From: sando@lunar.com

Subject: Compilation: General Question: IP and Brainstorms....

Date: November 27, 2006 11:10:56 AM PST

To: design-alumni@lists.Stanford.EDU

 

All: Thanks for the many responses (and phonecall!); my apologies not

being able to respond personally to each one.

 

I've compiled all below--many interesting points of view; I'm still digesting.

(I've listed the emails that went out already to the whole group at the end)

 

My main take aways so far are:

 

--> There are strict legal rules you need to follow...patent lawyers

should be consulted.

 

--> A patent can be invalidated if someone is listed and who did not

materially contribute to a claim in the invention

 

--> A patent can be invalidated if someone is NOT listed who did

materially contribute to a claim in the invention

 

--> The person who details and spends many hours getting an idea to

work may get NO mention on the patent

 

We usually brainstorm with 4x6 cards, and we've been getting into the

habit of initialing each card, which has come in handy. I'll use the

discussion below to help formulate a guiding principle at Lunar; not

sure what it'll be yet....

 

It would be great if the PD WIKI had a discussion section to archive and

continually respond to threads of interest...

 

Thanks all--I bet there's more to come.

 

-Art

 

========================================================================

========

ORIGINAL POST:

We're taught that in a brainstorm, the group "owns" the idea, not the individual.

 

Has anyone come across a particularly admirable policy/philosophy on

applying this to filing intellectual property claims?

 

--> Just include all 30 people that attended any of the brainstorms?

--> What if the idea has changed a bunch from the initial idea, not so

recognizable, but definitely inspired by...?

--> What if there were some people in the bstorm who didn't really

Contribute?

 

I bet some have wrastled with the issue once or twice; would love to

hear about it if so. I'd like to develop a philosophy that honors all

tangible contributions and respects the process.

-Art

========================================================================

From: Phamady [mailto:phamady@aol.com]

Sent: Sunday, November 19, 2006 12:11 PM

To: Art Sandoval

Subject: Re: General Question: IP and Brainstorms....

 

 

Hi Art,

Great question. Its something we've been thinking about recently too.

This was forwarded to me by Jeffrey Schox who teaches patent law classes

to engineers and designers at Stanford.

Peter Hamady (MSE-PD '06)

 

In a brainstorm, does the group "own" the idea?

 

This question can be simplified by looking at the question in two parts:

who owns the invention? and who is named as an inventor for a patent

application on the invention?

The group can agree to collectively own the patent rights to an

invention. This can be accomplished by a simple napkin agreement, by a

complex corporate structure, or anything in between.

 

Only the true inventors, however, can be the named inventors for a

patent application on the invention. The true inventors are determined

on whether a person has made an original contribution to the conception

of at least one of the claims in the patent application. This is not an

ethical question - it does not ask whether a person organized the

brainstorming event, paid for the coffee, or brought the most

experience. This is a legal question based on facts. Only in rare cases

will this be more than a handful of inventors.

 

I hope this helps...

 

J

 

Jeffrey Schox, Esq.

 

Lecturer : Patent Law and Strategy

Stanford University

e: jschox@stanford.edu

www.Stanford.edu/class/me208/

 

=========================================

Art,

 

We wrestled with this a while ago and came to no meaningful conclusions.

It has become an issue for us as there are some people here who feel

'slighted" when the patents issue. When I was at GM, the basic rule was

if you're consuming oxygen in the room when the invention occurs you're

on the patent. I called an IP lawyer and there don't appear to be any

hard and fast rules. Sorry I'm not more help.

 

FYI, we're working with a client right now to "correct" a patent they

issued that lists none of our people.

 

Dave Franchino

President

Design Concepts, Inc.

www.design-concepts.com

Phone: 608.221.2623

Fax: 608.221.2133

 

-----Original Message-----

 

Phone call with Scott Sullivan:

 

The rule is: list true inventors only, regardless if there was a crowd

You have to track this.

 

Each inventor listed should be able to support authorship to a claim if

on a witness stand; only list those that can be held to the std of

invention

 

Mislisting, with extra or less inventors can invalidate a claim.

 

[scott, sorry if I missed/misconstrued something here]

 

-----Original Message-----

From: Mike Strasser [mailto:mike@think2build.com]

Sent: Thursday, November 16, 2006 10:47 PM

To: Art Sandoval

Subject: RE: General Question: IP and Brainstorms....

 

Art,

 

Ahhh, this came up several times at IDEO and since then too.

