Perpetual Innovation

Category: intellectual property

  • The Mickey Mouse Protection Act

    The Mickey Mouse Protection Act

    When you hear The Mickey Mouse Protection act, you
    are probably thinking about how to keep the mouse’s tail out from under the heavy boots of the Florida State Governor. But the Law that is informally called the Mickey
    Mouse Protection Act of 1995 extended copyright protection for an additional 20
    years, giving Disney until November 2024 before the first copyrights on Mickey Mouse
    begin to roll off copyright protection.  This means that by Christmas of 2024 you can
    start to borrow and modify aspects of Steamboat Willie’s 1928 movie including
    the world-famous Mickey Mouse figure. HOWEVER, step softly around the mouse
    because Disney does have dozens of trademarks, so what comes into public domain
    on the one four-fingered hand, might still have intellectual property
    protection on the other. 

    The Copyright
    Term Extension Act of 1995     was sponsored by the late Sonny Bono of Sonny
    & Cher, so Sonny Bono’s name is part of the act. It is (derisively) called
    the Mickey Mouse Protection Act because Disney was one of the biggest and most
    conspicuous beneficiaries. Under the new law, corporations now have 95 years
    from first publication before their creative works go into the public domain.
    During that time the copyright owner(s) has exclusive rights to their creative
    works including sales and royalties. The intellectual property ownership of
    those rights can be assigned or sold. For an individual author/creator, the
    copyright lasts for 70 years after death. If multiple creators/authors, the
    copyright lasts for 70 years after the last author dies. (https://www.copyright.gov/help/faq/faq-duration.html)

    The cool thing about copyright (and trademark, for that
    matter) is that you simply put the cute copyright symbol © on creative works
    you want to designate as copyrighted and it magically becomes copyrighted.
    Cool. This is why you would want to indicate “copyright” on promotional
    materials, your books and your web site content. Books are often “registered”
    to strengthen copyright protection and to provide documentation if a lawsuit is
    needed to enforce your copyrights.

    What happens when a creative work loses its copyright
    protection? “After the copyright expires, the creative work falls into the
    public domain. Anyone can use a work in the public domain without permission or
    payment to the copyright holder. This includes making copies of the creative
    work and distributing transformative versions of it.” (https://MEKipLaw.com/the-mickey-mouse-copyright/)

    All types of intellectual property protection are discussed
    in the Patent Primer by Hall & Hinkelman.

    Visit the SBP Bookstore: http://www.lulu.com/spotlight/SBPlan

    Hall, E. B. & Hinkelman, R. M. (2017). Perpetual
    innovation™: Patent Primer 4.0. Patents, the great equalizer of our time    .
    (Also, find on Amazon in e-Book format.)

    #Copyright #IntellectualProperty #PerpetualInnovation
    #IPCommercialization

  • Is Trade Secret a Good Strategy? A Trade Secret Assessment

    Is Trade Secret a Good Strategy? A Trade Secret Assessment

    The most widely identified Trade Secret is, of course, Coke Cola. (The original formula included caffeine and cocaine – thus the name – but that is a different discussion!) In 1903, cocaine was removed, leaving caffeine as the sole stimulant ingredient, and all medicinal claims were dropped. But the Coke-a-Cola trade secret lives on. Sections below: 

    Most Widely Acknowledged Trade Secrets

    Other trade secrets include WD-40, Thomas’s English Muffins, the Google search algorithm, Listerine, Mrs. Field’s Chocolate Chip Cookies, Kentucky Fried Chicken, Big Mac special sauce, Bush’s Baked Beans, and the New York Times Bestseller List algorithm. 

    When you look at Strategic Business Planning Company’s Perpetual Innovation™ series of books, you will find descriptions of Trade Secrets and when they might be best utilized. In many cases, trade secrets that are ultimately released in commercial products are more advertising gimmicks than true secrets. Someone with a refined pallet, and a spectrometer, can identify all the elements that go into a bottle of Coke, for example. In which case, the copyrights © and Trademarks ® are more important than the (open) secret. We have had clients that wanted to use Intellectual Property (IP) protection for food products and consumer electronics. In both cases, the secret would be out there for an industrious competitor to reverse engineer once the product is launched. An “outed” secret in a competitor’s hands! A ruthless competitor could utilize all the powers of Intellectual Property against you, and all the powers of unethical business (like knock-offs) as well. 

    Probably the best trade secret is related to internal manufacturing where the finished product gives no evidence as to the innovation that yields a competitive advantage. In fact, we have had clients who patent an internal manufacturing process but have no way of determining if competitors adopt the technique inside their factories. The patent application tells them how to improve their processes. Our advice might have been to keep this invention internal as a trade secret. However, once the patent application was filed (published really), the next best approach was to manufacture and sell the new machines that capitalized on the invention. Everyone in the industry needed to upgrade to realize the production improvement.

