rethink(ip)

Strong-Non-Obviousness ... Trap? I think so ...

Posted by Bill Meade at September 25, 2006 01:32 PM

Bill Meade
bill@basicip.com
http://www.basicip.com

Q. What makes an invention disclosure easy to file as a patent?
A. Strong-non-obviousness.

What is strong-non-obviousness? It is a surprising way something is done. A disclosure that catches an entire patent committee by surprise in the "never seen anything like it before" way is strongly-non-obvious.

Think of the most surprising invention disclosure you have seen in your career. Think about the meeting you were sitting in when you decided what to do with this disclosure. Did the strong-non-obviousness wake up the participants in an otherwise sleepy meeting? Did the non-obviousness cause exclamations of surprise? How long did it take to decide to file on the strongly-non-obvious disclosure? Once understanding of the idea spread to the entire group, did agreement immediately ensue? Was opinion on filing unanimous? Did the disclosure feel like it was the proverbial needle in a haystack?

I've sat in patent committee meetings reviewing thousands of invention disclosures, and I've often observed strong-non-obviousness to completely disarm otherwise conservative, stodgy, risk-averse, analytical, and independent thinking people. I think strong-non-obviousness CAN BE a trap, and I'd like to explore why. Please comment on this post. I *think* that the effect that strongly-non-obvious IP has is widespread. I'm curious about what your experience is.

A trap? Why? First, because a patent committee's response to a strongly-non-obvious invention disclosures is often automatic. Automatic in the sense that decisions to file strongly-non-obvious disclosures are conditioned by disappointment and cause goal displacement.

When you review one uninspiring disclosure after another you can get hungry to see something great. Something that would make you proud as a patent attorney to have on your resume. Broad, genuinely new, useful, and with non-obviousness that even a *patent examiner* can understand. In fact, you may have caught yourself hoping for an office action stating the invention is obvious. Payback time for that "correction" the ESL examiner made to your EFL English last year.

Inspiration, pride, craft, payback, wow is there a lot of invisible baggage that is carried along with strongly-non-obvious invention disclosures. This baggage can, and frequently does, displace the goal of making a company money with IP, for other intermediate goals. When goal displacement happens because a decision is being made to file a strongly-non-obvious invention disclosure, patent geeks have fun, but shareholders suffer.

The second reason that strongly-non-obvious disclosures can be a trap has to do with the current carrying capacity of patent business processes. The more strongly-non-obvious and idea is, the higher its current. And when an idea's current gets high enough, the governing categories of the IP business process can burn out. If they do, you get thermal runaway.

For example, your company may be in the shoe business, but when you see an idea that is strongly-non-obvious from one of your shoe company employess, and the idea relates to HD DVDs, you will be way more tempted to file on it than you should be. Temptation is a result of high non-obviousness current burning out the category of "company-related" that should be leading to a defensive publication or an inactivation.

All business process categories are at risk from high-current strongly-non-obvous invention disclosures. For example, strong-non-obviousness can short out budgets "This idea is too good not to file!" It can burn out quotas across client organization. Strong-non-obviousness can wreak havoc wherever the phrase "Just one more ..." is listened to.

The final reason I think that strong-non-obviousness can be a trap is that non-obviousness is technical. The way we make money with IP is not just technical, it is technical+economic. My observation has been that strong-non-obviousness of a technical means is UNRELATED to the economic value of the invention.

Now, before you flame me, I must say that I yield to no one in admiration for strongly-non-obvious inventions that are of high economic value. What I'm cautioning against is assuming that because there is technical merit indicated by strong-non-obviousness, there must be economic value. Non-obviousness is a bad (unrelated) proxy for economic value, though non-obviousness is often used as a proxy for economic value in the excitement of an automatic committee decision.

In deciding whether a company should invest in a disclosure, we should measure the value of the patent that would ensue. A patent is valuable because it protects (i.e., reduces frequency of litigation and cost of litigation), because it preempts (opens revenue bearing opportunities, grabs valuable cross-licensing turf), because it promotes a differentiating feature (HP's Ret patent), or otherwise brings value into a company (visualize a net present value cash flow tree 17 years in length).

Strong-non-obviousness can short circuit the calculation of a patent's value, over-writing the economics of deciding on an expensive long-term investment for a company. When strong-non-obviousness does this, it is a trap.

LegalMojo: Legal Jobs Board...coming soon

Posted by Stephen M. Nipper at September 18, 2006 01:03 PM

It's time to move one of our "secret" projects out of the testing phase.