 

Each lawyer has their own way of handling it. No lawyer will tell you that

the 'group' invented it, so everyone in the brainstorm is automatically put

on the patent. I have struggled with this, and have pushed back a bit since

as you know, a brainstorm is a collection of ideas built off of others (that

may have not been the final concept in the end). It would be like only

giving credit to the soccer player that kicks the ball into the goal. But

they didn't buy it, so we had to come up with some other creative ways

of extracting who the core idea came from.

 

What we did is create a list of features/concepts that make up the product.

Then I went around and had everyone put their name by the concept that

they felt they contributed to. Then when the final patent gets drafted,

those concepts that didn't make the cut get dropped, and only those folks that

contributed to the final patent are considered the 'inventors.'

 

Other lawyers have also told me that even if someone refines someone else's

idea during the development of the project, are not necessarily considered

inventors unless they conceived of new IP.

 

I have also had lawyers want to come in and have one-on-one interviews with

each project team member and extract what their personal contribution was.

A bit more confrontational, but allowed them to determine who are the

inventors which made it less personal.

 

It always seems the most fair just to include everyone. It doesn't cost any

more, and it's exciting to those involved. The benefits of narrowing the

field is it gives recognition to those who really conceived of the concepts

(and not just those who just ate their sandwich during a brainstorm).

Ultimately, it's a legal issue, and patents can actually be invalidated

if the exact inventors are not named.

 

Good luck!

 

Mike Strasser

 

Think2Build LLC

T: 415-235-2233

F: 971-231-2233

mike@think2build.com

www.think2build.com

 

-----Original Message-----

From: Andrew Chacko [mailto:andrew.chacko@gmail.com]

Sent: Thursday, November 16, 2006 2:33 PM

To: Art Sandoval

Subject: Re: General Question: IP and Brainstorms....

Importance: Low

 

Art,

I distinctly remember hearing it differently. That the person that

convenes the BStorm group owns the ideas generated. And the notion

of "what goes around... " that later on everyone will be able to

benefit from the pooling of resources that way.

 

But I am sure that that varies with the group and your understanding

with the people that you invite to your BS.

 

cheers,

Andrew

---

---

From: Peter Skillman [mailto:Peter.Skillman@palm.com]

Sent: Thursday, November 16, 2006 3:32 PM

To: Art Sandoval

Subject: RE: General Question: IP and Brainstorms....

 

Hi Art,

 

I have been involved in Palm's IP policy and process for 7 years. Given

this experience and also the advice of outside council I would suggest

the following for Utility Patents.

 

• If an idea evolves from a brainstorm than all participants in this

brainstorm should be credited. This is a philosophy I've carried for

years from Dennis Boyle. A proviso is that brainstorms should not

exceed 6 to 8 in the first place and all participants should be engaged.

No brainstorm of more than 10-12 people has full engagement. A patent

with 30 people on it would be very easy to challenge in cross

examination and would greatly weaken its value. There is legal

precedent for this so it is a mistake. A patent with more than 6 people

on it can begin to attract scrutiny.

 

• The typical wrinkle is that only people who come up with the high

level idea and determine the "utility" get to be on a patent. Those who

are responsible for the detailed implementation of an idea should not be

credited as this does not fall under the definition of an "inventor".

This issue is the one that usually creates the most conflict and bad

feelings.

 

Cheers,

Peter

 

-----Original Message-----

From: Chris Miksovsky [mailto:chris@hundred-watt.com]

Sent: Thursday, November 16, 2006 1:47 PM

To: Art Sandoval

Subject: RE: General Question: IP and Brainstorms....

 

Art:

 

Hi. A very interesting question, indeed. I've thought about this topic quite

a bit (I do product development and license IP) and I don't see any clear

answers. Fundamentally, you're trying to analyze and quantify an inherently

imprecise realm.

 

"We're taught that in a brainstorm, the group "owns" the idea, not the

individual." Were we? I distinctly remember one of the 3 main PD Profs

saying that it was the person who has *called* the brainstorm who owns the

ideas (the argument being that the person who's created the brainstorm has

caused ideas to come out that otherwise would not have come out). That's

all fine and well in theory, but in practice (especially with money

involved) it can fall apart. I think this is a big benefit of having employees who've

signed away all ownership of any ideas they come up with - it largely

eliminates the problem (not completely I suppose: someone could have an

idea in a brainstorm and hold it back, then try to capitalize on it elsewhere

or later). But absent a signed assignment of all future ideas, things get sticky.

 

I think it's a matter of applying good judgment. Trying to make things exact

leads to absurdities: recording brainstorms, tracing the path of an idea,

measuring value-in advance of results-of each incremental contribution, etc.

