"Engineering Management Thought of the Week" Jeff Glass

We are fortunate to have a guest post by MEM alumnus Somana Konganda who works for Amazon.com Inc.  He shares some important experiences and thoughts about intellectual property.  This is particularly important because MEM students many times do not realize how critical this part of their training is.

Post by Somana Konganda

Having after dinner drinks with some Dukies and Jeff in Seattle, we had the following discussion –

Me:  Jeff, I filed two patents with my company recently.

Jeff:  That is cool! What did you think about the experience?

Me:  It was far more exciting than I expected. I have to say, the core IP and Business Law Course I took during the MEMP came back to me!

Jeff:  That is great. Would you write about this? I know future students will want to hear about it

Me:  Alright! I would need some time though…..

So here I am writing about my experience and also trying to pull together anecdotal information that will be useful for those of you in similar situations.  I have also tried to include information on both how you file your patent individually or through your company.

Most of us innovate at our jobs quite often –in large and small ways. We might be working individually or in a team.  But either way, many times these innovations contribute to something much bigger than solving an immediate and specific problem. As Engineering Managers, it is very important to keep an eye out for such opportunities – that you or your teams are solving a problem much larger than what you originally expected. It is our responsibility to ensure that we capture the value of the innovation for our organizations by protecting it. In my experience, the MEMP core IP and Business Law course is designed to provide you with the knowledge and judgment you need to do this.

Protecting an innovation with patents has very high stakes. In the corporate world, a strong patent can equate to billions of dollars of revenue or loss, depending on which side of the patent you represent. I once met an entrepreneur who was forced to ramp-down his $300 million company because he lost a patent lawsuit related to his company’s core technology. It was particularly unfortunate because he was the first to bring the technology to market, but did not file a patent on it. The competitor copied and patented the technology and sued his company. The silver lining is that this guy is smart and he took this as a learning opportunity and is now successful in a different venture. Not all of us will have such a second chance.

As clear signs of how high the stakes are, in the recent past we have seen:

• Google’s purchase of Motorola Mobility for $12.5 billion driven by Google’s perceived need to establish a strong portfolio of patent rights in an attempt to ward-off patent attacks by competitors in the fiercely competitive and growing smart-phone market.
• Microsoft, along with a consortium of other companies including Apple, Research In Motion and Sony, agreed to pay $4.5 billion to buy 6,000 patents from bankrupt Nortel Networks, thereby keeping them out of the hands of rivals, including Google.
• Microsoft is seeking double-digit royalties from other Android makers. One report suggests Microsoft wants $15 per device from Samsung, though the company might take less per Android device if Samsung is willing to commit to a solid Windows Phone road map.
• Or currently being unveiled, the love-hate relationship with the patent battles between Apple and Samsung

So where do you start?  First, you need to discover if your idea is patentable. The best way to do the initial research is to go through the US Patent and Trade Office’s site (www.uspto.gov). It can be time consuming depending on the type of invention. Next, find yourself a lawyer who deals with your type of invention. Typically in larger companies you will have internal lawyers to help with the process.

I started to research copyrights and patents and thought it would be easy. I proceeded to do my own search trying to see if there was anything like what I was thinking of out there already. This was important not only for my adventure in applying for a patent, but also to protect against infringement. I came up with nothing. By this point the thoughts were racing through my head about how neat this opportunity could be. Make no mistake though – just because nothing is found does not mean you will be granted a patent. Actually, it doesn’t even guarantee that the invention has not already been patented. Sounds like a crazy waste of effort, but you need to give your patent attorney as much information as possible about the most closely related inventions you can find.

After much reading and careful consideration, I decided to contact the lawyers for a patent search. So, why did I go to a lawyer? Courses in the MEM made me pretty savvy in technical writing so why not write the patent application myself? The application written by the attorney was completely different than the one I had drafted.  You can try it yourself, but if you make a mistake, a resubmission could potentially cost you a substantial delay, a loss of rights, or a lot more money than you would have spent had you gone to a patent attorney in the first place.  Even with an attorney, you will probably get involved in the patentability study and helping to determine what was “known prior art” related to your invention.  You should also be prepared to wait. It may take your lawyer a while to complete your application and there is a backlog in the USPTO so it may take quite a long time to get a ruling on your application. But if the invention is successful, it will be worth it.

Editorial Note:  To conclude, I would like to emphasize the importance of intellectual property.  The value of a firm today is all about the knowledge the firm has.  Understanding the basics about how to protect that knowledge is critical.  This is true for everyone; from those who are developing products to those who are conducting due diligence on a firm.  See https://jtglass.wordpress.com/2011/12/30/top-5-misperceptions-of-engineering-management-students/ for more info about why this is an important topic.