201 2-b intro-invention_management

INTRODUCTION TO
INVENTION MANAGEMENT

by

Roger D. Posadas, Ph.D.
Professor, Technology Management Center
University of the Philippines - Diliman

TM-201-1-12-13, Lecture 2-B, June 2012

THE NATURE
OF
INVENTION

DEFINITION OF INVENTION...1

“INVENTION IS THE CREATIVE PRO-
CESS IN WHICH NEW LOGICAL WAYS
ARE IMAGINED TO MANIPULATE
NATURE FOR HUMAN PURPOSES.”


“A TECHNOLOGICAL INVENTION IS THE CREATION OF A
MAPPING OF NATURAL FORM TO THE FUNCTION IN HUMAN
PURPOSE.”

 THE MORPHOLOGY OF A PHYSICAL SYSTEM IS THE
REPRESENTATION OR DESCRIPTION OF THE PHYSICAL
PHENOMENA.
.
 THE FUNCTIONAL LOGIC OF A TECHNOLOGY IS THE DESIGN
OF A SEQUENCE OF UNIT FUNCTIONAL TRANSFORMATIONS
TO OBTAIN A DESIRED OUTPUT FROM INPUTS. FUNCTION IS
THE DEFINING CHARACTERISTIC OF A TECHNOLOGY AS A
SYSTEM.


“TECHNOLOGICAL INVENTION CONSISTS OF
IMAGINING THE SELECTION OR CONSTRUCTION OF A
PARTICULAR PHYSICAL STRUCTURE AND THE
ARRANGING FOR THE SEQUENCES OF PHYSICAL
PROCESS IN THE STRUCTURE TO CORRELATE WITH
THE SEQUENCES OF A LOGIC SET OF OPERATIONS.”

“The secret of any technology is the invention of a
physical structure whose processes can be
mapped in a one-to-one manner with a logical
operation of a functional transformation.”

THE PRODUCTS OF INVENTION

 The products of technological invention characteristic-
ally fulfill practical functions in contrast with the
products of scientific research which typically opt for
models of underlying fundamental processes.

 The products of technological invention include not
only physical devices (e.g., fluorescent lamp) but also
processes (e.g., float glass process), algorithms,
designed biological structures, business methods, etc.

 The products of invention vary in their social impact,
their knowledge requirement, and their system level.

Stages in the Invention Process...1

1. Finding an idea

● What can I invent?

● What problems are there to be solved?

How to Look for an idea

● Brainstorming

● Invention Idea Survey


2. Background research

● Collect information, knowledge, facts,
feelings, opinions, and thoughts to sort
out and clarify your idea more specifically.

● What do you know about the situation,
and what do you still need to know?


3. Problem Formulation

● Formulate a "problem statement” that
expresses the "heart" of the situation.


4. Possible Solutions Finding

● Generate as many ideas or alternatives as possible for
dealing with your problem statement.

● Don't evaluate your ideas at this point, merely list them
as an idea pool from which you'll draw in putting together
a variety of solutions to your problem

● Tools for generating solutions


5. Solution Finding

● Evaluate possible solutions systematically.

● Generate a variety of criteria and select the most
important for your problem.

● Identify and evaluate the relative strengths and
weaknesses of possible solutions.

● Tools for evaluating solutions


6. Construction of Prototype

● Choose materials to be used

● Purchase/Collect materials

● Build your prototype


7. Test, Modify, and Evaluate Prototype

● Test your prototype

● Modify/Improve your prototype

● Evaluate your invention

INVENTION LOG OR NOTEBOOK

 Keeping a Invention Log or Notebook is a very
important part of the invention process.

 Your Invention Log can help you keep track of
all your ideas, and it will help you organize all
of the steps required to complete the inven-
tion process.

 Your Invention Log can help you prove that
you had the idea for this invention first.

Inventorship...1

 Who is the inventor? Inventorship is legally deter-
mined. An inventor, according to the U.S. Patent and
Trademark Office, is anyone who conceives of the new
ideas that are actually embodied in the claims of a
patent application.

 If a patent application, for instance, includes 10 claims,
and you conceived of even one of those claims, you
are considered an inventor of the entire invention,
along with the other inventors.

Source: University of Pittsburgh Guide

Inventorship...2

 However, if that one claim is removed during the
course of the patent reviewer’s evaluation of the
invention, you no longer will be considered an inventor
on that invention.