    Our Trade Secrets Assessment Tool

    SBP has a Short Trade Secret Checklist and a regular checklist to see if new technology should be considered for protection as a Trade Secret. Here is the short form (with only 6 of the original 11 questions).

    As well, here is the interpretation of the checklist assessment in this Short Form example; the score was 4.8 (out of 10). The Longer Form (not shown here) for this same business case was slightly higher at 5.1, up slightly from a low to a medium trade secret position.
    If a trade secret is the decision for IP protection, then you will want to develop a Trade Secret Plan. The plan will include how to protect the secret by limiting who knows the secret, confidentiality agreements, etc. The Trade Secret Plan will also address what happens when the secret is exposed. Note the when, not if, here. There might be circumstances where you would expose the secret yourself, maybe in the disclosure associated with a patent application.

    #TradeSecret #IntellectualProperty 
    #IntellZine #IPplan #SBPlan

    Uniform Trade Secrets Act (UTSA)

    This is from the UTSA (with 1985 Amendments):

    The USTA (Uniform Trade Secrets Act) “trade secret” (UTSA § 1.4) “means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

    The UTSA also provided refinement through comments to the definition of a trade secret itself:

    • Multiple parties may hold rights to the same trade secret, as they may all individually derive value from it.
    • A trade secret ceases to exist when it is common knowledge within the community in which it is profitable. This means that the secret does not need to be known by the general public, but only throughout the industry that stands to profit from it.
    • A party that reverse engineers a trade secret may also obtain trade secret protection for their knowledge, provided the reverse engineering process is non-trivial.
    • Knowledge preventing loss of funds, such as that a particular idea does not work, is valuable and as such qualifies for trade secret protection.

    Regarding reasonable efforts to maintain secrecy, the UTSA maintained that actions such as restricting access to a “need-to-know basis” and informing employees that the information is secret met the criteria for reasonable efforts. The UTSA stated that the courts do not require procedures to protect against “flagrant industrial espionage” were not necessary.(Uniform Trade Secrets Act with 1985 Amendments”. Retrieved 2020-04-19.)

    Remedies. The UTSA provided for several potential remedies for wrongs committed under the act, including injunctive relief, damages, and attorney’s fees.

  • The Patent KING: IBM for 28 years

    The Patent KING: IBM for 28 years

    IBM is again the leader in patents issued. That’s 28 years and running.  IBM had 9,130 patents issued in 2020, compared to the next highest, Samsung with 6,416.  There’s about 15 electronic and manufacturing companies with 2,000 to 3,000 patents issued. Note that all the top 10 are electronics and/or chip makers.  Forbes has a nice article by Roberts about the top 20 patent recipients of 2020. 

    Apple, the largest company by market cap ($2.1T), is 8th with 2,792 patents. Apple is starting to get serious about batteries and autos.

    Amazon and Google are the only two in the top 20 that are not electronics and/or manufacturing. Amazon (2,244 patents) comes up at 11th. Google at 17th had 1,817 patents issued. The automakers of Toyota and Ford are 14th and 15th.

    A couple years ago, Samsung kinda dethroned the King as discussed in our 2017 blog post: The End of a Patent Dynasty, IBM has Been Dethroned. Samsung, including all of its related companies, with lots and lots of design patents, outpaced IBM in 2016. For 2020, Samsung Display company had 1,902 patents, so Samsung, as a consortium of companies, again rivals IBM in total patents.

    GE, even though it is a shell of it’s former mega company, is still in the top 18, with 1,760 patents.  GE continues to divest of various business unites including financials to focus on a few core business like turbines, renewables, transportation and healthcare. 

    A Bloomberg article by Brody Ford on March 12 2021 discusses IBM as more of a Godfather of Patents than a King. With more that 38,000 active patents and a spectacular war chest of patent licenses, or cross licenses, IBM is a force to be reckoned with. Ford discussed Chewy fighting back, kind of the dog nipping at the heels of the King (or the Godfather). IBM is way down from the times when it was customary to produce $1B a year from licensing royalties. Patent revenues peaked at $1.7B in 2000 and then again in 2016 at $1.6B. The patent landscape has changed. One thing that Ford alluded to, but didn’t fully address, is that IBM has significantly changed the way they approach patent commercialization. If they can’t directly use patents, they seem to be doing a much better job of figuring out ways to commercialize. If they sell the patent, that, I believe, would not show up in their patent revenues which reflects royalty streams. 

    In the meanwhile, IBM is on a multi-decade move to upgrade the company to more relevant businesses and business models. Mainframes are only needed for businesses in “as a service” models (SaaS). 

