Intellectual property (IP) issues are increasingly at the forefront of high-tech business. Once exclusively the domain of lawyers, recent years have seen an increased emphasis on IP in high-tech, causing it to expand into the business and technical domains. Consequently, more and more high-tech professionals deal with IP issues in their jobs. This requires the high-tech professional to have a modern view of IP and its evolving role in high-tech business.
Adam Smith notes in his seminal work on economics, The Wealth of Nations, that "a great part of the machines made use of in those manufactures in which labor is subdivided, were originally the inventions of common workmen." The same is true in today's information age, where despite the fancy suits and modern equipment, most of us (however begrudgingly) fall into Smith's category of "common workers."
It follows then that high-tech workers need to know something about the basic forms of IP and best practices for managing and leveraging IP in the modern high-tech environment. This knowledge is essential for workers to be informed participants in an organization's IP process rather than bewildered bystanders. Every high-tech employee is a veritable point-source radiator of IP, and their collective knowledge, combined with an organization's IP processes, determine whether the IP point-source radiators are incoherent or coherent?which in optics represents the difference between a light bulb and a laser.
IP Management and Strategy
The ever-increasing emphasis on patenting in high tech calls for an IP management process that focuses on IP value and directed inventor involvement. This is virtually impossible to do with the all-too-common ad hoc IP management approach that waits for inventions to "bubble up" from below and then patents whichever inventions happen to show up.
At a fundamental level, a best-practice IP management system defines and drives invention generation, review, protection, and leveraging based on the organization's IP strategy. An IP strategy, in turn, is based on an organization's business objectives and an understanding of the IP space of the relevant technologies. There is no "one-size-fits-all" IP strategy. What works for large industry players won't necessarily work for mid-size and small companies or tech transfer offices. Every organization has its own set of circumstances that need to be taken into account.
The IP strategy provides the institutional vision for what inventors should be inventing and why, and needs to be communicated to everyone in the organization. If you do not know what your organization's IP strategy is, you are not alone. Many high-tech organizations do not have an articulated IP strategy, and many of those who do have a strategy fail to communicate it in a way that is useful. This is a disservice to the organization and to the inventors trying to work within the IP system.
In the IP days of yore, the vast majority of companies simply wanted freedom to make and sell their products. This was accomplished by owning relatively few "defensive patents" covering actual products. Such patenting is relatively straightforward.
Today, defensive patents are often not enough. Many high-tech IP spaces are "entangled"?meaning that the IP space is densely packed with patents having overlapping claims. It is thus often easier for companies to establish freedom of action in dense IP spaces by having the ability to cross-license tracts of IP space. Unlike the defensive patenting approach, this approach may require a company to create patent portfolios with a technological breadth greater than its product lines. It takes sound organization and a focused strategy to accomplish this in a way that provides IP value without breaking the bank.
For organizations involved in IP licensing?particularly tech transfer offices of academic institutions?IP is the product. Unfortunately, most licensing-based organizations have the IP management process exactly backward. Rather than focusing on the industry needs of a given technology and directing inventive efforts accordingly, these organizations try to hock whatever inventions show up as invention disclosures. Ask yourself how well this "ready, fire!, aim" approach works for conventional products, and you immediately see the problem.
The Obviousness Trap
If a high-tech worker learned only one common IP pitfall, it should be to avoid deciding whether their own inventions are "obvious." The United States Patent and Trademark Office (USPTO), the Federal courts, and the U.S. Supreme Court have been dealing with this issue for over 100 years and still aren't sure what makes an invention legally "obvious."
There is presently a case before the Supreme Court on this very issue (KSR v. Teleflex). The most valuable inventions tend to be on the hairy edge of obvious, and appear obvious in hindsight. The IP-savvy high-tech organization lets the competition worry about whether its inventions are obvious and coaches their inventors to submit all of their inventions for internal review?especially the so-called "obvious" ones.
The high-tech IP game has evolved in the last 20 years from IP checkers to IP chess. The current trend in high-tech business is to encourage more professionals to take an interest in IP and increase their level of IP awareness and involvement. High-tech professionals should consider IP education as an important part of their professional development, and take the initiative to learn about how IP is managed and leveraged in their own organization.
Have Course, Will Travel
Bring Joseph Gortych to your organization with the SPIE In Company Program. Gortychs courses address areas from a more general look at how intellectual property affects your high-tech business, to issues and strategies for specific industries. Check out the many In Company courses at spie.org/incompany
Joseph E. Gortych
Joseph E. Gortych is president of Opticus IP Law PLLC (www.opticus-ip.com)
, a law firm based in Sarasota, FL, specializing in IP matters relating to optics, photonics, and semiconductor technologies. You may contact him at firstname.lastname@example.org