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Protecting Innovation Avimanyu Datta, PhD.
Chapter 9 Protecting Innovation Avimanyu Datta, PhD.
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Overview Firms must decide whether and how to protect their technological innovations. Protecting innovation helps a firm retain control over it and appropriate the rents from it. However, sometimes not protecting a technology is to the firm’s advantage – it may encourage others to support the technology and increase its likelihood of becoming dominant. Whether and how to protect technological innovation is an important aspect of a firm’s technological innovation strategy (keeping in mind dispensing the technology freely may be the most advantageous decision). There is a range of protection mechanisms available, each with its advantages and disadvantages. Protection moves along a continuum ranging from wholly proprietary to wholly open. Identify the factors a firm should consider when formulating a protection strategy. 2
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Appropriability Appropriability: The degree to which a firm is able to capture the rents from its innovation. Appropriability is determined by how easily or quickly competitors can copy the innovation. Some innovations are inherently difficult to copy (tacit, socially complex, etc.) Firms may also attempt to protect innovations through patents, trademarks, copyrights or trade secrets. Appropriability is the degree to which firm is able to capture rents from its innovation and is a function of how easily competitors can imitate the innovation (i.e. whether the underlying knowledge is tacit or socially complex) and the strength of the chosen protective mechanism. 3
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Patents, Trademarks and Copyrights
Patents, trademarks and copyrights each protect different things. Patents: rights granted by the government that excludes others from producing, using, or selling an invention. Must be useful, novel, and not be obvious. Utility patents protect new and useful processes, machines, manufactured items or combination of materials. Design patents protect original and ornamental designs for manufactured items. Plant patents protect distinct new varieties of plants. In 1998, many software algorithms became eligible for patent protection. Patents, trademarks and copyrights all protect intellectual property. Patents apply to inventions, trademarks to words or symbols intended to distinguish the source of a good, and copyrights protect original artistic or literary work. Patents are a property right granted by a government to exclude others from producing, using, or selling the invention in country the patent in which the patent is issued, for a limited time. There are three types of patents: Utility Patents protect a new and useful process, machine, manufactured item, or combination of materials. Design Patents protect new, original and ornamental design for a manufactured item. Plant Patents protect the invention or discovery and asexual reproduction of any distinct and new variety of plant. The three tests that must be passed before patent approval is granted are 1) usefulness, 2) novelty and 3) obviousness (i.e. must not be obvious). Not subject to patents are the following―the discovery of scientific principles pertaining to natural laws, substitution of one material for another, changing the size of an existing device, making something more portable, substituting equivalent elements, altering the shape of an item, and printed materials. 4
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Patents, Trademarks and Copyrights
The patent process can take 2-5 years, and involves a number of costs. Fee Types ($US) Regular Fee Small Entity Fee Patent Filing Fees Basic patent filing fee—Utility $330 $165 Search Fee—Utility Examination Fee—Utility Basic patent filing fee—Design Search Fee—Design Examination Fee—Design Patent filing fee—Plant Search Fee—Plant Examination Fee—Plant Patent Post-Allowance Fees (paid after Patent Office approves patent) Utility patent issue fee $1,510 $755 Design patent issue fee Plant patent issue fee 1, Publication fee The process of applying for a patent requires the submission of drawings and/or explanation of use and a description of the manufacture and differentiating element. Submission of materials is followed by a review by a patent examiner and a publication period that gives others the right to challenge the patent. If all tests are passed and the request is unchallenged the patent is granted. The U.S. patent fee schedule is shown in Figure 9.1. 5
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Patents, Trademarks and Copyrights
Patent Laws Around the World Countries have their own laws regarding patent protection. Some treaties seek to harmonize these laws. Paris Convention for the Protection of Industrial Property Foreign nationals can apply for the same patent rights in each member country as that country’s own citizens. Provides right of “priority” – once inventor has applied for protection in one member country, they can (within certain time period) apply for protection in others and be treated as if they had applied on same date as first application. Patent Cooperation Treaty (PCT) Inventor can apply for patent in a single PCT receiving office and reserve right to apply in more than 100 countries for up to 2 ½ years. Establishes date of application in all member countries simultaneously. Also makes results of patent process more uniform. Patent law around the world differs and protections are not reciprocal. Some of the key differences are: Outside the US, publication about the invention before applying for the patent will bar the right to a patent. In the US, inventors have a 1year grace period within which they can publish before applying for the patent. Many countries have a “working requirement” requiring the invention be manufactured in the country within a certain time period (often 3 years) after the patent is granted. Of several international treaties related to patent laws around the world, the two most significant are the Paris Convention for the Protection of Industrial Property (eliminates any differences in patent rights afforded a citizen versus a foreign national, establishes the right of “priority”, eliminates barriers to patenting inventions previously revealed by public disclosure) and the Patent Cooperation Treaty (single application valid in all countries and the inventor has 2 ½ years to file in other signatory countries). 6