    IBM is a leader in Quantum computing and in blockchain. IBM is actually my way to play the blockchain mega trend and avoid the mania associated with various bits and bytes of cyber coins. 

  • IntellZine: Big winners of Renewable Energy — IP and Manufacturing

    Here is a June 7 2020 post over on IntellZine, our Intellectual Property-centric bog. The blog post was about Renewable Energy patents an how much they have expanded, especially solar IP.

    Here is the Big winners of Renewable Energy: IP and Manufacturing article.

    As you look at the companies that are winners in Renewable Energy (RE) you have distinct winners (and losers, especially in the fossil fuel world). But there are entire countries that stand to win as well. Several countries have become exporters of energy, for example, when they produce more regional energy than they can use. I like the image set related to 25 areas/countries that are winners in Renewable Energy (at LoveMoney.com, The world’s greenest nations that are reaping the rewards). Here’s Love/Money’s take on China, both in terms of the technology (Intellectual Property) and the manufacturing/exporting:
    “Of all patents for renewable energy issued globally, as of 2016 China has 29%. That’s more than 150,000 patents, which underlines the focus of China’s investment in the industry. So it’s not a shock that the country has been dubbed a “renewable energy superpower” in a recent report issued by the Global Commission on the Geopolitics of Energy Transformation. The report argued that, as renewables come to fossil fuels globally, new energy leaders will emerge.”
    The US had only 100,000 patents (vs 150,000 for China) and Europe had 75,000 in renewables according to the Forbesanalysis in Jan 2019.  Overall, patents in renewables has made impressive progress, even though RE patents are only 1% of all patents (and other high-tech categories like computers are about 6%). Check out the great article at the World Intellectual Property Organization (WIPO) on RenewableEnergy patents by James Nurton. More than half of the RE patents through the Patent Cooperation Treaty (PCT) are in solar. Fuel Cell technology has consistently exceeded Wind in terms of patents. Fuel Cell (using hydrogen) is important because it can function as battery, battery backup, stationary power and portable power. Geothermal is trivial are of RE patent activity. When the RE “international” patents (PCTs) are registered at the national level the first three countries are: Japan, USA, and Germany.
    On the manufacturing/exporting side, China has been a huge producer of the world’s renewables (solar, wind and more). Here’s how LoveMoneysummarized Chinese production of RE:
     “China is currently the world’s largest exporter of solar panels, wind turbines, batteries and electric vehicles. The country is well-suited to wind power production, and it has an estimated potential capacity of 2,380 gigawatts. What’s more, many Chinese companies are investing in renewables.”
    Keep in mind that many things sustainable are lower tech, not higher tech. Much, if not most of sustainable solutions does not require break-through solutions. Using less energy can be very low tech (turning the lights out when out). Driving less (by telework) can be no tech. But in the cases where leading tech can be a major competitive advantage, he owners of IP will win.
    Look also at GlobalTrends in Renewable Energy Investment in 2019 by UN Environment Program and Bloomberg. Where is RE coming from? The investment from 2010 through 2019 has been $2.6T with 52% in Solar and $41% in Wind.
    And the final question: how do we get to 100% renewable energy in a reasonably short period of time?
    #RenewableEnergy #REPatents #IntellectualProperty #IntellZine #SustainZine #WIPO #Sustainability #PCT #REInvestment #Solar #Wind #RE100

  • Potatoes and Patents

    Patents, Potatoes and Pomegranates 
    “I remember thinking- there cannot be anything clever in delivering beans…”  That was the reaction of Lucy Wojcik in 2014 being interviewed for the job of IP attorney at Ocado, an online supermarket company in the United Kingdom.
    It does furrow eyebrows when considering the part, if any, IP would play in a company that grows vegetables and fruits and then distributes them as meals, but now Ms Wojcik has a decidedly different view, https://patentstrategy.managingip.com/Articles/110?from=daily.  As she came to find out even in the supermarket business, “… as soon as you have problems that need solutions and engineers, you are generating IP.”
    The Ocado and its emphasis on IP serves as today’s model of how to maintain a competitive presence today and tomorrow.  With very few exceptions, a company today needs a strong R&D/IP culture to survive.  It must be an integral of the conduct of business, a primary consideration in company strategic planning.  It should be the source of new, competitive products and services as well as the mechanisms for protecting those products from competitive inroads.  A comprehensive tour de force for the “how to” is Perpetual Innovation™ A guide to Strategic Planning. Patent Commercialization and Enduring Competitive Advantage by Hall & Hinkelman available at Amazon and Lulu.
    Perpetual innovation™ Patent Guide & Patent Primer: http://www.lulu.com/spotlight/SBPlan