Archive for 360 IA
I’ve noticed that many companies tend to emphasize patents in their IP strategy. Sometimes that’s almost all they consider. Sound IP strategy, however, requires applying a variety of tools. A broad approach to intellectual assets is more important than ever. Patents of various kinds, trademarks, trade secrets, copyright protection, and low-cost publications can all play a useful role.
Utility patents can protect your products, their components, the machines for making them, the methods of making them, and methods of using them, among other things. Design patents can protect aesthetic elements. Copyrights can protect commercial expression (ads, for example) of that function. Trademarks protect the brands that are based on the consumer perception of the product. Packaging relevant to your products may also be protected with utility patents, design patents, trademarks, and copyright.
The power of trademarks in protecting a company is illustrated in a recent case involving Adidas, owner of trademark for a tennis shoe with three stripes on the side. In May 2008, an Oregon jury ruled that Payless Shoes should pay $308 million to Adidas for infringing that trademark. (Payless appealed but subsequently abandoned its appeal after agreeing to an out-of-court settlement with Adidas.) Payless may have hoped to evade the three-strip trademark of German-owned Adidas by using four stripes, but Adidas successfully argued that their stripes create a distinctive mark that is a sign of origin, and that both two-stripe and four-stripe shoes may cause confusion in the minds of consumers. Three simple parallel stripes have become a distinctive part of the Adidas brand. This coverage may last as long as the brand does, unlike the limited coverage afforded by patents. Adidas, of course, relies on both utility and design patents as part of its IA strategy.
In recent years, U.S. trademark rights have been expanded to cover not just traditional logos and names, but to also cover colors, scents, characteristic sounds, and three-dimensional shapes. Examples include:
- Yamaha’s distinct water spout from its WaveRunner® personal water craft. As U.S. Trademark 74321288 states, “The mark is comprised of a three-dimensional spray of water issuing from the rear of a jet propelled watercraft and is generated during the operation of the watercraft.”
- Tiffany’s famous robin-egg blue gift box (US Trademark 75360201).
- Intel’s five musical notes (US Trademark 78721830).
Trademarks can have an unlimited life, unlike the 14-year-life design patents have from the date of filing, or the 20-year life of regular utility patents. Under U.S. law, trademarks can be used to sue both manufacturers and distributors of infringing products.
We recommend that innovators look for creative combinations of both trademarks and patents, as well as other forms of intellectual assets.
One of those other forms can be called “digital intellectual assets,” a broad category that includes domain names. They may be trademarked, but if you don’t own the domain name, you’ll have an expensive battle trying to wrest it from someone else. As soon as you consider candidates for trademarks, quickly register the related domain names. Also consider getting the related Gmail accounts, Facebook accounts, Twitter accounts, Youtube channels, Pinterest accounts, etc. Those are free or inexpensive and can be worth a great deal if your brand name becomes important.
Maybe China is just too far from the smug innovation circles of the West. Maybe language and cultural barriers make the events unfolding in China too inaccessible to Western media. Maybe decades of concern about IP theft from Chinese companies has closed the eyes of the West to present realities. Whatever the reason, the West today seems generally blind to the innovation powerhouse that China is becoming. Witness, for example, the highly publicized list from Reuters-Thompson of the top 100 global innovators, based on “patent activity.” With China having become one of the world’s true hotbeds of patent activity, not to mention economic impact with innovation in many fields, one might expect Chinese institutions to be well represented on the list. Incredibly, the list has ZERO Chinese entities on. None from Mainland China, none from Taiwan, and none from anywhere else in Asia except for a heavy dose of Japanese companies (27) and 4 from South Korea. Tiny Switzerland makes the list 3 times, and its minute neighbor, Liechtenstein, makes the list with Hilti Corporation. But zero from China and Taiwan? The list is related to “patent activity,” but its compilers wisely recognize that patent volume alone is a poor metric for innovation. Instead, they have created other metrics based on patent data:
The Thomson Reuters 2011 Top 100 Global Innovators are companies that invent on a significant scale; are working on developments which are acknowledged as innovative by patent offices across the world, and by their peers; and, whose inventions are so important that they seek global protection for them.