We (Matt/Doug/I) are excited to announce the coming launch of what we believe will be the premiere job board for legal professionals. LegalMojo will launch later this month and to wit we are seeking job postings jobs for this targeted job board.

We are opening this pre-launch opportunity to the readers of our Rethink(IP) family of blogs, as well as the readers of our blogging/blawging colleagues. This is a fantastic opportunity to get your open position in front of our collective audience of attorneys. Job postings will cover all practice areas (not just intellectual property) and regions in the U.S. We have already had a request to expand our offering to include the UK and Australia. To discuss details and get your posting listed, please contact our jobs board director (vince@legalmojo.com) as soon as possible. If you have a position available in your firm or company, we want to know about it.

If you have any questions about the effectiveness of blog job postings, check out this Fast Company article: Blogs, the other Job Board.

Rethink(IP) is Looking for Help

Posted by Stephen M. Nipper at September 13, 2006 01:52 AM

We're looking for a law student or other individual willing to donate five minutes every business day helping us put together our RSS Mojo feed of USPTO News and Notices (until the USPTO does it itself). It isn't exactly the world's most glamorous job and the pay is non-existent. However, if you'd like an opportunity to work with us (we'll even teach you how to use MoveableType)...drop me a line. nipper@inventblog.com

Tips For Helping Clients Generate More Invention Disclosures

Posted by Bill Meade at September 12, 2006 02:02 PM

Some things have to be believed to be seen ... for example, invention disclosures. Inventing is a process, not an event. Inventing is a business process that identifies, captures, and presents to legal, the potential and actual technical competitive advantages of a company.

My top 10 ways for counsel to help clients generate more invention disclosures are:

#10 Bring Food

The fine art of "sucking down" to inventors is not taught in many law schools. When you have a "show the flag" meeting with your client and their designated inventors, surprise everyone by bringing a lot of delicious food. Our experience with foods that promote invention is to go for smell (sizzling hot pizza, coffee, fresh bread), calories (chocolate chip cookies, milk-shakes) and caffeine (coffee, lattes, Morning Thunder(TM) tea). Also, don't cater the event and call it good. You must bring. The most direct access to the brain is through the mouth. But inventors must see you carry food in, hear about how you cooked it or arranged it, they must feel that you care.

When was the last time you saw a lawyer personally bring food to an inventor? Exactly.

#9 Distill the Disclosure

If you look at invention disclosure forms on the web, especially the disclosure forms of universities, they are 95% distractions, underbrush, and tripwires. What I mean is that from the perspective of an inventor, 95% of an invention disclosure form is scary. Most employees never complete a single invention disclosure form over the 45 years they work. Why? In large part because if an employee ever looks at a disclosure form, they are terrified. They think "This is going to be as ugly as doing taxes!" and they walk away to avoid the secret trap doors of destruction implied by confusion.

If you reduce your invention disclosure form the distilled essence of what you need to evaluate investing in the idea, you will capture more, and more complete disclosures.

#8 Streamline the disclosure

Another way to improve the invention disclosure form is to think like an inventor. Instead of starting with "Prior art" which is a legal term and a starting point that makes no inventing-sense. Instead, try a question "What is the story of this invention?" Have your invention disclosure begin general and then gradually become specific to the idea that is the subject for disclosure. Streamlining can be as simple as reordering the sections so they make sense to inventors. Ask an inventor you know, to tell you the most sensible order, and then try it.

I avoided streamlining invention disclosures because I ass-u-me-d that an invention disclosure form was holy writ and it would cause the sky to fall if I changed it. But my experience has been that ID forms are very easy to change and often, little changes have big impacts on quality and quantity of invention.

#7 Anticipate Objections

Two can't-write-objections we always have to be ready for are "How do I know where one invention leaves off and another begins?" and/or "The invention is not company-related so I can't write it down."

One way to handle the invention ontology (i.e., the form and structure of inventions) question is to tell the inventor "If components of your system can be practiced separately, then disclose them in separate invention disclosures."

To handle the company-related question we typically have to have the inventor explain the invention to us, then we write it down (*Note* Your invention disclosure forms need to distinguish submitters from inventors because not all submitters are inventors.) for them. We take the invention out of the inventor because human memory is stack oriented. We've had inventors obsess on not writing down a non-company related idea, and then once we endodonically removed the disclosure, the inventor completed 10 more disclosures all of which were filed.

