You too can patent!

Alka is Senior Information Developer at BMC Software, Pune, where she designs and develops content for products in the Performance and Availability division. An engineer by education, she has a little over ten years of experience in technical communication.

Alka Acharya
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Samartha is Senior Content and Community Lead with Adobe Systems, where he's primarily responsible for planning and delivering Help content for Photoshop, Lightroom, and Creative Cloud services. Samartha has previously spoken at international conferences on topics such as web communities, visual communication, and globalised content. Beyond work, Samartha is a published creative writer.

Samartha Vashishtha

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As a technical communicator working at the crossroads of technology and business, you're ideally positioned to file patents. Tweet this

Reasonably or not, patents have become the barometer of innovation across industries. Corporations and individuals file thousands of patents every year to protect their inventions. Patent wars embroiling industry behemoths consistently make headlines in the media. In the pharmaceutical industry, the wars get murkier when the patent institution is called out as a factor that prevents some life-saving drugs from becoming affordable. Many file them, a few hate them, but nobody can deny the importance of patents.

It is not surprising, then, that as technical communicators, we often overhear our developer counterparts talking enthusiastically about some patent they've filed or some idea that they aspire to develop into a patent submission someday. And that leaves us wondering what does it really take to file a patent. Does one have to be a geek, immersed neck-deep in technology, to file patents or does patenting require a rare mix of skills?

In this feature, we try to impress upon you that technical communicators, who often work at the crossroads of technology and business, are ideally positioned to conceive patentable ideas and file cogent idea submissions. Seeing is believing, so we bring you an inspiring interview with Jana Jenkins, a master inventor who has filed a little over 30 patents so far in her distinguished career as a communications professional. Intrigued? Read on.

What is a patent?

Patents, by their very nature, are a legal concept. Wikipedia defines a patent as a "set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. An invention is a solution to a specific technological problem and is a product or a process." Patents are a form of intellectual property; they are to technology what copyright is to creative work. All forms of intellectual property, including patents, protect the author's right to benefit from her work, so that intellectual quests are incentivised by design.

Typically, a US patent grants exclusive rights to the inventor for a term of 20 years from the date of filing or 17 years from the date of patent issue. Patents are jurisdictional in nature and they're generally only applicable within the territory of the country of filing. However, international treaties, such as the Patent Cooperation Treaty, exist to help inventors protect their work across national boundaries.

In a corporate setup, employees often assign rights associated with their inventions to their employer in exchange for an inventor's bonus. Patent filing is an expensive process, so most corporations have elaborate internal checks in place to ensure that only the finest ideas from within the company make it to the government patent office. This filtering of ideas lends great prestige to the interim accomplishments of "internal approval" and patent filing. The actual issue of the patent, after due evaluation by the government patent office, generally happens years later.

Good patents can add to the sum-total of documented human knowledge. The inventor's name remains recorded in the patent database for all eternity. Therefore, many inventors are driven to filing patents as a means to immortalise their work.

What makes an invention patentable?

For an invention to be patentable, the patenting laws require that the invention is:

Novel or unique

The invention must have some aspect of originality or uniqueness that is not already existing in the field or domain of the invention. And, no prior art1 identical to your invention must exist.

Non-obvious

The invention must include a "non-obvious" element or an inventive step that has not been determined by anyone as yet.

Useful

The invention must not be only theory-based but should have some relevance in the real world.

Well-defined

The invention must be explainable enough for any person from the field or domain of the invention, to understand and replicate.

Patent-eligible

The invention must not belong to a subject area that is excluded from the list of patentable subject matters in the country of submission. For example, business practices hold a high chance of being patentable in the USA, but might not be as easily patentable elsewhere.

Remember that these are generic and common requirements. Patent laws or practices of countries differ from one another. A country could have its own specific requirements that are not stated here. For specific information, see the patent laws of your country or of the country where you are filing the patent in.

An inventor's journey - From invention to patent

The first step towards patenting is having an idea in mind. Before proceeding with drafting and filing the patent, you must ensure it is patentable. Begin with a general search on the web to check if the idea you have in mind is implemented in some form. If you're thinking of filing the patent as an employee of an organisation, do follow all internal guidelines while performing such a search. For example, your organisation may dissuade you from searching for and reading external patents, so that those web searches are not cited as evidence in any future patent litigation.

