Managing Inventor Expectations & Encouraging Invention Disclosures

1. Managing Inventor Expectations & Encouraging Invention Disclosures Dr. David K. Potter 2005 FPTT Annual Meeting and Awards Ceremony June 1, 2005

2. The Invention Disclosure Process • Normally thought of as starting with invention • often focused problem solving has taken place and the invention is an outcome of that problem solving • The inventor needs to recognize that the invention has value • inventions have value in a context • the inventor needs to have familiarity with the context in order to recognize the value of the invention • corporate goals and strategy • The inventor must be willing to share the invention with others to reinforce the value assessment and to decide the appropriate next steps • this requires trust on the part of the inventor • trust is built on mutual understanding and the outcome of previous interaction • The inventor must receive a signal that reinforces participation in the activity • recognition from others • personal achievement and satisfaction

3. The Value Feedback Loop in a Corporate Environment • Company Screen • relevance in the context of company values, processes and resources • Inventor’s Screen • the inventors understanding of what has value • Patent Agent Screen • patentable? Feedback Feedback

4. The Value Feedback Loop in an Academic Setting Company A Company B Inventor’s Screen Technology Transfer Office Screen Company C

5. An Alternative Value Feedback Loop in the Academic Setting Inventor’s Screen Technology Transfer Office Screen Build the company value screen

6. Managing Expectations • A clear understanding of how inventions will be valued, and under what circumstances, is central to managing expectations • Involvement of the inventor in the valuing process lays the foundation for the development of a relationship based on trust • Potential personal gain outcomes and the process by which these are bestowed must also be clearly defined

7. Incentives (based on an unscientific sampling of 3M Canada, GM Canada, ShawCor and Xerox) • Monetary awards • range from no monetary award to small cash incentives • can sometimes vary with the number of inventors • in some cases, further cash awards were possible based on profit generated by a new product introduction or substantial cost savings • Peer Recognition • celebration ceremonies are common (both formal & informal) • awards presentations in the presence of peers and/or family • inventor’s “hall of fame” • acknowledgement in company newsletter • calls and emails of congratulations • Career Enhancement • recognition in performance review

8. Motivating(based on an unscientific sampling of 3M Canada, GM Canada, ShawCor and Xerox) • incentives • re-invent the spirit and joy of creativity and innovation - “what did you want to do when you were 18” - John Wood, GM Canada • associate the feeling of filing a “first academic paper” with the act of invention disclosure • recognized “thought leaders” asked to participate in community (for example, as judges for 4th year university projects) • encouraged to build on success by attending HQP conferences • assemble teams of recognized inventors to help and encourage others - building a culture of success around invention disclosure

9. Managing Inventor Expectations & Encouraging Invention Disclosures Dr. David K. Potter 2005 FPTT Annual Meeting and Awards Ceremony June 1, 2005

10. “Challenges of IP Commercialization in Universities” Paul Fox, University Counsel, University of Windsor • “A policy to increase the amount of commercialization in universities may lead to a reduction of the free exchange of knowledge, an increase in secrecy in universities and a shift in priorities from basic to more applied research. Universities are moving from being the source of basic research to a being a source for invention which may be protected by intellectual property instruments and then commercialized through technology transfer or industrial liaison offices.” • “If there is a technology transfer office, its staff will seek intellectual property to commercialize, but academics are caught in the publish or perish culture of the university and spending time on patenting may impact on the likelihood of tenure. If there is pressure, the disclosure and the patent application may be made prematurely, reducing the ability for defending it if it is contested. A solution to this would be for universities to recognize that a record in technology transfer should carry as much merit as publication in peer reviewed journals.” Fred Gault & Susan McDaniel, Summary: Joint Statistic Canada - Unviversity of Windsor Workshop on Intellectual Property Commercialization Indicators, Windsor, Statistics Canada, November 2004

11. Invention Disclosures and Patenting Activity in Universities and Industry • University invention disclosure and patent applications 2001 • 42 universities reported 1,005 invention disclosures (24 disclosures/institution) • 34 universities reports 867 new patent applications (26 new applications/institution) • Identification of new IP • 51 out of 85 universities reported that “The researcher is primarily responsible for recognizing the discovery and its potential, reporting it to the institution and requesting consideration for protection and commercialization.” Cathy Read, “Survery of intellectual property commercialization in the higher education sector, 2001”,Statistics Canada, ST-03-12, 2003

12. Canadian Patent Office Statistics Patent Applications 1999-2000 2000-2001 2001-2002 36,784 39,657 40,175 Top Ten Patent Applicants 2001-2002 The Proctor and Gamble Company 503 Telefonaktiebolaget LM Ericson 256 Bayer Aktiengesellschaft 242 BASF Aktiengesellschaft 198 E.I. Du Pont de Nemours and Company 188 Honda Giken Kogyo Kabushiki Kaisha 174 Unilever PLC 161 Lucent Technologies Inc. 153 3M Innovative Properties Company 152 L'Oréal 144 http://strategis.ic.gc.ca/sc_mrksv/cipo/corp/annual0102/report0102_app2-e.html