Your inventors may not procrastinate in these two ways. But however they procrastinate, you need to keep track of the objections and be ready to unleash armor penetrating responses to those objections. Once you do this a time or two for your client, the inventors stop objecting and start writing!

#6 Bleach Your Language

I'm not talking only about swearing here. "Non-obviousness to one skilled in the art" is the queen-mother of swear words in an invention workshop. Inventors seize-up when they try to parse this phrase. Remember that your audience is waiting for you to say something that will give them a good excuse not to put out effort or take risks. Invention disclosures require effort and represent risks to the inventor. Part of the professionalism of being an attorney is to understand what your buzz-words are and to stop using them when you are around inventors.

#5 Know What You Want

If you can explain to inventors what IP you want in plain English, you transform what they do. An open-ended invention capture exercise is much riskier than a problem-solving meeting. When you know what you want from the inventors, you change inventing from distilling-the-essence-of-engineer-genius, to solving a problem. Open-ended queries for "IP" are in effect, requests for in-process ideas. Technical people hate to expose their in-process ideas to public criticism. I don't know why this is, but I learned the lesson well the first time I asked for volunteers in an advanced marketing for engineers class to work out problems at the blackboard.

#4 No Laughing

Make a rule with all people involved with IP that invention disclosures are never to be laughed at. I ran an invention workshop once where the IP counsel were reviewing invention disclosures as they came in from the inventors. They would nudge each other with their elbows, point at a disclosure, and then laugh together at the idea. These counsel had no awareness that they were sitting in a room of 40 inventors, all of which were watching them.

People who live in bureaucracies are hard-wired to monitor the respect they receive. If they are not respected, they will not put out. So, it is great rule to forbid laughing for those in authority: At invention workshops, At invention disclosure review meetings, At presentations of patent awards.

#3 Love-Questions

The single best thing that can happen for a client, is questions from inventors. Questions tell you what the hurdles are at that particular client. If there are questions on the invention incentive program, this probably means that the payment mechanism is bollixed up. Questions on how disclosures are processed often mean that inventors are afraid of their bosses being involved and criticizing them for inventing. Questions that come up across meetings should be converted into the agenda for future meetings. The objections inventors bring up as questions, are the invisible road blocks to an organization mobilizing its IP. If you make it safe for non-inventors to ask questions, you can map the organization.

#2 Offer Incentives

These don't have to be big. Why? There is a branch of psychology called "prospect theory" that is based on the idea that people measure cost by the number of transactions, not by the amount of transactions. For example, prospect theory predicts that people using credit cards will spend more in a month than people using cash. Why? Because credit card users only pay 1 time per month.

Prospect theory can be harnessed to convert employees into inventors. For example, by taking $5 bills to an invention workshop meeting, and when an inventor turns in a completed invention disclosure, you crack down (loudly) on the table a $5 for turning in the invention. Try this. It will cost you at most $200. Write it off. What you will learn will be worth it.

#1 Dance With The One That Brung Ya

Many patent attorneys love the law. Consequently, a meeting with clients and their inventors can become a lecture on the law. Think about this. This puts the inventors in the position of either of your attorney peers (in which case you will talk over their heads) or the position of being law students. How likely is an inventor who is behind on a firmware release will have their creativity unleashed by a thorough lecture on patent law?

Your client wants invention disclosures, in fact, you probably want invention disclosures. So, put yourself in the shoes of the over-taxed, under-caffeinated, under-sugared, distracted inventor, and then make a list of the steps the inventor has to go though to take the shortest path to completing an invention disclosure. What are the steps? I don't know, so I prime the inventors with a little bit of general knowledge about patents and licensing, and then I get them to tell me the steps with their questions.

Conclusion:

To help your client get more inventing, you need to think like a non-inventor. You need to get all the minds into the game. If the inventors can take care of the quantity of inventing, you working with your client can take care of the quality. Believe in your clients inventors, show them that you believe before they invent anything, and then support them as they try. Quantity first, quality with inventors learning.

Hope this helps!

Bill Meade
http://www.basicip.com

The USPTO Needs Standards

Posted by Stephen M. Nipper at September 6, 2006 05:16 PM

From a reader:

The PTO really needs to figure out how to do one thing one way, instead of having multiple unrelated systems doing parts of the same thing in different ways. Like, how many leading zeros do you need? PATFT, PAIR, EPAS all work differently. Are slashes OK, or not? Can you put commas in, or not? They're even inconsistent within a single system - the ADS form for EFS-web has two different places for entering a customer number - one has a leading zero, the other rejects it. Go figure.