Many communications and electronics companies have talented employees who come up with radical inventions. Yet for a number of reasons, these organizations fail to protect and commercialize those designs and inventions. In addition, many companies don’t know how to value their intellectual property (IP).
IP is part of intellectual capital, which includes workforce skills, business processes, customer and business relationships, branding, reputation, and the know-how of employees. All of these factors are required in today’s world of commerce. On its own, IP can be a potential liability if it leads to inventorship disputes or expensive patent litigation. Ideas and inventions provide a company’s heartbeat, but the wider intellectual capital (see the figure) drives growth and sustainability.
For electronics companies, IP plays an important role in the standards arena. Many companies may not realize how vulnerable they may be. Prior to attending standards meetings or to publishing in journals or conference papers, organizations need to understand that they should take advice about when they should patent their inventions and how they should go about it.
Standards meetings comprise R&D personnel from various organizations. For example, telcos may contribute to the development of standards to ensure that their technology is incorporated into those standards. For each standard or proposed standard, there are numerous standards meetings—often as many as five or six per year. The 3GPP wireless standard requires hundreds of meetings per year.
At these meetings, R&D personnel present their recommendations as to how the standard should evolve. Everyone essentially votes or decides on each presentation. If the presenters are “lucky,” the organization will include some if not all of their recommendations into the standard. These recommendations will relate to an organization’s technology and hence to possible patentable inventions.
However, R&D personnel need to be aware of what disclosing their recommendations means to the portion of their company’s patent portfolio that is related to the standard. These meetings inadvertently can be very damaging to the portfolio and hence to their competitiveness.
Most telcos, chipmakers, and consumer electronics manufacturers have very large patent portfolios, which they typically use for cross-licensing purposes. By cross-licensing portions of their portfolios with each other, they can make the latest phones, chips, and electronics that consumers want without fear of infringement issues and expensive litigation from each other.
BUILDING A PATENT PORTFOLIO
Patent portfolios that are worth cross-licensing need patents and/or good pending patent applications. This may seem obvious. But to obtain a patent, an invention has to be, at the very least, new (it has not been made available to the public before the filing date of the patent application) and inventive (not obvious).
An invention is obvious if people skilled in the art (though an “unimaginative” expert in the field wouldn’t even exist), using their common general knowledge, would have found it obvious to modify or adapt the documents that are available to them prior to the filing date of the patent application into effect.
Simply by disclosing their contributions in standards meetings, R&D personnel are potentially making their companies’ technology available to the public. As a result, the technology no longer would be new, and it would become extremely difficult if not impossible to get a patent for it.
If a company wants to boost its portfolio, it should file a patent application before the R&D’s disclosure at the meeting. Although this sounds simple, it isn’t as easy as it seems. Companies need to address two points before they should proceed:
• Have the R&D personnel already sent a proposal of their contribution to the standards committee? If they have, and if the disclosure is not confidential (it may be considered as such depending on the circumstances), then this action could be classed as disclosing the technology to the public. If not, then it’s so far, so good.
• If the company is active in standards meetings, then it is essential for the company’s IP manager to know what the R&D department’s plans are, i.e., when the standards meetings are, who is going, when the draft proposals or recommendations are due, if the proposal is important to the business, and if the proposal should be patented.