Running efficient and effective Patent Board meetings

By Donal O’Connell

Patents
Patents are generally intended to cover products or processes that contain new functional or technical aspects. They are therefore concerned with how things work, what they do, how they do it, what they are made of and how they are made.
Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner’s consent and this protection is granted for a limited period, usually twenty years from the filing date.
A patent is an exchange between the inventor and society, whereby the inventor will allow his invention to be made public in return for receiving the right to forbid others to make, sell, import or use the invention protected by the patent.
Contrary to how patents are often portrayed in the economics literature, ownership of a patent does not give the holder a monopoly to use the invention, but instead ownership of a patent gives the patent holder the right to prevent others from making use of the invention. The difference may sound trivial, but it is not.
A patent is an exclusive right granted for an invention and a patent owner has the right to decide who may, or may not, use the patented invention. The patent owner may give permission for other parties to use the invention, or they may grant a license to other parties to use the invention, on mutually agreed terms. The owner may also sell the right to the invention to another party, who will then become the new owner of the patent.
A patent is a limited property right that the government offers to inventors, in exchange for their agreement to share the details of their inventions with the public, in order to enrich the total body of technical knowledge in the world. This promotes further creativity and innovation in others and therefore benefits mankind as technology is constantly improving.

Inventions and Patent Applications
To be able to file a patent application, one needs an invention, and inventions can be created in any phase or part of business. Most typically it is done during research and development activity within a company but this is not always the case. Inventions can be created internally within a company or they can arise from co-operation between companies or universities.
Every invention requires the realisation of an inventive aspect and this is the element that one is attempting to protect when a patent application is filed.

A Patent Board
A patent board is a formal review meeting, the purpose of which is to evaluate inventions and to determine which ones should be submitted as patent applications. The decision to file a patent application is ultimately a business investment decision, so some kind of professional decision making process is needed.
The actual terminology used within companies and organisations varies with ‘Patent Boards’, ‘Patent Review Boards’ and ‘Patent Committees’ being some of the names commonly used to describe such meetings.
As with any meeting, when they are conducted properly, they can be a powerful management tool, but poorly conducted meetings can be a drain on time and resources, as well as an activity that increases hostility, apathy, and stifles new ideas.
It is therefore imperative that the patent board, as a decision making body, is properly resourced, that the objectives of the meeting are clear to all participants and that such meetings are well planned and organised, in order to run efficiently and effectively, and that there is consistency and transparency throughout all proceedings and decision making.

Membership
The decision about who is to attend will depend upon what you wish to accomplish in the meeting. This may seem too obvious to state, but it is surprising how many meetings occur without the right attendees being present.
Membership of these boards is therefore critical. The Patent Board should ideally comprise of people with diverse skills and competencies, and involve people from the Intellectual Property Department, Technical and Business Units of the company.
All members should add value and contribute to the meeting. Meetings will often fail because participants have not prepared well enough. Consequently, meetings overrun and decisions cannot be made.
Some companies will involve the actual inventors in their Patent Board meetings while others choose not to do so.
The chair of the patent board meeting plays a crucial role in the proceedings. Sometimes this role is held by a representative of the intellectual property department, and other times it is held by a business unit representative, so that they can have ownership of the decision making process in some cases.

Inputs
The actual invention report itself is obvious, but it is not the only input …

• The invention report
• Summary of the invention, including information on the advantages or benefits provided (useful for non-technical Patent Board members)
• Prior art search results and analysis
• Opinion/s of technical experts
• Patentability analysis results
• The ease or difficulty in detecting infringement
• Filing targets (how does this invention help achieve the set filing targets, if such targets exist)
• Rating of the case (if a rating or scoring system is in use)
• Guidance on how such a patented invention would add value to the business

One or multiple patent boards?
Many larger corporations hold multiple patent boards on a regular basis, given the volume of inventions to be reviewed. These patent board meetings are often organised by technology area or business focus, in order to ensure that the individual patent board meetings are focused.

• Patent Board #1 : Technology #1 / Business #1
• Patent Board #2 : Technology #2 / Business #2
• Patent Board #3 : Technology #3 / Business #3

It is usually more effective to have such patent boards organised by technology area rather than by physical location or by business group, as this helps avoid duplication of effort.

What questions are typically asked at these Patent Board meetings?
The obvious question to try to answer is whether or not to file a patent application on the particular invention under review. However, to help to answer that question, some more probing questions will need to be answered:-

• What problem does the invention solve?
• How does it improve over existing solutions?
• Is the invention likely to be implemented by you and/or by others?
• Is it easy to design around?
• Is it easy to detect infringement?
• Does it offer differentiation in the market?
• Does it offer a licensing opportunity/are third parties likely to want to utilise this invention?
• Does it have technology control point potential?
• Does it relate to an Interoperability Standard?
• Does the invention align with the filing targets?
• If protection is required, in which counties is it required?
• Is there likely to be a return on the investment?
• How would such a patented invention add value to the business?

It is important that the decision making process is consistent and transparent.

Decision options
A number of decision options are usually available to the Patent Board:-

• To file a patent application
• To reject a patent application
• To request more information from the inventor
• To keep the invention as a trade secret
• To publish the invention

There may indeed be other decision options made available to the Patent Board as well as those listed above. Some national laws may also impact the decision options available to the Patent Board as these options invariably change from country to country, depending on the country law concerning inventor/employer ownership. It is generally straight forward in the United Kingdom, but more complex in Germany and Finland at least.