Sounds fair. So sure, the manufacturing and supply chain innovation that has been a big part of China’s economic rise are not expected to make a showing on this list. That kind of innovation doesn’t show up in terms of granted US and European patents. And the tendency for many Chinese companies to mostly file patents in China doesn’t help them with the methodology Thompson Reuters has, which looks for measures of international impact and international patents. But did they miss all the international activity of some Chinese companies? For example, a couple of days before this list of innovators came out, I posted this on LinkedIn and Twitter (@jefflindsay):
Two Chinese companies, ZTE and Huawei Tech., are among the top 5 international (PCT) patent applicants. Lots of IP here! https://is.gd/t2tUb4
OK, so Thompson Reuters doesn’t follow me, but these companies should have shown up strongly in their patent searches. These are innovative companies with products marketed internationally, having strong economic impact, and loads of patents. Being in the top 5 for international filings wasn’t good enough to even place in the top 100 for Thompson Reuters. Huh? OK, it turns out the ZTE’s surge in patent filings is recent and their numbers prior to 2010 were probably too low to make the cut for this study–that’s fair. But Huawei had 445 US patents from 2005 to 2010, a number in greater than some other companies on the list. For 2011, by the way, Huawei isn’t just in the top 5 so far–they are Number One, the world’s leader in international patent filings (see the Nov. 2011 article in the Vancouver Sun). Think they’ll be on the next list of leaders in patent activity Thompson Reuters publishes? Perhaps, who knows?
How about the Liechtenstein firm that’s in the Top 100, Hilti AG. Heard of them? They have good products for the construction and building maintenance industries such as hammer drills and other tools. They have 20,000 employees, including 2,500 in the US, and market products and file patents internationally. For the 2005-2010 time frame of the Thompson Reuters study, Hilti had 327 patents. Not bad. Well below Huawei’s score, but still respectable.
Now let’s consider a little company that was not on the list: Foxconn. Heard of them? They have over 1 million employees and are the world’s largest producer of electronic components, including circuit boards. They are the ones who actually make Apple’s products such as the iPhone and iPad. This Taiwanese/Chinese firm (China considers Taiwan to be part of China, and much of Foxconn’s work is in China) is arguably the real powerhouse behind the success of Apple and several other companies on the Thompson Reuters list. Foxconn builds Apple’s products, and not just as a mindless executor, but as an innovative partner.
Ah, but what about real technological innovation expressed in patents? Surely Foxconn is just about cheap labor and low cost manufacturing, right? A quick search of Foxconn patents granted in the US from 2005 to 2010 shows they have over 700 patents. Some are design patents, but the vast majority are technological. Foxconn apparently is conducting serious R&D and spending millions on patents to find new ways to make leading edge high-tech products better, safer, faster, and cooler (both in terms of heat management and the “wow” factor). I have the privilege of interacting with some Foxconn people and from what I’ve seen and heard I can say that they have a world-class IP program to support innovation, and I feel that they are way ahead of many Western companies in these areas. Foxconn innovation and Foxconn IP may be the real key to Apple’s success. Foxconn innovation is abundantly expressed in patents, not just trade secrets and know how, with an estate twice as big as Hilti’s over 2005-2010 and an economic impact on the global market far in excess of Hilti. But Foxconn doesn’t make the list. How do none of these Chinese companies break into Thompson Reuters’ Top 100? Did they miss the 2010 story, “China Poised to Become Global Innovation Leader,” based on patent activity? That must be from another source they don’t follow.
Nov. 24, 2011 Update: My search on Foxconn patents needs to be updated. Yes, Foxconn has an impressive 700+ US patents for the 2005-2010 period, more than some companies in the TR list. But my search was deficient, failing to consider that many Foxconn patents might have been filed under the real name of the company that owns Foxconn, Hon Hai Precision Industry Co., Ltd. So I expanded my search term to be “Hon Hai Precision” or Foxconn. Now, instead of 700 patents, we’re looking at a massive estate of 5,872 US patents (perhaps a couple dozen more when typographical errors are considered). This estate now dwarfs MOST of the companies on the list such as Brother Industries (2873, searching for Brother Ind* or Brother Kogyo), BASF (2771, searching for BASF or Bayerische Akt*) Goodyear (1152), ABB (948), Airbus (926), Avaya (<600), Arkema (205), Cheil (116), etc. Oh, and what about innovation giant Apple Compute? A search for simply “Apple” (which might include some smaller companies unrelated to Apple Computer) returns 1809 issued US patents from 2005 to 2010, less than 1/3 of the US patent activity of the invisible innovator that makes Apple what it is.
