Patent Reform At The University Of Hawaii Tech Transfer Office
Patent Reform will be rolling forward for the next few years culminating in the implementation of the final provisions on September 16th 2013. The USPTO announced some new rules about prior user right, so not only do we have to learn and consider what are the effects of patent reform will be on the R&D organization, but results will only become apparent over time.
Lee Marvin Taylor is a Specialist, in the Entrepreneurship Program (COE) for Technology Liaison at the University of Hawaii. Following my interview with Melba Kurman, I was introduced to Lee as running a top University Tech Transfer office in the US. He graciously answered my questions, and also asked Eric Cohen, Intellectual Property Attorney, at Brinks Hofer Gilson & Lione to clarify a point.
John: What steps has your college taken to prepare for the America Invents Act?
Lee: The deadline is March 16th of 2013, and we are really kind of business as usual, however we will have to file earlier and more often. The grace period will go away. And so that means that while a good many of disclosures are given to us after publication, many Universities have relied on 102 b for the grace period. This has been the existing M.O. at Universities; professors do the publications, and then go to the tech transfer office. Obviously if it’s a pharmaceutical matter, the professor and the office work harder. Now given the changes to the law the Technology Transfer Office will have to work harder, to get a professor to file before disclosure, because of the loss of US and foreign rights. Our education about the changes will happen in the fall of this year.
Patent Reform’s Effect On The University Tech Transfer Office & R&D Organizations
Melba Kurman is my next interview subject for my blog series on Patent Reform and R&D. I found Melba through the series of excellent articles she has written on the topic of Patent Reform and Universities. Melba Kurman is a strong advocate of both the value of university innovation, as well as the value of updating and evolving how university inventions are brought to market. Her insights and analysis arise from first-hand experience working inside a university technology transfer office and before that, in a large technology company. She is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.
John: What organizational changes do you have to make to prepare for patent reform?
Melba: The unit that manages patents -- the technology transfer office in the case of a university -- will have to think through whether it can afford the time and cost of getting a provisional patent on most newly submitted inventions. If a university is going to make the commitment to patenting more of its inventions, then many universities will need to make changes to their tech transfer workflow and budget allocations. In terms of outreach, technology transfer staff should reach out to university researchers to make sure that researchers understand that there’s a weakened grace period, and that they should submit new inventions as soon as they can.
Brad Barbera On What Patent Reform Means For Product Development
Patent Reform approaches, actually, it is already here given that some of the provisions are already in place, and product development managers need to be thinking about its consequences. That’s why I chose to reach out to Brad Barbera, who is the Executive Director of the Product Development and Management Association, he has been in his current role at the PDMA for about 9 months, but has a 15 year background with the association and over twenty years in the field of product development. Brad and I recently chatted about the issue of Patent Reform and product development.
First, however, Brad had a disclaimer: “I am not a lawyer, we do not have a staff PDMA IP lawyer, and I have not sought specific advice in this area. Everything is based on what I’ve read, and my own personal speculation.”
John: What steps has your association taken to prepare product development members for the America Invents Act?
Brad: We are trying to understand the act; I’m contacting IP lawyers, planning on webinars and in-person presentations at both the international and local levels. But I see that there’s an 18 month window here, where there’s a lot to still be settled, as not all the rules are written. So here at the PDMA we are interested in understanding the implications and helping our members operate effectively in the new system. My biggest single concern is that the rules are going to get in the way of innovation, more than they are going to help.
Insights On The Patent Reform Act Of 2011 At Michigan Technological
The Patent Reform Act of 2011 has important ramifications for R&D organizations. As the start to a series of articles on the topic I spoke with Jim Baker, Ph.D., Executive Director, Innovation and Industry Engagement, at Michigan Technological University about his University’s preparation ahead for Patent Reform.
John: What steps has your college taken to prepare for the America Invents Act?
Jim: We have not done anything very much dramatic, no structural changes. One thing, we have tried to do, is better educate people on the consequences on public disclosure.
Rebecca Oesterle: Energizer Case At Structural Packaging Summit
The “Structural Packaging Summit,” will be kicking off in only a couple of months. As Newlogic’ President, Marc Drucker, continues to review patent reform and it’s relation to the future of packaging the rest of Newlogic is hard at work reviewing upcoming presentations.
