Patents Q&A

How Should Invention Harvesting Be Conducted?

An important first step in obtaining patents is to identify potentially protectable inventions. The process of gathering up candidate ideas that might be the basis for new patent applications is sometimes termed invention harvesting. But that is an informal term. It generally connotes affirmatively investigating research and development efforts to draw out aspects that might be patentable. The following discussion explains when this sort of effort is worthwhile and how to go about it.

Who Should Consider Invention Harvesting?

There are two basic requirements in terms of who should consider invention harvesting, plus an important practical consideration. The first basic requirement is some desire to pursue a patent. Only companies that might want to pursue patents need to consider invention harvesting. For instance, budget constraints or company policy might mean that patenting is unlikely. The second is activity that comes reasonably close to what is potentially patent-eligible and patentable. For instance, if there is absolutely no technological or engineering activity underway, efforts to identify inventions might not be worthwhile until circumstances change.

In practical terms, however, invention harvesting is typically a process that takes place within companies of a significant size. When there are multiple people or departments with different responsibilities, there is the possibility that inventive activity might be taking place somewhere that has not yet come to the attention of other people who make decisions about patenting. The basic idea is that “invention harvesting” is a proactive way to bring people or teams with different responsibilities together to help them meet shared or company-wide objectives. It rests on an understanding that simply expecting scientists and engineers to step forward when they believe they have an important invention may not capture all patentable inventions.

When Should Invention Harvesting Take Place?

Generally speaking, invention harvesting should be considered around the time that inventions are sufficiently developed to be “ready for patenting” but prior to any public disclosure or commercialization.

“Ready for patenting” means the invention is sufficiently developed that the inventor(s)—with the aid of a patent attorney—can describe how to make and use it. Vague goals and undeveloped business objectives are not enough if they amount to little more than a plan or hope to invent something in the future. The same goes for high-level business plans to meet some kind of customer demand without any definite ideas of how to achieve any specific results—those things are not sufficient. But anything that has been “reduced to practice” in the form of a working prototype is likely sufficiently developed, even if there still is ongoing testing and development work.

There can be public disclosure, public use, and on-sale bars to patenting. This makes it important to consider any potential inventions before any part of a new product is disclosed to someone else, from potential customers to potential business partners or even industry trade groups. This is true even though some countries, like the U.S., have patent filing grace periods.

Key product development stages or milestones, such as engineering “design reviews”, can be excellent times to proactively assess potentially patentable inventions. Also, any planned non-confidential disclosures or sales activities also make good prompts to consider patenting before those disclosures or sales activities take place. But there is no single right time to consider patenting. In fact, it may be a question that needs to be revisited over time.

What Should Invention Harvesting Activity Look For?

Of course, patentable invention might arise at different levels of generality and at different times during development. A product as a whole might not be patentable but specific features of it might be.  Those narrower patentable aspects might not be identifiable at the outset of new product development and may only arise later on after considerable work has been completed.  On the other hand, investment in research & development (R&D) is no guarantee that any patentable invention will arise. But the catch is that if you sometimes will miss patentable inventions unless you look for them. From that perspective, it is not a waste of effort to consider patentability even if nothing patentable is identified yet.

How Should Invention Harvesting be Conducted?

Some key foundations of invention harvesting are education, communication, and having resources in place to retain and act upon information gathered. 

Education starts with emphasizing a desired to consider patenting. It also means cultivating, or bringing in by way of retaining an outside patent attorney, a reasonable awareness of patent law. Inventors might not have a good understanding of patent law and therefore may misunderstand what can (and cannot) be patented, for example. Education also means informing patent counsel about what kind of patenting strategy is desired from a business perspective. Some inventions might be more challenging than others to patent. There is an element here of establishing a comfort level with risk tolerance: do you want to aggressively pursue patent applications including ones that might not succeed, or take a more conservative approach and only file patent applications that seem to have a high probability of success?

Communication is about bringing the right people together to talk about potentially inventive activities. Sometimes, inventors may be very humble or shy and not willing to step forward and promote their own work. As another example, an invention may be patentable even if its inventor does not subjectively consider it to be “important”, such as where the inventor applies an idiosyncratic standard of “importance” that does not align with current laws around patentability. Sometimes having an explicit “invention harvesting” session with patent counsel is worthwhile, in which potential inventors talk about their ongoing work in an open-ended way to try to tease out potentially patentable inventions.

Resources like having a plan to document inventions and giving people or committees responsibility to approve patenting are really the lase piece of the puzzle. Having some sort of “invention disclosure” form to document potential inventions in writing is worthwhile.  Such a form can not only provide a written record of the substance of a potential invention, it can also collect supporting information. Such supporting information can include the names of the potential inventor(s), any planned commercial release or public disclosure date(s), relationships between the invention and business initiatives, and other information that can be useful when making patent filing decisions and reporting on company activities. 

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.