Once you have confirmed that your invention is patentable, you can embark on the journey to patenting. The main stages of the journey are as follows:

To know more, click the numbered boxes.

Remember that the specifics of the process might vary depending on your country and organisation.

1. Describe the invention

The invention description should cover at least the following points:

  • What is the invention?
  • Why is it unique?
  • How can it be used?
  • What are its benefits?

Include diagrams and illustrations to enhance the explanation.

2. Submit the invention internally

Submit the invention in your organisation's internal patent management system (IPMS). If your organisation does not have an IPMS, contact either your manager or your legal department to find out how to proceed. If you are not working for an organisation or your organisation will not file your invention, try selling your idea to private or angel investors (but read the fine print carefully - both of your employment contract and of the private investors).

  1. Understand the internal process. Refer to information on the intranet, or talk to existing inventors, mentors, managers, colleagues, or contact IPMS.
  2. Draft the application. Use the invention definition to create the draft. The IPMS may have a format that you need to use. If not, ensure that your draft contains at least the following sections:
    • Title
    • Abstract
    • Benefits and uses
    • Novelty aspects - What is unique about this idea?
    • Workflow of use with a diagram
    • Inventor details
  3. Submit the application and then, keep your fingers crossed!

3. Coordinate with the internal patent management group

Typically, an organisation's internal patent management system (IPMS) has patent attorneys and inventors who examine all incoming applications.

They check the application to ensure all required information such as abstract, applicant information, is present. They perform a rigorous search for any prior art by using keywords that best define the invention. While examining the application, the patent management group contacts you to seek clarifications and to ascertain their findings.

After careful evaluation, the group decides whether the invention will be Published, Filed or Rejected.

The Publish option is chosen when the attorneys believe that the invention has value but they are not convinced about it being patentable. In this case, the invention definition is published on the organisation's website. It has terms and conditions on whether and how it can be reused or copied by other organisations.

If you receive a confirmation that your invention will be filed, then half your job is done. The patent attorney will now draft the patent application to be submitted at the country's patent office.

If application is rejected, do not get dejected. Keep ideating!

The experience surely would add to your knowledge and prepare you in your next attempt.

4. Assist the attorney to draft the application

The patent attorney uses the invention description to prepare the patent application.

Trust the skill, judgement, and experience of the patent attorneys and cooperate with them. Patenting is a complex process that involves legalities. The claims in the patent application must be carefully drafted because they form the most critical aspect of the patent.

The patent attorney shares the drafts and the final version of the application with you for review, before it is submitted.

5. File the patent

The patent attorney submits the patent application in the country's patent office. Typically, the organisation's origin country is where the patent is filed.

When you are seeking patent protection for the same invention in many countries, you do not have to file your application in those countries at the same time. As per "priority right", once you file a patent application in a country, you are entitled to claim priority for a period of twelve months and the filing date of your application is considered the "priority date" when you apply for protection in other countries. For more information, see https://en.wikipedia.org/wiki/Priority_right.

6. Await the result - grant or reject

After a patent application is filed, all you can do is wait! The process henceforth is completely out of your control. The application undergoes an examination by the attorneys at the patent office. The attorneys confirm the patentability of the application.

Within 18 months from the filing date, your application is made public by publishing it on to a Publish Portal. The application can then act as a prior art against any future patent applications on similar inventions from other inventors or organisations.

Finally, the patent office grants the patent or rejects it. Typically, the result is declared anytime between one to four years from the filing date.

Exclusive interview with IBM Master Inventor Jana Jenkins

Jana Jenkins is a Master Inventor at IBM, and chairs its Interface Technologies Invention Development Team. Jana is from our own Technical Communications industry and has been inventing for over a decade. She graciously agreed to answer a few of our questions about innovating and patenting.

Please tell us a little bit about yourself.

Currently the Corporate Manager of our WW Information Development community. I've been inventing since 2003. Over the past eight years, I have chaired the Interface Technologies Invention Development Team (IDT), which is responsible for reviewing invention disclosures around the topics of UX, translation, widgets, mobile interface, ID, accessibility, input technologies, multimedia, visualisations, and the like. I became recognised as an IBM Master Inventor in 2005.

