26 Sep 2006:
Inspired by a two-month, online forum involving dozens of experts, IBM (NYSE: IBM) today formalized a new, groundbreaking corporate policy governing the creation and management of patents.
The worldwide policy, built on IBM's long-standing practices of high quality patents and transparency of ownership, is designed to foster integrity, a healthier environment for innovation, and mutual respect for intellectual property rights. IBM encouraged others in the patent community to adopt similar policies and practices, more stringent than currently required by law.
The tenets of the new policy, which applies everywhere IBM does business, are:
- Patent applicants are responsible for the quality and clarity of their patent applications.
- Patent applications should be available for public examination.
- Patent ownership should be transparent and easily discernable.
- Pure business methods without technical merit should not be
Additional detail on the policy can be found below. IBM also announced several actions it will undertake immediately to implement and support this new policy:
- IBM's technical experts will spend thousands of hours annually
reviewing published patent applications submitted to patent offices. For example, they will provide pertinent prior art to assist the United States Patent & Trademark Office (USPTO) in verifying the patentability of submissions more rapidly and accurately, as part of the USPTO Community Patent Review pilot. IBM urges other qualified experts to similarly provide their time and knowledge by participating in this program.
- IBM will make its patent applications open to community review.
- IBM will make available over 100 of its business-method patents -- about 50 percent of IBM's total business method patents -- to the public, where they can be used openly to stimulate innovation. IBM will focus future business method filings on those with substantial technical content, and as a result, expects to substantially reduce its filing of business method patents.
- IBM will promptly and publicly record, in its name, assignment of all patents and published patent applications it owns.
"The centerpiece of this policy, and our actions to support it, is based on the principles that patent quality is a responsibility of the applicant," said Dr. John E. Kelly III, IBM senior vice president for Technology and Intellectual Property. "These principles are as relevant in emerging regions of the world as they are in more mature economies. IBM is holding itself to a higher standard than any law requires because it's urgent that patent quality is improved, to both stimulate innovation and provide greater clarity for the protection and enforcement of intellectual property rights."
The impetus to share this policy and to encourage an open discourse on best practices for patent holders was sparked by a two-month online forum facilitated by IBM (please see below for more detail). The forum brought together dozens of the world's most prominent intellectual property experts from the fields of government, academia and economics. IBM used wiki technology to enable the participants to debate and suggest solutions for pressing intellectual property issues.
"As advances in information technology and basic science transform the nature of innovation and increase the relative value of intellectual property, it is crucial that we modernize the systems for creating and protecting those assets," said Ronald Mann, University of Texas School of Law, and one of the wiki participants. "Until that time, having the community work together to adhere to a set of principles that sets a higher standard for behavior is even more important."
IBM believes that widespread adoption of a more formal code of conduct around patents could ease the burden on legal and government administrative systems. Those systems now deal with growing numbers of questionable patent applications and patent lawsuits.
IBM Patent Policy
- Patent applicants are responsible for the quality and clarity of their patent applications. Patent applications must be written with clear specifications and claims, and include a thorough review of prior art. This includes performing patentability searches in advance of filing patent applications, and of course providing all of the pertinent prior art documents to the applicable patent offices.
- Patent applications should be available for public examination and comment. Patent applications are generally published automatically 18 months after filing, but where they are not, applicants should request 18-month publication. Applicants should also permit public comment on their published patent applications, so that the best prior art and other pertinent information can be made available to patent offices during the patent examination process.
- Patent ownership should be transparent and easily discernible. Patent owners should record their ownership in their own name and not in the name of a shell company, and patent applicants should state in their applications who owns those applications.
- Pure business methods without technical merit should not be patentable. All inventions with technical merit should be patentable, provided they meet all of the requirements of patentability. Applicants should seek to publish, not patent, their pure business method innovations if they wish to prevent others from patenting similar business methods.
Intellectual Property Marketplace Wiki
Creating, capitalizing on, and protecting intellectual property have become vital business functions. Firms are increasingly striving to become globally integrated enterprises that collaborate with their extended value chains, and the resulting intellectual property plays a central role in the evolving future of this trend.
These issues were a consistent undercurrent throughout IBM's Global Innovation Outlook, a worldwide conversation with 248 thought leaders from nearly three dozen countries and regions, representing 178 organizations.
IBM assembled a worldwide community of 50 experts in the fields of law, academia, economics, government, technology and others. These experts collaborated with IBMers to discuss the issues, determine the key characteristics of a properly functioning IP marketplace, and establish a blueprint for meaningful change.
Throughout May and June 2006, the group collaborated in the online IP Marketplace wiki. Wikis are a new media Web 2.0 tool that enables documents to be collaboratively written and rewritten through a common Web site.
The wiki was divided into six sections, each of which also contained a corresponding discussion area. These discussion areas were designed to encourage a free and open exchange of ideas, and provoke new approaches and new thinking about the IP marketplace.
The participants debated some of the most significant challenges surrounding intellectual property -- sometimes reaching consensus on the solution and sometimes agreeing to disagree.
The result of the project is a collaboratively written document that establishes the foundation for building a functioning marketplace for the creation, ownership, licensing and equitable exchange of intellectual property. This document has been published and is now available at www.ibm.com/gio/ip. Hard copies of the book are also available by contacting firstname.lastname@example.org