But trying to include everyone is also absurd - do you start to include

*all* the people that might've contributed - even over casual conversations

at the water cooler?

 

Maybe it's like juries - no one "knows" for sure, but you consider the

facts, your intuition, and your judgment and you try and come up with an

answer that feels right.

 

I'd be curious to hear what others have to say on the matter.

 

Cheers,

 

Chris

 

-----Original Message-----

From: Bruce Schena [mailto:bschena@pacbell.net]

Sent: Sunday, November 26, 2006 1:05 PM

To: 'Dave Franchino'; 'Liz Gerber'; Art Sandoval;

design-alumni@lists.Stanford.EDU

Subject: RE: General Question: IP and Brainstorms....

 

Hi Dave,

 

Yes, this is definitely not an exact science. While I've been on both sides

of the line, I do think it is entirely possible that a truly inventive

moment can happen during a brief brainstorm - even if the person who

offered the idea isn't officially "on" the project.

 

If the suggested idea is truly inventive, and is supported with enough

detail to enable it (by one skilled in the art, as they say), I'd say it

qualifies completely as independent inventorship in spite of the fact

that it took another 18 months and a team of 15 people to work out the

"details" ;-).

 

From the legal perspective, it's all about "the conception", but the

conception must be accompanied with enough detail to enable it/make it

operable (though NOT necessarily in the most optimal way). That's where

your antigravity machine example falls down.

 

However, in reality, I often find that during ensuing 18 months there

are 5 other inventive ideas which are protectable as well - some of which fit

nicely with the original idea (a.k.a. other inventions which improve the

original invention), and others that are completely independent.

 

So, while I do see the "rub" as you described (all the time, I might add), I

think that the ultimate test is whether a person's ideas appear in the

claims of the patent. Even if a team member toiled for 18 months

selecting the proper materials to meet a design life goal for the product, if

those materials weren't mentioned in the claims as "enabling the concept" then

I'd say they are NOT an inventor.

 

I ran into this exact issue recently myself - I came up with a funky

linkage mechanism to solve a particular problem. I then built a prototype which

demonstrated the operation (but would never survive 5 years of abuse in

the field), then handed the project off to another engineer to carry to

production. When it came time to file the patent application (with draft

claims) it was clear that although the second engineer has spent many

hundreds of hours on "refinement", none of those refinements (e.g. corrosion

resistant materials, bearing selection, etc.) ended up in the claims as

"enabling". The patent attorney required that his name be removed from

the application.

 

While not terribly common, I think the situation you have discovered with

your past client does happen - probably more than we are aware."Oversights"

like that are fairly easy to fix up until the patent issues. After it issues

it is much more difficult. I think there is technically a way to fix

inventorship after the fact without triggering a re-examination or

invalidation, but it requires the cooperation of the original owner of the

patent and (legal) affirmation that there was no willing deception in the

original filing (a.k.a. an "honest mistake"). So, your best approach

might be to alert the original client that they inadvertently left the DCI

folks off the list and politely ask that they correct their oversight.

 

Hope you are all having a nice Thanksgiving weekend...

 

-Bruce

 

-----Original Message-----

From: Dave Franchino [mailto:Dave.Franchino@design-concepts.com]

Sent: Friday, November 24, 2006 8:27 AM

To: bschena@pacbell.net; Liz Gerber; Art Sandoval;

design-alumni@lists.Stanford.EDU

Subject: RE: General Question: IP and Brainstorms....

 

Bruce et al,

 

Excellent and informative response and very interesting thread. One

common occurrence here at DCI that vexes us surrounds IP that originates

out of a brief contribution during collaborative brainstorming session.

It's not uncommon for us to initiate our creative work on a project with

large brainstorming sessions filled with numerous engineers

free-associating on conceptual approaches for resolving a particular

problem. In typical Stanford fashion, a brainstorming session might

generate a hundred theoretical approaches to resolving the issue. A

core team will take the results of the brainstorming session away and

noodle on them until some solution is embodied.

 

Here's the rub. Often, the final embodied design solution will have

only a limited and tenuous relationship to the original idea that was

suggested in the brainstorming session. In fact, often the only

intersection an engineer might have with a program is a quick concept

idea generated in a two hour brainstorming session. Yet that concept

idea might form the basis for a conceptual direction that might

eventually yields some IP.

 

At the end of the project, some team of engineers has put in thousand of

hours embodying the idea and believe they should be listed on the IP.

The engineer who was in the brainstorming session sees the final concept

and believes their original concept may have been the driver for the

idea. It ends up being kind of subjective.