 In general, inventorship is based on your participation,
contribution, and value to the invention, as perceived
by others. Keep in mind that inventorship does not
work like authorship of scientific journal articles,
which sometimes include all researchers who
conducted the work.


Inventorship...3

 Establishing inventorship ― Once you determine that
your idea is new, useful, and non-obvious, establishing
inventorship still requires two basic steps from a legal
perspective, as determined by the U.S. Patent and
Trademark Office. Both must occur for an idea to be
officially considered an invention.

1. Conception: Conception is defined as a formulation
by the inventor of the complete means of solving a
problem in a way that allows a person of ordinary
skill “in the art” of that particular field to recreate or
use your invention without extensive new research
or experimentation.

Inventorship...4

 Establishing inventorship ― (cont’d) By itself, though,
conception isn’t considered an invention.

2. Reduction to practice: To complete the legal defini-
tion of invention, you have to follow through with
step two—taking your idea and reducing it to prac-
tice. In short, you must actually make your concept,
test it, and prove that it works.

E.g., those who have conceived of time machines
and theorized about how such machines might work.
Many have achieved conception, indeed.

Inventorship...5

2. Reduction to practice:

But inventors have yet to reduce it to practice and
prove that their machines could work. Thus, they
have no invention.

 Reduction to practice can occur two ways: In an actual
reduction to practice, you make the invention, test it,
and then determine that it works for its intended pur-
pose. In a constructive reduction to practice, you file a
patent application that sufficiently describes the
invention in a way that allows a person with a skill
“in the art” to practice the invention.

Inventorship...6

 Sometimes, filing a patent application itself is consi-
dered the equivalent of a reduction to practice, but
fields such as biotechnology require an inventor to
demonstrate actual biological activity.

 The Invention Disclosure ― If a researcher finds that
s/he has developed an invention with commercial
potential, then, before publishing her/his data, pre-
senting it at a conference, or otherwise sharing her/his
ideas with outside parties, s/he should submit an in-
vention disclosure to her/his research organization’s
Technology Transfer Office or TTO for consideration.

The Invention Disclosure Process...1

 An invention disclosure simply allows an inventor to
share enough detailed information about her/his
invention with the TTO to allow TTO and an indepen-
dent committee of technology transfer officers and
researcher-peers, known as the Technology Transfer
Committee (TTC), to evaluate its commercial potential.

 It also is the first step in the process of seeking patent
protection for the innovation. It should be kept in mind
that the university or RDI claims ownership and
control of the worldwide patent rights that result from
the research conducted by researchers — particularly
if government has funded the work wholly or in part.


 The invention disclosure allows the University or RDI
to determine whether it wishes to retain such owner-
ship and control to pursue technology transfer or to
release the invention back to the inventor.

 Once TTO receives the invention disclosure, the
University or RDI is required to report the invention
within a certain period to the government agency that
provided the research funding.

 The accomplished invention disclosure form or IDF
should be submitted as early as possible.


 The invention disclosure form itself offers no patent
protection for your invention, but early submission will
allow TTO to act quickly in filing a patent application.

 The invention disclosure will alert TTO to expedite the
filing of a patent application when appropriate to avoid
any public disclosure of enabling information that
hasn’t yet been patent-protected.

 What to submit: details, please ― The information sub-
mitted in the invention disclosure form will determine
whether the University should invest in the invention’s
commercial future. So the more details provided about
both the technical and commercial merits the better.


 Invention Disclosure Form (IDF) is the cornerstone for
all invention-based activity

 One-page document signed by inventors

 IDF subjected to three-stage review

- Protectability

- Efficacy/feasibility

- Market assessment

FUNCTION OF THE INVENTION DISCLOSURE FORM

 The invention disclosure document represents the first
official recording of the invention and, if done properly,
can establish an irrefutable date and scope of the
invention.

 Often the disclosure document has been used to defeat
challenges to dates of invention, inventorship,
invention scope, and prior art.

 Conversely, improperly written invention disclosures
many times have resulted in disastrous losses of patent
rights.

UP Diliman Invention Disclosure Form…1

1. TITLE OF INVENTION

The title should describe what the invention does, but not
how it is made or how it works.

