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  • 1. 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
  • 2. THE NATURE OF INVENTION
  • 3. DEFINITION OF INVENTION...1“INVENTION IS THE CREATIVE PRO-CESS IN WHICH NEW LOGICAL WAYSARE IMAGINED TO MANIPULATENATURE FOR HUMAN PURPOSES.”
  • 4. DEFINITION OF INVENTION...2 “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.
  • 5. DEFINITION OF INVENTION...3“TECHNOLOGICAL INVENTION CONSISTS OFIMAGINING THE SELECTION OR CONSTRUCTION OF APARTICULAR PHYSICAL STRUCTURE AND THEARRANGING FOR THE SEQUENCES OF PHYSICALPROCESS IN THE STRUCTURE TO CORRELATE WITHTHE SEQUENCES OF A LOGIC SET OF OPERATIONS.”“The secret of any technology is the invention of aphysical structure whose processes can bemapped in a one-to-one manner with a logicaloperation of a functional transformation.”
  • 6. 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.
  • 7. Stages in the Invention Process...11. Finding an idea ● What can I invent? ● What problems are there to be solved? How to Look for an idea ● Brainstorming ● Invention Idea Survey
  • 8. Stages in the Invention Process...22. 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?
  • 9. Stages in the Invention Process...33. Problem Formulation ● Formulate a "problem statement” that expresses the "heart" of the situation.
  • 10. Stages in the Invention Process...44. Possible Solutions Finding ● Generate as many ideas or alternatives as possible for dealing with your problem statement. ● Dont evaluate your ideas at this point, merely list them as an idea pool from which youll draw in putting together a variety of solutions to your problem ● Tools for generating solutions
  • 11. Stages in the Invention Process...55. 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
  • 12. Stages in the Invention Process...66. Construction of Prototype ● Choose materials to be used ● Purchase/Collect materials ● Build your prototype
  • 13. Stages in the Invention Process...77. Test, Modify, and Evaluate Prototype ● Test your prototype ● Modify/Improve your prototype ● Evaluate your invention
  • 14. 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.
  • 15. Invention Disclosure
  • 16. 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
  • 17. 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. Source: University of Pittsburgh Guide
  • 18. 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. Source: University of Pittsburgh Guide
  • 19. 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. Source: University of Pittsburgh Guide
  • 20. 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. Source: University of Pittsburgh Guide
  • 21. 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. Source: University of Pittsburgh Guide
  • 22. 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. Source: University of Pittsburgh Guide
  • 23. The Invention Disclosure Process...2 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. Source: University of Pittsburgh Guide
  • 24. The Invention Disclosure Process...3 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. Source: University of Pittsburgh Guide
  • 25. The Invention Disclosure Process...4 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
  • 26. 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.
  • 27. UP Diliman Invention Disclosure Form…11. 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.
  • 28. UP Diliman Invention Disclosure Form…23. 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.)
  • 29. UP Diliman Invention Disclosure Form…34. 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.
  • 30. UP Diliman Invention Disclosure Form…45. 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.
  • 31. UP Diliman Invention Disclosure Form…56. 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.
  • 32. UP Diliman Invention Disclosure Form…68. 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 dissemi- nation 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 stu- dents within the U.P. Diliman community does not count as disclosures.
  • 33. UP Diliman Invention Disclosure Form…79. 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).
  • 34. UP Diliman Invention Disclosure Form…810. 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.
  • 35. UP Diliman Invention Disclosure Form…911. 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 com- pany 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.)
  • 36. UP Diliman Invention Disclosure Form…1012. 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.
  • 37. 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)
  • 38. Laboratory Notebooks as Invention Disclosures...2 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. Source: David McGee (2007)
  • 39. Laboratory Notebooks as Invention Disclosures...3 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. Source: David McGee (2007)
  • 40. Evaluation of Inventions
  • 41. 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)
  • 42. 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 Source: Lita Nelsen (2007)
  • 43. 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? Source: Lita Nelsen (2007)
  • 44. Whether or Not to File a Patent...2 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? Source: Lita Nelsen (2007)
  • 45. Whether or Not to File a Patent...3 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. Source: Lita Nelsen (2007)
  • 46. Whether or Not to File a Patent...4 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. Source: Lita Nelsen (2007)
  • 47. 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. Source: Lita Nelsen (2007)
  • 48. On the Market for the Invention...2 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. Source: Lita Nelsen (2007)
  • 49. On the Market for the Invention...3 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 Source: Lita Nelsen (2007)
  • 50. On the Market for the Invention...4 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? Source: Lita Nelsen (2007)
  • 51. On the Market for the Invention...5 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? Source: Lita Nelsen (2007)
  • 52. 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? Source: Lita Nelsen (2007)
  • 53. 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? Source: Lita Nelsen (2007)
  • 54. 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
  • 55. 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. Source: Lita Nelsen (2007)
  • 56. Questions about the Inventor...2 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? Source: Lita Nelsen (2007)
  • 57. Questions about the Inventor...3 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? Source: Lita Nelsen (2007)
  • 58. Questions about the Inventor...4 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? Source: Lita Nelsen (2007)
  • 59. The Process of Appraising a University/Government Invention INVENTION RECEIPT BY OFFICE OFINVENTION 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 MARKETPUBLICATION OR OR EXTENSION EVALUATION WORKSHOP SERVICE
  • 60. By the way, WHO REALLY INVENTED THE FLUORESCENT LAMP? WAS IT A FILIPINO BY THE NAME OF AGAPITO FLORES?
  • 61. WAS IT REALLY A FILIPINO, AGAPITO FLORES, WHO INVENTED THE FLUORESCENT LAMP?The invention of the fluorescent lamp is credited to thefollowing 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.
  • 62. 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.
  • 63. - End of Presentation -