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Patents, Trademarks and Copyrights
Countries that are members of Patent Cooperation Treaty PCT Covered countries Non-PCT Covered countries 7
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Patents, Trademarks and Copyrights
Trademarks and Service Marks: a word, phrase, symbol, design, or other indicator that is used to distinguish the source of goods form one party from goods of another (e.g., Nike “swoosh” symbol) Rights to trademark are established in legitimate use of mark; do not require registration. However, marks must be registered before suit can be brought over use of the mark. Registration can also be used to establish international rights over trademark. Two treaties simplify registration of trademarks in multiple countries: Madrid Agreement Concerning the International Registration of Marks, and the Madrid Protocol. Countries that adhere to either or both are in Madrid Union (84 members) Trademarks and Service Marks protect a word, phrase, symbol, design or other indicator (perceived through the five senses) used to distinguish the source of goods from one party from the goods of another and also prevent the use of similar marks that may be confusing to the consumer. A service mark distinguishes the provider of a service instead of a product. These marks do not expire as long as they are in use. Rights to marks are established in the legitimate use (i.e., the trademark does not have to be registered) though registration offers some advantages. Trademark Protection Around the World varies as does patent protection. Residents and citizens of countries participating in the World Intellectual Property Organization benefit from a System of International Registration of Marks that is governed by two treaties: the Madrid Agreement and the Madrid Protocol. 8
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Patents, Trademarks and Copyrights
Copyright: a form of protection granted to works of authorship. Copyright prohibits others from: Reproducing the work in copies or phonorecords Preparing derivative works based on the work Distributing copies or phonorecords for sale, rental, or lease Performing the work publicly Displaying the work publicly Work that is not fixed in tangible form is not eligible. Copyright is established in first legitimate use. However, “doctrine of fair use” stipulates that others can typically use copyrighted material for purposes such as criticism, new reporting, teaching research, etc. Copyright for works created after 1978 have protection for author’s life plus 70 years. Copyrights protect works of authorship (fixed in a tangible form of expression) for a period of 70 years in the U.S. These works include literary, dramatic, musical, artistic and certain intellectual works. A copyright is established by legitimate use of the work and provides the exclusive rights to reproduce the work, prepare derivative works, distribute copies by sale or other transfer of ownership, by rental, lease, or lending, perform the work publicly (including digital audio transmission) and display the material publicly. Copyrights provide for the “fair use” of the material for purposes such as criticism, comment, news reporting, teaching, scholarship or research. 9
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Patents, Trademarks and Copyrights
Copyright Protection Around the World Copyright law varies from country to country. However, the Berne Union for the Protection of Literary and Artistic Property (“Berne Convention”) specifies a minimum level of protection for member countries. Berne convention also eliminates differential rights to citizens versus foreign nationals. Copyright Protection Around the World. There is no international copyright law that protects an individual’s works throughout the world. There are, however, a number of international treaties that extend reciprocal copyright protection amongst signatories. The Berne Union for the Protection of Literary and Artistic Property is among the most important. 10
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Trade Secrets Trade Secret: information that belongs to a business that is generally unknown to others. Firm can protect proprietary product or process as trade secret without disclosing detailed information that would be required in patent. Enables broad class of assets and activities to be protectable. To qualify: Information must not be generally known or ascertainable. Information must offer a distinctive advantage to the firm that is contingent upon its secrecy. Trade secret holder must exercise reasonable measures to protect its secrecy. Trade secrets consist of information that belongs to a business but is generally unknown to others that confer a distinct advantage in the form of economic rents for as long as it remains valuable and private. An advantage of classifying proprietary information as a trade secret is they need not meet the stringent requirements of patent law and a broader class of assets and activities can be protected. The Uniform Trade Secret Act attempts to establish a consistency between trade