SPARKING INNOVATION

in R&D DEPARTMENTS
AND MANAGING TREBLE DAMAGES RISK

Bob stembridge
 PAGE 2: sparking innovation in r&d departments

Introduction The central idea behind open innovation is that,

Innovation is a key business driver. Technical
innovation in particular is critical to the
development of new and improved products that
help successful businesses achieve competitive
advantage. For the majority of companies, more
than 25% of this year’s revenue is for products
and services that did not exist three years ago1.
Moreover, product life-cycles are growing ever
shorter. As the world begins to recover from
the ravages of the recent recession, the most
successful companies recognize that rebuilding
revenue growth will be based on the quality and
effectiveness of their innovation process.
The Innovation Process
The innovation process depends on the
generation of new ideas. It comprises a
cyclical sequence of brainstorming, research,
collaboration and evaluation. Nevertheless,
despite the many brilliant ideas an organization
may generate, the “innovation process is a funnel
where less than 1% of them actually make it to
the customers.”2
Add to this the disappointing fact that the
innovation process is really not understood by
many corporate executives. As Mark Proffitt, a
Detroit Technology Examiner, points out: “Even
though 87% of CEOs list innovation as a Top
5 priority, 78% of companies don’t have an
innovation system. That is why 88% of ideas fail
to make it to market.”3
This is coupled with the recent trend toward
the decentralization of research, termed “Open
Innovation”, which involves taking advantage
of resources and expertise beyond that which
resides in your organization. This can be a
scary thought for some. Nonetheless, it is a real
phenomenon and one which organizations like
P&G, Unilever, Whirlpool, and GlaxoSmithKline
are embracing.
in a world of widely distributed knowledge,
companies cannot afford to rely entirely on
their own research and creative brainpower,
but should instead buy or license processes or
inventions from other companies. In addition,
internal inventions not being used in a firm’s
business should be taken outside the company
(e.g., through licensing, joint ventures and spin
offs).
Whether your organization subscribes to the
traditional or the open model of innovation, R&D
is a critical factor. Innovation can occur across all
areas of a business, but the technical innovation
on which new products and services is built
traditionally resides in the R&D function.
It relies on two essential criteria for success:
1. The protection of innovation through IP
rights, especially patents
2. The collaboration and sharing of information
We will examine the impact of these on the
innovation process.
Protection of innovation
The protection of innovation through IP rights
is the foundation on which the modern patent
system is built. “The patent system has two
basic purposes: to promote the advancement
of technology and to protect the inventor.”4 As
is well known, this system is a contract between
the state and the inventor, which provides a
reward or incentive to the inventor in exchange
for his/her sharing of knowledge. The inventor
is afforded the right to exclude others from
practicing or otherwise exploiting the invention
without permission, for a set term, in return
for which s/he must describe the invention in
sufficient detail for any one skilled in the art to be
able to reproduce it, once the term has ended.

1.
Fast Innovation: Achieving Superior Differentiation, Speed to Market, and Increased Profitability, Michael L. George.
2.
Business Modalities, http://bizmodal.wordpress.com/2009/10/24/5-biggest-mistakes-companies-make-in-harnessing-innovation/
October 24, 2009.
3.
http://www.examiner.com/technology-in-detroit/why-88-of-ideas-fail-to-make-it-to-market, April 29, 2010.
4.
Biotechnology Industry Organization, “What is the purpose of a patent?”, http://www.bio.org/ip/primer/patentpurpose.asp.
 PAGE 3: sparking innovation in r&d departments

The description of the invention is made
publicly available so that others can benefit
from that knowledge; this latter point gives
rise to published patent documents. It is
these documents that form the richest and
most valuable source of technical information
available.
component of the innovation process is the ability
for those involved in it to be able to collaborate
with one another, real time, regardless of where
they are located and whether they are internal to
the organization or part of an Open Innovation
initiative.

Up to 80% of technology
described in patents is not
disclosed anywhere else.5
Engineers and R&D professionals must be able
The ready availability of a vast body of technical
to access relevant information within their areas
information contained in patents across all
of interest, including patents, scientific articles,
technologies in turn drives the innovation process
business data, and news information, and share
through stimulation of ideas and development
it with fellow research professionals. This sharing
of methods for improvement over what has been
and collaborating will speed the innovation
described before, incentivized by the reward of
process and help organizations develop new
exclusive rights over the new invention.
solutions to existing problems, bringing them to
Collaboration and sharing of market more quickly and helping meet customer
information demands sooner.