Some Patent Boards serve multiple purposes
Many patent boards serve multiple purposes:-

• To evaluate invention reports and determine which ones should be submitted as patent applications
• Setting of time-lines for preparation and filing of the patent applications
• To decide on the foreign filing strategy (in which countries to file)
• To review existing patents due for renewal/annuity fees (continue or abandon)

When to hold Patent Board meetings?
These meetings should be held on a regular basis to avoid a long wait on decisions for rejecting or filing of invention reports and in some jurisdictions there is a time limit in place regarding the making of such decisions. The frequency of patent board meetings will depend on the volume of invention reports being submitted, the backlog, the workload of the intellectual property professionals analysing these invention reports and the availability of the patent board members. Additionally, the quality of the inputs previously defined, the efficiency of the decision making process and the relative importance of the first filing date will also be a consideration.

Automating these Patent Board meetings
Some IP Data Management Systems offer functionality to help automate many aspects of these Patent Board meetings:-

• Meeting scheduling
• Invitations to participants
• Distribution of materials
• Voting to file or not prior to the actual meeting
• Capturing the discussion during the actual meeting
• Recording the decisions taken and the rationale for these decisions
• Informing the inventor/s of the decision taken
• Gathering various metrics on the efficiency and effectiveness of these meetings

A simple web search will highlight the wide range of such systems and although there is this huge choice of systems and tools available which can add value to your Patent Board meetings, I suggest that some thought needs to be given to the selection of any such system.
System selection is best addressed once the Patent Board process is defined. Your first step should be to define and agree how you wish to operate your Patent Board meetings and then to select the systems necessary to support them.

Key performance indicators
Metrics are a set of parameters or ways of quantitative and periodic assessment of a process that is to be measured, along with the procedures on how to conduct such measurement, plus the procedures for interpretation of the results if necessary.
The practice of performance measurement and gathering statistics is often seen as a time consuming chore, but if you don’t know how you are performing how you are you able to identify problems and introduce improvements.
Given the importance of the patent board, it is most important that there are metrics in place:-

• Volume of cases being handled
• Participation rate of Patent Board members
• Pass/fail rate by technology area
• Spread of ratings of cases
• Time taken from invention report submitted to decision taken
• Quality of the inputs as described previously

It is important to note that you generally get what you measure, therefore it is essential to decide upon the correct measures. There are numerous examples of failures due to the incorrect metrics being monitored or rather, the failure to monitor and measure the correct metrics.
While metrics may not be perfect, conducting a series of measurements following the same methodology, which produce evenly flawed results, may nevertheless prove the trend and may prove to be valuable. This is important, as hard measures are sometimes difficult to obtain for soft targets such as quality. The absence of metrics on soft targets may flaw the overall measuring system towards only hard numbers, thereby favouring the hard numbers, such as the volume of cases being handled, at the cost of quality.

Fast tracking certain cases
It is imperative that your invention handling and decision making process can accommodate urgent cases if and when needed, allowing the quickest and most direct route to achievement of the goal of filing a patent application.
The Patent Board should acknowledge how urgent cases are to be fast tracked, and how such decisions are to be made and recorded. Some ad-hoc meetings may be held via e-mail if needed to handle such urgent cases.
It is important to empower your most experienced Patent Attorneys to be able to file urgent applications if and when necessary, for example, an invention to be submitted to an Interoperability Standards Working Group or an invention related to some imminent product launch. However, that Patent Attorney would then need to justify his/her decision at the next Patent Board meeting and ensure that the rationale for such action is documented for future reference.

Feedback to the inventor
Some form of feedback to the inventor, explain the decision of the Patent Board, is imperative if the flow of invention reports is to be maintained, and if good relations between the Patent Department and the inventor community are to be established and kept in place.
On the case specific level, it is important that there is a good professional working relationship between the inventor and the patent professional who is responsible for drafting, filing and prosecuting the case through the patenting process. The inventor should be kept informed of progress as the case progresses and, if for any reason a decision is taken not to progress with the invention through to the patenting process, then that decision should also be explained to the inventor. It is most important to remember that just because an idea is not put into the patenting process it does not mean that it is not a good idea. The establishment of an appeals process is also worth considering.
Most innovative businesses provide rewards and some form of recognition to inventors. There are two main reasons for having a reward and recognition program in place for inventors. The first is that there are legal requirements in certain jurisdictions to take into consideration and secondly and more importantly, a good comprehensive reward and recognition program encourages and motivates innovation and creativity
The components of a reward program may include elements such as financial awards, plaques, patent festivals or celebrations and recognition of the inventor by Senior Management. Other small but simple and effective ways to indicate top inventors are top inventor get-togethers and published league tables of the top inventors within the organisation. The value of a simple ‘thank you’ or ‘well done’ should also not be overlooked.

Final thoughts
The importance of intangible assets is growing, often equalling or surpassing the value of physical assets for a company. The state of the intellectual property of a company determines their share and corresponding influence on the market. The size and quality of a company’s intellectual property portfolio will have a direct impact on several factors, such as the reputation of the company, the level of returns on investments and their access to the market, amongst others. The way a company is valued has also changed considerably. In the mid-70s, approximately 80% of the value of a company was made up of tangible assets, with the remaining 20% being made up of intangible assets. Today this is completely reversed, with intangible assets making up 80% of the value of the company and only 20% being made up of tangible assets.
Patents can be an important subset of a company’s intangible assets. It is therefore imperative that Patent Board meetings, the purpose of which is to evaluate invention reports and to determine which ones should be submitted as patent applications, are run efficiently and effectively. The most efficient meetings are as those which have been well prepared in advance, so that the focus of the actual meeting itself is about the decision.

[This article originally appeared as an INTIPSA TIP.]