secret laws amongst the U.S. states. To be subject to the Uniform Trade Secret Act, information must meet three criteria: The information must not be generally known or readily ascertainable through legitimate means. The information must have economic importance contingent upon its secrecy The trade secret holder must exercise reasonable measures to protect the secrecy of the information For information meeting the above criteria, the Uniform Trade Secret Act prevents others from copying, using or otherwise benefiting from the secret without the owner’s approval if they are bound by a duty of confidentiality, they have signed a non-disclosure agreement, they acquire the secret through improper means such as theft or bribery, they acquire the information from someone unauthorized to disclose it, they learn the information in error, but have reason to believe it is a protected trade secret. 11
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The Effectiveness and Use of Protection Mechanisms
In some industries, legal protection mechanisms are more effective than others E.g., in pharmaceutical patents are powerful; in electronics they might be easily invented around. It is notoriously difficult to protect manufacturing processes and techniques. In some situations, diffusing a technology may be more valuable than protecting it. However, once control is relinquished it is difficult to reclaim. Protection mechanisms their effectiveness are industry specific. Where patents offer little protection, the firm may choose to rely on trade secrets, but the effectiveness of trade secrets also varies with the type of technology and the industry. 12
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IBM and the Attack of the Clones
Theory In Action IBM and the Attack of the Clones In 1980, IBM was in a hurry to introduce a personal computer (PC). It used off-the-shelf components such as Intel microprocessors an operating system from Microsoft, MS DOS. It believed that its proprietary basic input/output system (BIOS) would protect the computer from being copied. However, Compaq reverse engineered the BIOS in a matter of months without violating the copyright, and quickly introduced a computer that behaved like an IBM computer in every way. Compaq sold a record-breaking 47,000 IBM- compatible computers its first year, and other clones were quick to follow. In 1980 IBM was anxious to pursue a share of what they perceived would be a valuable personal computer market. Although IBM used off the shelf components, they felt confident their product would not be easily duplicated because the computer code used to link the hardware to the software (BIOS) was protected by copyright. The weakness in their thinking was that the written lines of code were protected, but the functions the code produced were not. Through a very carefully engineered process to circumvent the law Compaq deconstructed the code and had engineers write their own code to duplicate the functions. The result was that Compaq was able to produce and sell a record number of IBM-compatible computers without infringing on IBM’s copyright. There are some situations where a company might decide they are better served by disseminating technological secrets in order to establish their technology as the dominant design. The downside of this strategy is that the firm may lose the opportunity to capture monopoly rents and may not be able to regain control of the technology in the future. Liberal diffusion of the technology can also result in the fragmentation of the technology platform and the “standard” may cease to exist. 13
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The Effectiveness and Use of Protection Mechanisms
Wholly Proprietary Systems vs. Wholly Open Systems Wholly proprietary systems may be legally produced or augmented only by their developers. Wholly open system may be freely accessed, augmented and distributed by anyone. Many technologies lie somewhere between these extremes. Wholly Proprietary Systems versus Open Systems Wholly proprietary systems are based on company-owned technology protected by patents or some other means. The technology is generally not compatible with other manufacturers’ products and the developer is usually able to appropriate rents from the technology. Customers may resist adopting these technologies because of their higher costs and lack of compatibility with other products. Wholly open systems are not protected and may be based on freely distributed technology, are quickly commoditized and offer little opportunity to appropriate rents. Most technologies are offered somewhere between wholly open and wholly proprietary and are protected by a range of control mechanisms. This range is exhibited by the control continuum EXAMPLES Video game consoles are an example of technology controlled at the wholly proprietary end of the continuum. On the other hand, rights to produce games for the consoles are usually licensed to third party developers in order to generate a profusion of games. Licensing policies for Microsoft’s Windows are more open in that Microsoft retains all rights to augment the software, but licenses complementary goods providers in order to promote the development of such products and licenses equipment manufacturers to distribute the software with their hardware. Sun’s “Community Source” policy for Java moves a bit further in the direction of wholly open. While Sun allows developers to augment the source code and does not collect a licensing fee, all changes to the code require approval by the “Java Community Process”, managed by Sun. This allows Sun to disseminate the technology while maintaining control over the integrity of the core platform. 14
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The Effectiveness and Use of Protection Mechanisms