Collaboration is all about groups of people

working on and sharing common content,
including documents, data, and discussion
forums. The beauty of collaboration is that it
provides an environment for real-time revision
tracking and provides alerts to content changes
- empowering business users to work together in
previously unforeseen ways.6

As the innovation process is driven by the

generation and sharing of ideas in a technical
field, and patents are the best source of the
latest ideas in an area, the second critical

5.
8th USPTO Technology Assessment and Forecast Report. Section II: “The uniqueness of patents as a technological resource”, USPTO 1977.
6.
Managing the Risk of Collaboration Tools,” Kurt Johnson, July 30, 2007.
 PAGE 4: sparking innovation in r&d departments

The implementation of this is best achieved and interpret key commercial and technical
through an integrated information search and information as well as easily understand the
delivery system that provides the relevant latest technology protected by their own
information to users across the organization, organization.
and let’s them manage their innovation process
regardless of which department or time zone
they are in.

At 3M, one of the world’s most innovative

companies according to a Business Week article7,
Senior Technical Information Analyst Carol
Bachmann recognizes the benefit of sharing
information across the R&D organization to
support innovation. “Researchers within 3M are
mandated to know the prior art. We recognize
that information only has value if it’s used and
that value depends on the user’s ability to
access information in context. 3M has therefore
invested in systems to facilitate searching and
sharing of results to deliver targeted information
to researchers and engineers in order to keep
them fully abreast of developments within their Legal considerations
technical fields. This helps to focus research on
areas of commercial and competitive interest to The benefits of implementing an integrated
3M”. information solution need to be considered
alongside legal considerations such as the
There are wider benefits also in sharing question of liability for treble damages in the
information across the organization. Delivery case of willful infringement. Under US patent
of patent and associated information to law, in cases where a defendant is found to
users across the organization allows effective have acted willfully in a prohibited way, a court
monitoring of the IP portfolio and competitive is permitted to triple the amount of damages
landscape, while providing the relevant awarded as a punitive measure which recognizes
information an organization needs to make the willful nature of the prohibited act. The
informed decisions that support its IP and question is to what extent having a system
business strategies. that allows sharing of information around an
organization implies that members of that
With global access, an integrated information
organization would be deemed to have prior
system makes it easier for the various business
knowledge of a piece of infringing information in
areas such as R&D, business intelligence, IP
the case that proceedings are brought.
and strategic planning to work together. Such
a system is not just a data delivery platform. Charles Macedo, partner, Amster, Rothstein
Rather, it ensures that collaboration between & Ebenstein LLP, and author of The Corporate
colleagues is simplified. Users in global Insiders Guide to US Patent Practice, suggests
locations can easily and securely share, review that the use of a collaborative content

7.
Business Week article, “The World’s Most Innovative Companies”, April 24, 2006.
 PAGE 5: sparking innovation in r&d departments

management system for communicating and 6. Develop a taxonomy of acceptable

innovating is no different than using email and
other tools that have been in practice for many
years. “Collaboration systems are no more likely
to result in treble damages than email is. With
any of these tools, there can be ‘idle chatter’ and,
as such, companies need to train their people
on what is appropriate to comment on and set
guidelines for inter-corporate language, just as
should be the case with email and texting.” Mr.
Macedo goes on to say that the benefits can
outweigh the risks by increasing efficiencies.
“These vehicles can enhance collaboration and
communication, thereby speeding the innovation
process. Employees just need to be trained as to
what is appropriate within the system.”
Therefore, it is recommended that categorization
of information using strictly controlled terms
is the best way to balance the value of sharing
information among users without incurring the
risk of being judged to have knowingly infringed
another’s patent, should that situation ever arise.
The following strategies are essential to the
successful implementation of collaborative
systems:
and unacceptable terms for use when
commenting within the system
7. Assign a select number of senior technical
staff to monitor the use of the system
8. Relinquish collaborative privileges to those
who do not comply with the rules
9. Provide regular reports to executive
management on the progress being made
10. Archive collaborative data for a specified
length of time agreed on by management
Collaborative tools are an enabling technology
that, when used without records management
processes and systems in place, are little more
than a casual unrecorded chat. Education is
critical in planning for an information governance
environment that supports the needs of the
organization. This means education of executive
management who will understand governance
and risk, technology management and system
administrators, and the knowledge workers who
are the powerhouse of the business process.8

