“Invention harvesting is the first step in obtaining patent protection” – Nicholas Aitken
Tapping the full creative potential of its innovators, or invention harvesting, is the golden nugget for companies seeking to build strong patent portfolios.
“If intellectual property [IP] is a valuable asset for a company—which it is these days for many—invention harvesting is a very good thing to do because it is the first step in obtaining patent protection,” says Nicholas Aitken, Toronto-based counsel at Smart & Biggar LP, a member of the IPH Network. “And, in turn, protection is integral to harvesting.”
Invention harvesting, also known as invention mining, is a straightforward concept that involves prompting and capturing internally generated inventions or ideas, including those whose significance has not yet been fully realised.
But implementing an invention harvesting policy can be challenging and is frequently overlooked, for two reasons: The first is that tracking down what amounts to ideas is a somewhat amorphous endeavour; and the second is that—precisely because the endeavour is amorphous—it requires a proactive approach that does not easily conform to a “one size fits all” model.
Because invention harvesting is commonly the first step in the patenting process, in-house or external patent counsel are often best placed to drive a harvesting initiative to supplant passively waiting for inventors or employees to suggest ideas with an active process that can take many forms.
“The most common type of invention harvesting policy that I’ve seen involves the use of a form that staff can fill out when they believe they’ve come up with something that merits consideration for patenting,” Aitken says.
Typically, these forms address the inventors’ names, a description and key details of the invention, some background information on the invention, the problems that led to the idea, the solution that the idea provides, and how that improves or innovates on existing processes.
Alternative or supplemental approaches to invention harvesting include having product development, project, or research team members meet with counsel to ensure that potentially patentable inventions are subject to corporate processes that ensure the timely filing of patents. This may entail discussing abandoned ideas that have assumed new relevance and exploring conceptual and even abstract debate about future projects and research.
For his part, Aitken meets with some clients, on a “one-off or rolling” basis, for what amounts to a brainstorming session about uncovering patentable inventions.
“The client isn’t presenting things they’ve actually made, but just talking about what they’re doing, what problems they have, and how they see the solutions,” he says. “The value here is that the problem-solving process can frequently form the basis for an invention that should be protected.”
However an enterprise may choose to approach invention harvesting, Aitken believes that education is key.
“It’s important to train staff to identify situations that may give rise to patentable inventions,” he says. “They need to be aware of asking important questions, such as whether they are doing something that increases efficiency and whether what they’re doing is innovative and different from the way the rest of the industry does it.”
Indeed, the educational components of invention harvesting can reap benefits that extend beyond the strict internal workings of the enterprise.
“For example, it may involve creating documentation that ensures inventions developed by third-party contractors during their engagement are the property of the company,” Aitken says.
However, employees must understand that a disconnect can arise between what is patentable and what is valuable.
“What is valuable may not be patentable, and what is patentable may not be valuable,” Aitken says. “Employees should focus on presenting valuable things, because if the ideas are not valuable, there’s probably no point in considering a patent. Their focus should not be on patentability, however, because that is something counsel must decide.”
Indeed, delving into a valuable idea to identify its patentability is an aspect of invention harvesting in itself.
“It’s fairly common that clients come in with an appreciation of the highest level for the concept they have, but with the mistaken belief that the whole thing is brand new,” Aitken says. “In these cases, invention harvesting can take the form of identifying what is actually new and valuable about the item or process, and then finding the most abstract characterisation that will form the basis of what the client seeks to protect without simultaneously describing earlier technology, all of which hopefully results in a patent that prevents competitors from choosing the same solution when they run into the same problem.”
Nicholas Aitken is a qualified lawyer and patent agent based in Toronto, Canada. To access his contact information, click here.
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