Advantages of Protection Proprietary systems offer greater rent appropriability. Rents can be used to invest in further development, promotion, and distribution. Give the firm control over the evolution of the technology and complements Advantages of Diffusion May accrue more rapid adoptions if produced and promoted by multiple firms Technology might be improved by other firms (though external development poses its own risks). Advantages of Protection include great rent appropriability, giving developers greater incentives to invest in technological development, promotion and distribution. A sponsor of proprietary technology may offer the technology at an especially competitive price, advertise aggressively or subsidize the production of complementary goods in order to promote the technology and secure its position as the single producer of the standard. Another advantage of protecting a technology is to retain architectural control (i.e. meaning the ability to determine the structure and operation of the technology and its compatibility with other goods and services). This is an especially important feature of control when the manufacture and sale of complementary technologies are a key part of the firm’s strategy. Advantages of Diffusion Diffusion encourages rapid adoption, resulting in a large installed base and a strong market for complementary goods. Open technologies may also benefit from the additional development efforts of other parties without additional cost to the original developer. 15
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The Effectiveness and Use of Protection Mechanisms
Production Capabilities, Marketing Capabilities, and Capital Factors influencing benefits of protection vs. diffusion Can firm produce the technology at sufficient volume or quality levels? Are complements important? Are they available in sufficient range and quality? Can the firm afford to develop and produce them itself? Is there industry opposition against sole source technology? Can the firm improve the technology well enough and fast enough to compete with others? How important is it to prevent the technology from being altered in ways that fragment it as a standard? How valuable is architectural control to the firm? Does it have a major stake in complements for the technology? The following factors should be considered when deciding whether and to what degree a firm should protect its innovation: Production and marketing capabilities, and capital–if unable to produce or market the technology (and complementary goods) at sufficient volume or quality, protecting the technology may hinder its adoption. Industry opposition against sole source technology–other industry members may jointly be able to exert enough pressure so that a firm will offer the technology with fewer restrictions. Resources for internal development–a firm lacking in sufficient resources to invest in the technology’s functionality and ongoing improvements may not be able to compete in the market. Control over fragmentation–is important when standardization and compatibility are important. Incentives for architectural control–are especially high when the firm is a significant producer of complementary products. 16
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Sun Microsystems and Java
Theory in Action Sun Microsystems and Java In 1995, Sun developed a software programming language called Java that enabled programs to be run on any operating system (e.g., Windows, Macintosh). This would lessen pressure for one operating system to be dominant. Members of the software community felt that Sun should make Java completely “open” – they argued that “Java is bigger than any one company.” However, Sun was afraid that if Java were completely open, companies would begin to customize it in ways that would fragment it as a standard. Sun decided to distribute Java under a “community source” program: no license fees, but all modifications to Java required compatibility tests performed by Java’s own standards body. 17
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The Digital Music Distribution Revolution
In 1991, Fraunhofer IIS of Germany invents the MP3 format; by late 1990’s the format is wildly popular. In 1999, Shawn Fanning releases Napster, a free software program that allows users to easily share MP3 files (“peer-to-peer”) The RIAA starts to worry about illegal trade of copyrighted music. In 2001 it gets a court ruling against Napster, taking it offline. However, new peer-to-peer music services began to sprout up to meet the demand of the large population of “music pirates.” In 2003, Apple opens its iTunes Music Store – a one-stop-shop for music files from the five major record labels. Now record industry is earning significant revenues from MP3s. In 2006, France pushes Apple to loosen its restrictions on iTunes music and iPods. Should Apple use a more “open” model? Meanwhile, new models of digital distribution were emerging: Creative Commons (license agreements to make files public, legal, and free), and “Podcasting” (whereby whole “shows” could be downloaded). 18
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The Digital Music Distribution Revolution