2. SEARCH TERMS (up to 10)

The OVCRD uses the Internet as a research tool when
searching databases and markets. To make our searches
efficient, please provide a short list of words, common
industry phrases, and/or categories directly related to your
invention.


3. BRIEF OVERVIEW OF THE INVENTION (3 - 4 para-
graphs)

a) Provide a short, general layperson’s description of the
invention and how it works.

b) What is the purpose of the invention? For example,
“What problem does it solve?”

c) Is it a new product, process, or composition of matter?
Or is it a new use for or improvement of an existing
product, process or composition of matter

d) What benefits can the invention give? (Please use
extra sheet/s if necessary.)


4. TECHNICAL DESCRIPTION, DETAILS AND
SUPPORTING DATA

Provide results, data or other evidence demonstrating how
the invention works. You may attach papers, pilot projects
or visual material, published or unpublished, in response to
this question.

5. PRIOR METHODS, APPARATUS, AND DEVELOP-
MENTS (1)

a) Methods or apparatus in existence closest to your
invention and the problems of each that the present
invention solves.


5. PRIOR METHODS, APPARATUS, AND DEVE-
LOPMENTS (2)

b) Cite any of your own publications and patents,
and those of anyone else believed by you to
disclose ideas most closely related to the
invention. Please attach all relevant publications,
patents, advertisements, etc, if available. Please
consult with RDUO-OVCRD on how to do Prior
Art Search.


6. STAGE OF DEVELOPMENT (2-3 paragraphs)

Describe the development status (concept only,
laboratory tested, prototype, etc) and briefly indicate
what further development may be necessary to
commercialize it.

7. POTENTIAL LICENSEES

Identify companies or market sectors that you think
could benefit from your invention.


8. PUBLICATIONS/PRESENTATIONS/OTHER FORMS OF
PUBLIC COMMUNICATION (DISCLOSURE)

Please identify all past and future seminars, talks,
ab- stracts, publications, web postings, and other
venues used to describe the invention. These may
affect the scope of patent protection and the timing of
filing. Disclosure is the oral, written, or electronic
dissemination of the invention to a person outside
U.P. Dili- man that would enable someone working in
the field to practice the invention or repeat its
development. Note: any communication with
colleagues and students within the U.P. Diliman
community does not count as disclosures.


9. DATES OF CONCEPTION AND REDUCTION TO
PRACTICE

These dates have to be documented to respond to any
challenges to the patent that may arise. Conception is
the formulation in the mind of the inventors of the ulti-
mate working invention. Reduction to practice can be
accomplished either “actually” or “constructively”.
Actual reduction to practice is the physical creation of
the invention. Constructive reduction to practice is a
detailed written description that demonstrates the in-
vention will work as conceived. Describe the circum-
stances and dates surrounding the development of
your invention: (You may attach extra sheet, if needed).


10. SPONSORSHIP

Identify all grants, contracts, and other sources
of funds contributing to the research that led to
the invention. You should list all agencies that
you would acknowledge in a publication. The
OVCRD will check out the contractual reporting
obligations associated with your funding.


11. OTHER AGREEMENTS AND INTERACTIONS (1)

Identify any agreements or interactions that you have
entered into that are related to the invention and might
grant rights to a company or other party outside of
the University (material transfer agreements,
commercially sponsored research agreements, con-
sortia agreements, consulting agreements, etc.)

Did this invention use any materials which were
obtained from a company or another institution? NO
__ YES __ (Please provide details, and indicate if there
is a Materials Transfer Agreement.)


12. INVENTORS

List all those who helped contribute to the con-
ception of the ultimate working invention. The
people you include ultimately may or may not be
legal inventors. Please place an asterisk (*) next
to the name of the inventor to whom correspon-
dence should be sent. If any person holds a sole
or joint appointment with any other university,
company or governmental agency, please note
that fact.

Laboratory Notebooks as Invention Disclosures...1

 Laboratory notebooks are frequently relied upon to
ascertain the actual date of invention and to identify
the inventor.

 Unfortunately, most lab notebooks are incomplete, ille-
gible, and not witnessed, or witnessed erratically—if
they are kept at all.

 However, if kept appropriately, a laboratory notebook
can easily suffice as an invention disclosure.

Source: David McGee (2007)


 The information must at least include a detailed des-
cription of the invention and signed and dated pages
by the inventor and appropriate witness(es).