Rebecca Oesterle has worked at Energizer for 26 years and is currently the manager of global packaging development at Energizer Holdings. Rebecca will be presenting “Case Studies in Success: The Easy-Open Battery Package,” which describes the collaboration with Tegrant to develop an EZ Turn and Lock battery blister package for hearing aids.
History of R&D Outsourcing
When was R&D First Outsourced?
Outsourcing of R&D began on a small scale prior to the 1970s and 1980s. There are examples of R&D outsourcing dating back as far as the 1500’s with Italian Renaissance artist Michelangelo, who set up a network of specific suppliers to provide the materials and skills he needed to create his work.
More recently, the 1930’s saw companies in the United States were contracted to conduct R&D on the government’s behalf. During that same decade, the largest American and European firms performed 7% of their R&D functions abroad. This number has been steadily rising since the 1960’s, when a sample of 32 multinational companies were conducting 6.2% of R&D abroad, and by 1995 the number had risen to 25.8%.
During the 1990s, as a consequence of globally distributed R&D networks, R&D outsourcing began to rapidly expand. The explosion of outsourcing innovation was additionally facilitated by a number of other factors such as improved intellectual property rights and changes in trade and investment governance.
Christopher Yows & Dr. Pepper Case At The Structural Packaging Summit
The “Structural Packaging Summit,” is approaching in Feb/March of 2012 and Marc Drucker, President of Newlogic will be discussing patent reform coming and the dramatic change it will have on R&D. As we ramp up for the summit, we thought we’d interview some of the other presenters.
Christopher Yows is a 17 year veteran a R&D/Leverage, and runs its Structural Brand Development Business unit. He will be co-presenting with Patrick George Director of Engineering at Dr. Pepper Snapple Group on the topic, Rapid Refresh in 28 weeks – An “Idea to tool” process.
Apple’s Consumer Insights & Product Portfolio Process
In reviewing the process of Apple’s product development, we discuss how two R&D strategies have led to its innovation success and ultimately the establishment of category leadership: its strategic project portfolio management and consumer insights research.
Looking at the consumer electronics industry, Apple is a category leader with a small product portfolio that only features the iPod, iPhone, iPad and Mac. Apple benefits from its strategy of choosing R&D projects and refining project goals. Apple has been providing consumers with different and exceptional experiences, yet they understand their audience by observation and using internal resources.
This week, we will recap several decisions in the product development process of the iPhone and iPad to explain Apple’s R&D strategies.
Structural Packaging Summit Presents Jonathan Asher
Marc Drucker, President of Newlogic will be discussing patent reform at the “Structural Packaging Summit,” in March of 2012. Also presenting at SPS will be Jonathan Asher, Senior Vice President of Perception Research Services. Mr. Asher will be presenting on packaging structures ability to not only contain, transport, and dispense product, but also their package structures ability to act as a brand communicator in Structural Packaging: Containing Products and Building Brands. We asked Mr. Asher some questions about his background and presentation:
John: What are some of the highlights of your presentation?
Jonathan: I’m going to discuss the how structural packaging can be a really powerful tool for a marketer.
3 Issues R&D Leaders Face When Outsourcing R&D Projects
There are many aspects of outsourcing innovation that companies and R&D leaders need to consider. After having looked at several reasons for outsourcing R&D projects, as well as a handful of risks of outsourcing, Newlogic now turns our attention to some of the issues outsourcing brings about that R&D need leaders.
How to Make Selections For Outsourcing R&D Projects
One of the things an R&D leader will be called upon to do is make selections on which projects to pursue. The R&D leader will have delegation over both in-house and outsourced projects, at least to some extent. The R&D director needs to be able to recognize in which areas the company does and doesn’t have competencies. The tasks the company performs well should remain in-house, while the tasks that the company does not do, cannot do, or isn’t as good as it could be, should be outsourced. Vivek Wadhwa of techcrunch.com says that innovation of core products should not be outsourced because the developers of these innovative technologies need to simultaneously interact with each other and their potential consumers, something made more difficult through an outsourcing of this process.