Discussion Questions: What industry conditions lead to the revolution in audio distribution? Which stakeholders stand to benefit most (or least) from this revolution? 2. Why did the music stores created by the record labels fail to attract many subscribers? What, if anything, should the record labels have done differently? 3. What will determine how long the success of the iPod and iTunes endures? Should Apple allow its iPods to play non-iTunes songs? Should Apple allow iTunes songs to play on non-iPod MP3 players? 4. Why would musicians sign away their copyright privileges to their songs through “Creative Commons”? 5. How is podcasting likely to impact the appropriability of recorded music, radio broadcasting, or other types of audio transmissions? 1. What industry conditions lead to the revolution in audio distribution described above? Which stakeholders stand to benefit most (or least) from this revolution? From the perspective of competitors in the recorded music industry (i.e., record labels), some of the industry conditions that lead to the audio distribution revolution include: -rapidly advancing information technologies that opened up new high-speed, low cost Distribution, storage, and advertising options for digital media -high consolidation in ownership over the major record labels -relatively high gross margins for recorded music, however a significant percentage of revenues were spent on advertising expenses -buyers rapidly adopting an audio format -- mp3 -- that posed a high threat of substitution to compact discs -a large population of potential suppliers (independent record artists) that wanted to have their music distributed to audiences, and could exploit the new information technologies to bypass the record labels to do so. The stakeholders that stood to benefit most from the digital music revolution included end consumers (because they could get a wide variety of music for cheaper prices, could buy individual songs instead of albums, and could store and play the music on a variety of devices), independent musicians (who would have wide reaching channels to reach potential audiences even if they had not been signed to a record label), sellers of digital media such as Apple (because they would have a new source of revenues), and sellers of digital media players such as Apple (because the revolution in digital audio distribution caused a surge in consumer purchases of such devices). The stakeholders who benefited less (or perhaps were even harmed) by the revolution included the major record labels (because a) a larger portion of music sales were either not major record label songs, or were sold illegally without royalty payments to the major labels) and traditional music retailers (because many music sales would now occur online, potentially diminishing the revenues of the traditional music retail channel). The effects are more ambiguous for manufacturers of CDs (MP3 music files enabled users to burn their own customized mixes to CD, spurring recordable CD sales, however many MPD files will never be burned to CD, and instead will be stored and played on other memory media), and for the artists signed to major record labels (on the one hand, MP3 sales may enable some artists to sell more music if consumers find the MP3 format to be of higher value, on the other hand the ready access consumers have to independent artists creates more competition for the signed artists; artists will also lose some royalties due to music pirating). 2. Why did the music stores created by the record labels fail to attract many subscribers? What, if anything, should the record labels have done differently? the music stores initially created by the record labels only carried music from those labels. This meant that consumers would likely have to visit multiple music stores to purchase the range of music desired. Furthermore, since consumers are often not versed in which labels produce the music of a particular artist, consumers may have had a hard time figuring out where to purchase a desired album or song. The record labels could have avoided this problem by collaborating on joint music store (or a webportal that made it seem like a single store, much as Amazon.com offers), making it easier for consumers to find everything they were looking for. 3. What will determine how long the success of the iPod and iTunes endures? Should Apple allow its iPods to play non-iTunes songs? Should Apple allow iTunes songs to play on non-iPod MP3 players? Both the iPod and the iTunes store are inherently very imitable. Apple doesn’t own the music it sells, making it reliant on other suppliers. A big part of their current success stems from a) successful branding, and b) the network externalities associated with the iPod-iTunes installed base. Given the large installed base of iPods, the restricted compatibility between iTunes and iPods creates a substantial barrier for competitors, which in turn, helps protect Apple’s margins. If the system were “opened up” so that iTunes could play on any device and iPods could play any song, both the device and the iTunes service would be subject to much greater pricing pressure. It thus serves Apple to resist opening them up, however students will be quick to point out that if a major competitor (or set of competitors) launches a very well-funded assault on Apple’s dominant position in this market, Apple may be forced to “open up” in order to be competitive (just as the open PC architecture outran Apple’s more proprietary computer hardware-software combination). 4. Why would musicians sign away their copyright privileges to their songs through “Creative Commons”? For independent artists, the exposure of being widely distributed may be more valuable than their potential revenues if they protected their music. 5. How is podcasting likely to impact the appropriability of recorded music, radio broadcasting, or other types of audio transmissions? Podcasting may increase the ease and attractiveness of listening to music and other broadcasts that are not protected by copyright. It also provides an additional medium for piracy of content that is owned by others. Thus in the short run, Podcasting may decrease the appropriability of recorded media. On the other hand, in the long run sophisticated podcasters may emerge to dominate the market, and providers of digital content may develop sophisticated digital rights management technology that prevents pirating their content. Thus in the long run, podcasting could ultimately increase the appropriability of digital content. 19