Let’s return to Huawei for a moment. There should be little doubt about the innovation prowess of Huawei, even though they tend to be far more secretive and do much less P.R. than Apple. But this telecom company is big (with over 100,000 employees, they connect 1/3 of the world’s cell phones) and highly innovative. Read, for example, BBC’s story, “Innovation in China: Huawei – the secretive tech giant.” Maybe the Thompson Reuters methodology docks them for being on the young side. Over half of their 445 US patents from 2005 to 2010 came in 2010–but they still clearly outpace Hilti and others over the 5-year span of the study. So what gives? I suspect that the youthfulness of the estate means there has been less time for others to cite Huawei patents, and that may be part of the problem since patent citations are part of the methodology. But to miss Huawei completely?
Thompson Reuters will surely argue that their methodology was developed and implemented fairly, even blindly (a fair term), but someone should have immediately seen that something was wrong if top international filers and innovators like Huawei, and Foxconn didn’t make the list. But when it comes to innovation, innovation in China tends to be largely invisible to Americans, who are stuck in the old paradigm of US being the innovation leader and China just being a copier. That kind of blindness will catch the West by surprise in the very near future when US companies find themselves facing numerous patent barriers from the Chinese companies that will own much of the most valuable IP. China is creating and will create much of the most important global innovation for the future. Innovation needs to ramp up in the West in order to not be left completely behind.
Dec. 8 Update: Chinese computer giant Lenovo, the world’s 2nd largest producers of personal computers, may also deserve to be on the list.
- IAM Blog: “The US, Japan and France dominate new listing of the world’s most innovative companies“
- Nielsen.com: “Nielsen China Forum: Dispelling the Myths of Innovation in China“
- China Law Blog: “Innovation In China. It’s Happening, But Not How You Think“
- Tech Crunch: “Thomson Reuters Names ‘Top 100 Global Innovators’“
In May 2010 I was invited to speak at a conference of WTA (the Wisconsin Telecommunications Association) about innovation lessons for the telecommunications industry from our recently published book, Conquering Innovation Fatigue (John Wiley & Sons, 2009). Here is a condensed version of the presentation. I’ll do another Pixetell soon with some additional content.
Can’t help mentioning this: I had a technical problem with the above Pixetell and sent an email to their tech support team. I had a response within minutes. In fact, I had a phone call – the kind that takes real people using real time – and the quickly helped me troubleshoot the problem and get this post working. Wow! Miracles still happen–or at least great customer service. Love Pixetell. Great way to turn PowerPoints or whatever you have on a computer plus your voice into a recorded presentation that you can share with a URL, embed into a blog, or save as a movie. Pixetell is a product of Ontier, Inc.
“Who’s mining the shop?” This is a question that needs to be asked for every university, company, and organization capable of creating inventions. In my corporate and academic experience (am the former Corporate Patent Strategist at Kimberly-Clark Corp., and was a professor before that), numerous inventions never get the protection they deserve because nobody was there to coach the inventors, to recognize the potential for intellectual property, and to do the extra work required to develop a sound IP strategy for the work. Many inventors know almost nothing about intellectual property. Many don’t even recognize that what they have developed is an invention. This can be especially true in businesses when the invention is developed outside of a normal R&D department, such as a new business method or software tool. But even research scientists and professors may miss the patent potential of their work unless there is someone there to coach and guide them. Technology transfer offices are charged with this task in many universities, and legal departments or patent review boards have this duty in many companies, but both can miss huge opportunities unless there is someone who goes out to mine the organization for inventions. That involves reaching out to groups and individuals, educating them (often in presentations or group meetings) about intellectual property, being available for one-on-one discussions, asking questions, looking for signs of exciting developments, being an advocate and mentor, and constantly mining for IP gold.