 

So a common question around here is "how close does the final concept

have to be to the original suggestion for the originating engineer to be

listed as one of the inventors?" Where does "refinement" become

invetorship? I think the patent office is pretty clear that suggesting

an idea with no means of embodiment isn't inventorship. If I draw a

picture of an anti-gravity machine during the brainstorming session and

later on someone figures out how to do it, am I an inventor? Probably not.

 

It's worth noting that around here, the questions in play are almost

always one of tact, courtesy and ego. We don't retain IP to our designs

- those accrue to our clients - although we do understand that if we

mess up the inventorship we could potentially invalidate the patent.

Most engineers around here however track patents like trophies so we try

to be sensitive.

 

FYI, on an semi-related note, some time ago we did a conceptual program

for a client that ended with their engineering team telling us we did a

weak job and our concepts were uninspired. The other day one of our

engineers stumbled upon a patent and lo and behold, our client has an

issued patent for the work we did listing their team as inventors (and

nobody from our team). Amazingly, they took all the illustrations

directly out of our CAD database and all the claims came directly from

our final presentation to them. To the best of our knowledge, their

engineering team had no contributions on the program whatsoever. Still

trying to decide how to respond to this one.

 

Thanks for the insights and we'll keep working through this one.

 

Dave Franchino

President

Design Concepts, Inc.

www.design-concepts.com

Phone: 608.221.2623

Fax: 608.221.2133

Mobile: 608.334.5788

 

-----Original Message-----

From: Bruce Schena [mailto:bschena@pacbell.net]

Sent: Thursday, November 23, 2006 12:06 PM

To: 'Liz Gerber'; Art Sandoval; design-alumni@lists.Stanford.EDU

Subject: RE: General Question: IP and Brainstorms....

 

[I've posted this to the list as it seems that there might be broad

interest on this issue...and I hope it makes it through the listserve without

getting mangled like last time...]

 

Art | Liz

 

Disclaimer: I'm not a lawyer ;-)

 

But, I've dealt a fair bit with IP issues over the years, and the point you

raise is an interesting/tricky one. I think it has TWO answers, depending

from which perspective you ask the question - as a "business issue" or

as a "legal issue".

 

From the business perspective I think you could argue the "joint property"

angle pretty successfully - that the brainstorming group collectively owns

the ideas. If royalties were eventually paid to your company on some idea

that came up in a particular session, you might split the proceeds evenly

(as a company policy) among the participants in the spirit of "equity".

 

I think there is much LESS flexibility from the legal angle, however.

The rules regarding inventorship are really quite clear on this, though in

actual practice there is almost always some gray area when they are applied.

 

Basically, the legal standard for inventorship is that ONLY persons

whose ideas appear in the CLAIMS of a patent may be listed as inventors.

 

We recently had my company's legal department give us guidance on this

exact issue - here is an excerpt of what they said:

 

"For patenting purposes, an inventor is a person who conceives of the

inventive idea covered in a patent claim. If two or more people together

conceive of an invention covered by a patent claim, then all are inventors.

If a person did not contribute to the inventive concept covered by at least

one claim in a patent, then the person cannot be listed as an inventor.

Merely building or refining the inventive concept is not enough to be

considered an inventor."

 

Of course, the trick here is figuring out what "conceive", "contribute",

and "refine" mean in your particular circumstance. ;-)

 

So, with regard to your question I'd say that people who are simply in the

room at the time, and clearly did NOT contribute, should NOT be listed

as inventors. By these rules even people who helped "refine" the idea

should NOT be listed as inventors.

 

The way our legal department views it is that invention is "cognitive,

creative work" - and only people who can point to a specific contribution in

a specific claim are legally entitled to be listed. They go so far as to say

that the list of inventors should be adjusted right up to the point of

ISSUANCE, depending on what claims are actually allowed by the patent

office. So, even if the list of inventors is pretty large on the original

application, it is important that the list be scrubbed one last time so

that only inventors responsible for the final claims are listed.

 

There is also another VERY important thing to also know about all this - a

patent can be INVALIDATED down the road if the wrong people are listed

on it. This cuts both ways - if people are on it that should NOT be (a.k.a.

non-contributing bystanders in the brainstorm) then it can be

invalidated just as easily as if people who DID contribute are NOT LISTED.

 

Because of this, it is super important that the issue of legal inventorship

is taken seriously if you want to have a defensible position down the road.

Listing people on the patent "just to be nice" is a really bad idea, despite

the fact that it does seem to go against our nature to make the process

of invention "inclusive". From a legal perspective it is decidedly NOT

inclusive, by design.

 

Hope that helps,

 

Bruce

 

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END COMPILATION

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