sutton is a Managing Patent Counsel at Oracle, where he nurtures a large portfolio of software-related patent assets and drives company-wide patent process automation. Eric serves as an adjunct professor at Chicago-Kent College of Law, where he teaches Software Patents. Eric is thankful that Oracle and Chicago-Kent have supported his career-long passion for patent quality, patent analytics, and patent process automation.