One of the many exciting experiences I had at Kimberly-Clark came after recognizing that a particular remote mill had developed some clever solutions to a few problems they were facing. After further inquiries, I learned that the mill had some very bright engineers who were solving lots of problems in clever ways. I suggested that there may be some patent opportunities coming out of that mill, and arranged a trip to spend a couple days there giving presentations and doing interviews of team members to see what they might have. I found many exciting and potentially patentable advances from their work, and ended up working with them to generate nearly a dozen invention disclosures, several of which were filed as patents. This created a lot of excitement for the mill and helped them pay more attention to the IP potential of what they were doing.
As with that mill experience, part of successful mining involves helping people write up the initial invention disclosure. When people are very busy and writing disclosures doesn’t fit their job description, someone needs to be the assistant/mentor who basically writes it for them, taking away the pain of the IP process. It requires resources, but it can lead to substantial returns.
Look over your organization and consider what you could achieve by applying some additional resources to help generate IP through proactive mining. It’s something we can help you with at Innovationedge. Something I personally really enjoy doing. And I consider it an important step toward overcoming innovation fatigue in some organizations.
Who’s mining the shop? Great question.
While our book, Conquering Innovation Fatigue, has a lot to say on innovation and managing innovation, we also have important sections on intellectual asset strategy. An entire chapter, for example, is dedicated to intellectual asset tools for dealing with disruptive innovation.
One of the key concepts we discuss is what we call “360 IA” (three-hundred and sixty degree intellectual assets). The 360 IA approach considers the full scope of intellectual asset tools for protecting your innovation. Patents are just a part of that, and even then, we challenge you to think beyond conventional process and product patents, also considering unconventional approaches that might fall within the realm of “business method patents.” Don’t overlook design patents, either. (See PatentlyO’s discussion of Google’s design patent for its homepage layout.) Make sure that your patents tell a story that lines up with your marketing story. Are the unique selling points of your concept also directly in the focus of your patent strategy? Moving beyond patents, there are creative things that can be done with other forms of intellectual assets such as trademarks. Creative trademark applicants have found protection not just for the appearance of the product per se, but for secondary aspects such as the characteristic water spout of Yamaha’s WaveRunner® personal water craft (U.S. Trademark 74321288).
Defensive publications are one of the most-effective and routinely neglected intellectual assets. I discuss them in the SharpIP.com post, “Are You Neglecting the Power of Defensive Publications?” If you are like most people and most corporations, the answer to that question is probably yes. Millions of dollars of headaches could frequently be avoided or greatly reduced by routinely publishing defensive disclosures aimed at creating prior art regarding minor improvements or seemingly obvious various to your patented technologies, thereby reducing the risk of others creating a picket fence around your own estate that limits your freedom. Potentially disruptive innovations or feared competitive acquisitions, mergers, or new product efforts can also have some of their sting removed through a creative defensive publication program. It’s not easy in typical corporate cultures, and specific actions must be taken to ensure that targeted disclosures are written by capable people and properly screened and tracked. The review phase is especially important, for once you pull the trigger and release the publication to the world, you can’t pull it back and change your mind, as you can with a patent during the months before it is published. My efforts to implement an aggressive defensive publication program at Kimberly-Clark Corporation were an important part of my work there, in spite of having had the title Corporate Patent Strategist. I actually spent a lot of my time working to advance publications and other non-patent forms of intellectual assets.
A 360 IA framework also demands attention to digital intellectual assets. This especially includes domain names, which many great companies tend to overlook, sometimes until it is too late. When you have some proposed names for a new product or service, go ahead and register the domain names ASAP, long before you settle on details and approach launch. They are cheap–unless you let someone else get them first. There are many free digital intellectual assets to consider as well, including YouTube channel names, Gmail accounts, Facebook names, Twitter accounts, Squidoo lenses, etc. Get these early. You don’t need to use them, but make sure you own them for your brands and emerging product concepts.
The great thing about the 360 IA approach is that it helps you proactively craft an intellectual asset estate with more purpose, more agility, and much lower cost than is possible by relying on patents alone. You can create an estate that enhances your marketing strategy. If you are looking to license or sell your technology and IA portfolio to someone else, you can greatly increase the value by presenting a holistic intellectual asset estate that considers many bases and is aligned with your marketing story. It really gives you a chance to shine and be more effective at lower cost.
Think beyond patents. Think 360 degree IA.
(Note:360 IA workshops and analysis are among the services Innovationedge offers.)