Counsel to Counsel - March 2009 - (Page 6) best practices Using Incentives to Spur Patent Development LAUREN C. BRUZZONE | IBM Lauren C. Bruzzone is senior group IP counsel for IBM’s Global Services Group. She recently co-chaired a Counsel to Counsel forum on building, managing and defending intellectual property portfolios. She can be reached at bruzzone@us.ibm.com. implementation steps Patents are among a corporation’s most valuable assets. Yet, evaluating patent disclosures and filing applications is expensive and timeconsuming. The process requires substantial time and effort from employees, including those who created the invention, as well as their peers and other internal parties. situation • Establish incentive programs that will motivate inventors to work closely with IP counsel. • Provide a cash award for successful patent applications. • Include lunch, a memento and an article in the company newsletter. • Award mementos that will be kept in the individual’s office, thereby establishing “bragging rights” for the inventor. • Establish a “Master Inventor” program that recognizes not only prolific inventors, but also those who assist you with internal peer reviews, mentoring and patent infringement cases. IP counsel can promote new patent development by implementing incentive programs that reward inventors who participate in all aspects of what is often an arduous, time-consuming process. The incentives must be strong enough to motivate inventors to want to volunteer their time. challenge in-house counsel IBM rewards inventor participation in all aspects of the patent development process. If a new patent disclosure fits the company’s IP strategy, a patent attorney oversees a confidential, internal peer review. Other IBM inventors familiar with the process voluntarily review the disclosure and point out areas needing clarification. approach adopted patent process. At IBM, inventors receive credits for successful patents, other disclosures that are either published or not pursued, and the hours they put into mentoring, peer reviews and/or helping the department defend cases of patent infringement. Master Inventors are then nominated, reviewed and chosen by IP counsel. A professional photographer shoots their portraits, which hang on a wall-sized “Master Inventor” display at IBM’s R&D headquarters. The inventors’ photos and biographies are also posted on a special internal Web page. This extremely popular program recognizes the tremendous value inventors bring to the IP table and strengthens the all-important bond between IP counsel and IBM’s inventor community. If the invention passes this test, an outside patent attorney will search for pre-emptive prior art. Should the disclosure pass this review, the filing process begins and a cash incentive program for the inventor(s) kicks in. Cash awards are important because in addition to the peer review, you need the inventor’s assistance in preparing the patent application, as well as in the prosecution. Consider giving half at the filing stage and the balance at issuance. Include lunch, a small memento and an article in the company newsletter. Choose the memento wisely. Plaques and coffee cups trump T-shirts and clocks because they 1) stay in the office and 2) are visible to passers-by, thus creating “bragging rights.” Recognize/reward other forms of participation as well. Sponsor a contest for innovations in a specific area or a mentoring program for new inventors, and award a memento to anyone who participates. On a grander scale, consider implementing a “Master Inventor” program that recognizes inventors who regularly participate in all aspects of the A successful incentive program will result in a continuous stream of new ideas that strengthen your IP portfolio, contribute positively to the company’s bottom line and enhance its reputation within its industry. measuring success 06 LexisNexis® Martindale-Hubbell® http://www.martindale.com/Lauren-C-Bruzzone/561826-lawyer.htm http://www.martindale.com/Lauren-C-Bruzzone/561826-lawyer.htm http://www.martindale.com/xp/legal/Professional_Resources/Counsel_to_Counsel/Forums_2008/boston_November.xml http://www.martindale.com/xp/legal/Professional_Resources/Counsel_to_Counsel/Forums_2008/boston_November.xml
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