How did your innovation journey begin?

I asked a colleague about inventing. I did not think I could participate because I wasn't a programmer. He made time to explain the process to me and encouraged me to participate. I woke up the next morning with an idea forming in my head. I put the idea together and my colleague introduced me to an IP attorney and asked him to review my initial writeup since I was just getting started. He suggested that it was really three separate inventions and my first three patents came from that review.

Please tell us something about your patents. Were they all related to the Technical Communication domain?

No, they range from security, to content, to UI interactions and so on.

What was your first patent about?

A system that analysed messages.

How do you get ideas?

From everyday problems, talking to colleagues, client problems, watching TED videos and reading other inspiring information.

Is there a process that you follow?

Not really a process, more of a heightened awareness when I think something is a problem, or I hear others mention problems they are having. Then I try to think of a solution.

Do you have a fixed team of people you work with?

I have several brainstorming teams that meet regularly to discuss ideas or problems. It's always fun to work with new folks, and I'm always willing to bounce around ideas with anyone who is interested.

Any patenting disappointments that you'd like to share with us?

Not really, I guess the biggest disappointment is when you think you've come up with something novel and you find it isn't. But then you try to see if you can add to the existing art or move on to another idea.

Which part of the patenting process is most challenging?

Probably just waiting for the attorney to come back with a final "File" decision.

Do you think Innovation = Patents?

Innovation is a change, a breakthrough, an alteration. Sometimes, from a technical perspective these changes are new to the world and then they can result in patents.

What should an organisation do to encourage innovation through patenting?

Encourage brainstorming teams (3-4 people), schedule a Master Inventor or someone really familiar with the process to present and answer questions and encourage participation. Recognise participation in the process as well as a successful patent filing.

What is the value of being an inventor?

You are more aware of opportunities for change. It allows you to express creative freedom in your day. Your name is associated with a new and novel creation forever. It helps your career to be recognised as contributing to the company's IP portfolio. You broaden your network with other creative people.

Does being a Master Inventor help you in your day-to-day job?

It can help you connect with other inventors and creative people to solve problems in your respective area of business.

Which is your favorite filed patent?

Patent: US8375459 Frequency Based Age Determination

How can one be an inventor?

Just start brainstorming and looking for problems to solve. Team up with other inventors who have been through the process so you can learn from them.

What are the key things that you would like to tell the enthusiasts who want to try their hand at filing a patent?

Don't be afraid to begin and don't be overly critical of what you come up with. Frequently, new inventors have a tendency to say "this can't be new, somebody must have already thought of it.

What if the organisation does not support or have a system in place for patent filing?

If innovation is important to your company, it might be helpful to speak with management, executives, or someone in the IP Law department about the benefits of innovation and inventing. Holding patents protects your company's freedom of use and can provide a new source of licensing income if your patents are important to your industry.You can suggest a pilot where an Invention Development Team works with IP Law and reviews the ideas or invention disclosures that get submitted. Set some goals, provide incentives, and see what comes of it. Be willing to lead the effort.

What is your "mantra" that keeps you going?

I'm not sure I have a mantra — I'm just always ready to think and talk about the next great idea.

Any quick tips for us?

Get going, be creative, search for prior art, believe in your idea, and have fun!

Footnotes

1. As defined in Wikipedia, "Prior art, in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality."

2. Alka, along with three co-inventors, has one filed patent, United States 14/817296: Deduplication by phrase substitution within chunks of substantially similar content.

3. Samartha has three filed patents:

Related

Shivi Subramanian shows you how to ideate: Awaken the innovator in you.

Examples of UI-related patents

References

Acknowledgements

The images for the five requirements of a patent, and the icons in the process flowchart are from http://www.freedigitalphotos.net/. The process flowchart itself is the author's.

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You, too, can patent

Written by Alka Acharya and Samartha Vashishtha. Narrated by Nibu Thomas.

The narrator, Nibu Thomas, works with the technical publications team at GT Nexus, an Infor company. He's passionate about communications of any kind, and likes to think that the funny bone somewhere in his head has helped him stay out of trouble. In his attempts to think outside the box, he might have inadvertently opened a few. Pandora, especially, is still livid. He has many interests, but most of them are unprintable. Yes, even in an online edition.