 The actual discovery (that is, the invention) must be
clearly explained.

 IP professionals should educate scientists about the
need for complete disclosure if the notebook is to be
useful at all.



 The scientists should also be trained to avoid writing
off-hand remarks in the notebook (e.g., “this was an
obvious experimental approach” or “I used an obvious
extension of Dr. X to conduct this research” or “there
is a paper that is prior art to my research”).

 Such notebook disclosures would be discoverable
during litigation and could result in loss of patent
rights. As always, scientists should be counseled to
completely disclose the invention and to provide only
absolutely truthful disclosure.


The Invention Evaluation Process...1

 The inventions that will be considered here are early,
“university-stage inventions” arising out of basic
research, rather than development projects.

 Thus, most of these university-stage inventions will
require substantial investments in both money and
time to develop them into marketable products.

 Such investments will usually be very risky since nei-
ther the technology’s technical feasibility nor its
commercial viability will be known with any certainty.

Source: Lita Nelsen (2007)

The Invention Evaluation Process...2

 Technology transfer offices evaluate early-stage inven-
tions in order to make three decisions:

1. whether or not to file a patent on the invention

2. whether to market the invention to existing compa-
nies or try to do a spinout

3. what to charge for the invention


Whether or Not to File a Patent...1

 These three decisions do not usually have to be made
at the same time. Of course, if the answer to the first
question is no, then the other two questions are moot.

 If money for filing patents is available but limited, the
decision to file a patent should take into account an-
swers to the following questions:

1. Is this invention likely to get awarded a patent with
broad enough claims to protect a product or a prod-
uct line—not just a minor variation of an existing
technology?



 The decision to file a patent should take into account
answers to the following questions:

2. If patented, will this invention likely attract a licensee
or investment for commercialization that will produce
enough of a return to the institution to justify the
patenting expense?

3. Is patenting the right route to maximize social
access to the technology?



 The answer to the first question on patentability is
fairly easy to determine with relative (though not
absolute) certainty. If time allows, a search of the
literature that includes past and published pending
patents will reveal prior art.

 When possible, this search is best done by a pro-
fessional search librarian working side-by-side with
one of the inventors.



 If potentially important prior art is found, a patent agent
may be called in to evaluate its significance and the
likely claims to be achieved by patent filing.

 The prior art search may also turn up dominating pat-
ents that may have to be taken into account.

 The second question — will the technology attract in-
vestment for commercialization if it is patented — is far
more difficult than the first to answer with any certainty.
Market research studies take both time and labor.


On the Market for the Invention...1

 If the technology transfer office receives many inven-
tion disclosures, there will not be enough resources to
perform a market research study on every one.

 In addition, there may not be enough time for such a
study before publication (particularly in academic insti-
tutions with a policy against delaying publication for
patenting or other commercial reasons).

 The requirement for confidentiality before patenting
also limits the depth of any market research study.



 The more innovative the invention, the harder it is to
get good market feedback. Potential users of new
technology cannot easily judge the value of something
they have never thought about before.

 Business histories are replete with gross underestima-
tions of the potential of innovative products (e.g.,
photocopy machines and home computers).

 Innovative inventions from basic research in universi-
ties should expect to suffer similar challenges.



 So what is a technology transfer office to do? Below
are some questions to consider. They will be an-
swered, for the most part, through

● discussions with the inventors,

● some library work perhaps,

● some discussions with potential users or investors
maybe, and

● the experience and judgment of the technology
transfer staff


 It will be important to try to answer these ques-
tions about what the market for the invention
might be:

● What need does this invention satisfy? Is
this a major, well-recognized need or a minor
one?

● How is this need being met now? Or is it
satisfied at all?



 What the market for the invention might be: (2)

● What size is the market? Huge, large, small,
miniscule?

● Is the market already established, or will it
need developing?• Is this a growing field or
a dying one?


On the Nature of the Technology...1

 The institution will need answers to these
questions about the new and existing techno-
logy and how to develop the invention: (1)

● How would this technology change how the
market presently addresses the need?

● Is the new technology not only different from
what is already available, but better? If
better, what are the major benefits it offers?


On the Nature of the Technology...2

 Questions about the new and existing techno-
logy and how to develop the invention: (2)

● How certain is it that the technology will
work? Can this be demonstrated to a
potential licensee or investor?