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Discussion Questions What are the differences between patents, copyrights, and trademarks? Consider a firm that is considering marketing its innovation in multiple countries. What factors should this firm consider in formulating its protection strategy? When will trade secrets be more useful than patents, copyrights or trademarks? Can you identify a situation in which none of the legal protection mechanisms discussed (patents, copyrights, trademarks, trade secrets) will prove useful? Describe a technological innovation not discussed in the chapter, and identify where you think it lies on the control continuum between wholly proprietary and wholly open. What factors do you believe influenced the choice of protection strategy used for the innovation identified above? Do you think the strategy was a good choice? What are the differences between patents, copyrights, and trademarks? All three are legal mechanisms to protect innovation, but they apply to different types of goods and vary in the length of time they protect the item or process. Patents provide property rights protecting a process, machine, manufactured item (or design for a manufactured item), or variety of plant. The protection is limited to twenty years. Trademarks are words, phrases, symbols, design or other indicator that distinguishes the source of goods from one party from the goods of others. Trademarks can be protected indefinitely provided they continue to be used and the registration is renewed. Copyrights protect works of authorship and last a limited time, depending on when the work was created. Trademarks and copyrights can be established by use, but patents must be applied for and approved. Consider a firm that is considering marketing its innovation in multiple countries. What factors should this firm consider in formulating its protection strategy? The important issue in attempting to develop a protection strategy that crosses national boundaries is to have a clear understanding of whether or not the appropriate protection is offered in each country in which one will operate. If the protection is available the firm will need knowledge regarding the application process and the factors that might influence approval, such as publication of information about the technology and requirements about producing the technology in the country. It is also important to note the length of time the protection will remain in effect. When will trade secrets be more useful than patents, copyrights or trademarks? Trade secrets are often useful when the item does not meet the requirements for protection under another form. For example, a recipe would have to be protected by trade secret because list of ingredients are not patentable. Can you identify a situation in which none of the legal protection mechanisms discussed (patents, copyrights, trademarks, trade secrets) will prove useful? None of the mechanisms for protection will be effective when it is possible to “invent around” a patent. If, for example, the functions of a technology can be reproduced without having to produce them in the same way as the original product was produced, a patent will be of no use. The value of a trade secret is eliminated if the commercialization of a product reveals the underlying technology. Many electronic products share this characteristic. Describe a technological innovation not discussed in the chapter, and identify where you think it lies on the control continuum between wholly proprietary and wholly open. Students should come up with a variety of examples. The instructor can provide the example of Dupont’s Teflon. Dupont patented the chemical discovery, polymerized tetrafluoroethylene (PTFE) in 1941, and registered the trademark Teflon. Initially only Dupont could produce Teflon (wholly proprietary), but soon it began licensing the product to be used in other applications (limited to moderate licensing). The patent on polymerized tetraflouroethylene eventually expired (but the trademark remained intact) so other companies began producing polymerized tetraflouroethylene under different names such as Silverstone or T-Fal (mostly open). Notably, the EPA is now investigating the potentially harmful effects of PTFE products to the environment and human health. After more than 60 years of popularity, a decision is expected to be made in 2004 about whether the product should be withdrawn from the market. What factors do you believe influenced the choice of protection strategy used for the innovation identified above? Do you think the strategy was a good choice? Most chemical products are straightforward to protect via patent, and the combination of the patent and the trademark for the name Teflon seems to have been a very successful choice for Dupont. After years of proprietary ownership over the product which gave Dupont an opportunity to firmly establish the name of Teflon with its product, it is now able to earn considerable margins on the product even though it could be produced by any number of other manufacturers. 20
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Part Three: Implementing Technological Innovation Strategy
Structuring the firm to improve its likelihood of innovating, its effectiveness at new product development, and its speed of new product development, Managing new product development processes to maximize fit with customer needs, while simultaneously minimizing development cycle time and controlling development costs, Composing, structuring, and managing new product development teams to maximize new product development effectiveness, Crafting a strategy for effectively deploying the innovation into the marketplace, including timing, licensing strategies, pricing strategies, distribution, and marketing. 21
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