1. Have executive management support for the

collaboration initiative

2. Communicate the goals of the program to

the entire organization, even to employees
not yet involved in a collaborative group

3. Educate employees on the rules of

engagement

4. Clearly identify the members of each group

and what their responsibilities are

5. Engage multiple departments, including

technology and legal, to ensure you have the
systems and processes in place to support
your collaborative objectives

8.
“8 Ways to Make Sure that Collaboration Adds Business Value,” Noel Rath, March 23, 2010.
 PAGE 6: sparking innovation in r&d departments

Implementation benefit – it avoids the danger of wasting the

organization’s precious time and resources by
One proven collaboration system is Thomson
repeating research already conducted elsewhere.
Innovation.
In a talk at the SIS Conference 2009 in Pune,
Thomson Innovation is a single, integrated India, CEO of Vision-IPR, Dr. P. Ganguli, alluded
solution that combines patent, scientific to the importance of widespread access to
literature, business data and news with search, patents information in the innovation process.
analytic, collaboration and alerting tools in a He pointed out that “although it may not be a
robust platform. The patent information within crime not to innovate, it is a crime to re-invent
Thomson Innovation provides access to titles the wheel”.9
and abstracts translated into English from the
many different languages of the source patent
documents, including English translations of
Japanese, Chinese and Korean information,
together with full text and legal status
information from a number of patent authorities.

This information can be searched by a

combination of key terms, company and inventor
names and various classification and indexing
systems to provide precise retrieval of relevant
information that can then be easily shared with
colleagues using built-in workflow solutions.
These include the ability to save by objects and
work files, hierarchical folders, annotation and
attachment capabilities, support for sharing
objects and folders, ability to search objects
and folders, subscriptions to alerts or watched
records and personalization tools. Up to 60,000
patent records can be added to a shared work
file.

Sharing lets you collaborate with colleagues

on your research. All saved work items can be
shared. This includes saved searches & alerts,
search histories, watched records, citation maps,
charts, patent landscaping maps (ThemeScape
maps) and text cluster analyses. Options are
also provided to set permissions for items to read
only or read and annotate.

Ensuring that all researchers involved in the

innovation process are fully updated with the
latest available information has one further

9.
“Patinformatics For Strategic Technology Management”, Dr P Ganguli, SIS Conference Pune, India Dec 2009.
 PAGE 7: sparking innovation in r&d departments
Conclusion
Innovation requires creativity which is built
on access to relevant information and the
ability to share and discuss that information
among colleagues, thereby turning ideas into a
profit-making reality. Providing an integrated
information system with workflow tools to
share information among users throughout
your organization contributes to a streamlined
workflow, improved collaboration, and better
business processes, so you can compete,
discover, innovate, create, and license more
effectively. This allows you to discover new ideas
for research, lower your R&D costs, shorten your
time to market and enhance market share and
revenue stream.
For more information on how to speed your
innovation process, contact Bob Stembridge at:
bob.stembridge@thomsonreuters.com.
About the author
Bob Stembridge
Thomson Reuters IP Solutions
Customer Relations Manager
Bob Stembridge graduated from University of Sussex,
UK with an Honours degree in Chemistry. He joined
Derwent (one of the founding components of the IP
Solutions business of Thomson Reuters) in 1980 and
has held various roles in editorial, marketing, sales and
product development over the years. Leaving in 1988
for interludes working as Senior Information Analyst
specializing in patent analytics at British Petroleum
and European Sales Liaison with Dialog, he returned to
Thomson Reuters in 1996 and most recently became
Customer Relations Manager with responsibility for
liaison with customer user groups for the organization.
Mr. Stembridge is a member of ACS, CILIP and PIUG,
and is Secretary of CEPIUG and current Chair of
PATMG. He currently serves on the CSA Trust Board of
Trustees to which he was elected in February 2007.
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