● How long and how much money will it take
to develop the invention into a commercial
product?

The Role of the Inventor in Technology Transfer

► Prepare and Submit Invention Disclosure

► Help Identify Potential Licensees

► Assist in Developing Marketing Materials

► Participate in Patent Preparation and Prosecution
(sporadic but long-term)

► Present to Potential Licensees/Developers

► Be available for continued support post-transaction

Questions about the Inventor...1

 Inventor participation in the development of university-
stage technology is usually critical. The inventor is
most familiar with the technology and is most likely to
have a vision for its use.

 Some inventors (particularly students or research
associates) may wish to leave the research institution
and join (or help form) a company.

 Most professors or senior researchers, however, will
probably choose to stay at the research institution, al-
though they may consult or work part time for the
company developing the invention.


 On the other hand, if the inventor has no interest in
seeing the technology developed and will not help to
market the patent, these tasks can be hopeless.

 The following questions should be considered to de-
cide how effective the inventor might be in finding a
licensee or investor for the technology: (1)

● Is the invention in the inventor’s major field of
research? If not, is he or she at all familiar with the
market’s needs for the invention?



 Questions on how effective the inventor might be in
finding a licensee or investor for the technology. (2)

● Does the inventor have business connections in the
field of the invention? Is the inventor famous? (It’s a
lot easier to market a patent with a Nobel Laureate’s
name!)

● Will the inventor be cooperative in meeting with
potential licensees or investors to share his or her
vision of the invention’s potential and the means of
developing it?


 Questions on how effective the inventor might be in
finding a licensee or investor for the technology. (3)

● Does the inventor have realistic expectations about
the magnitude and uncertainty of the development
task and the potential financial returns?

● Can relationships with investors or companies
proceed reasonably or is the inventor too naïve or
overly paranoid?


The Process of Appraising a University/Government Invention

INVENTION RECEIPT BY OFFICE OF
INVENTION PREDISCLOSURE
DISCLOSURE TECHNOLOGY TRANSFER

REVIEW BY TT
COMMITTEE

TECH APPRAISAL BY ASSESSMENT BY OTT OF
AD HOC PANEL OF PATENTABILITY &
REVIEWERS COMMERCIALIZABILITY

DECISION OF
TT COMMITTEE

RELEASE TO RELEASE FOR HOLD FOR PURSUE TEST THE
INVENTOR FOR DISSEMINATION FURTHER PATENTING MARKET
PUBLICATION OR OR EXTENSION EVALUATION
WORKSHOP SERVICE

By the way,

 WHO REALLY INVENTED
THE FLUORESCENT LAMP?

 WAS IT A FILIPINO BY THE
NAME OF AGAPITO FLORES?

WAS IT REALLY A FILIPINO, AGAPITO FLORES,
WHO INVENTED THE FLUORESCENT LAMP?

The invention of the fluorescent lamp is credited to the
following inventors:

 The American inventor, Peter Cooper Hewitt (1861-
1921), who obtained a patent (US Patent 889,692) in 1901
for the first mercury vapor lamp – now acknowledged to
be the very first prototype of the modern fluorescent
lamp.

 The German inventors (Edmund Germer, Friedrich Meyer,
and Hans Spanner) who got a German patent in 1927 for
Spanner
a “low-voltage metal vapor lamp” but did not pursue its
commercialization.

WAS IT REALLY A FILIPINO, AGAPITO FLORES,
WHO INVENTED THE FLUORESCENT LAMP?

 The American chemist, George Inman, who led a team
of GE scientists and engineers that succeeded in
designing the first practical and viable fluorescent lamp
in 1934 and who was awarded a patent for it in 1941 ( US
Patent No. 2,259,040). This modern fluorescent lamp
was commercialized by GE and first sold in 1938.

 There is no patent record or documentation, in the
Philippines or abroad, of an Agapito Flores inventing
the fluorescent lamp.

 And it is not true that the word “fluorescent” is derived
from Flores.

201 2-b intro-invention_management

Recomendados

Recomendados

Mais conteúdo relacionado

Semelhante a 201 2-b intro-invention_management

Semelhante a 201 2-b intro-invention_management (20)

Último

Último (20)

201 2-b intro-invention_management