T-I JOURNAL19 2

PATENTS AND STANDARDS COURSES AT EINDHOVEN 497



competitors. Standards play a central role in instance, patent systems may result in people in
the many markets where connectivity and developing countries being deprived of much-
interoperability are required—think of DVD needed pharmaceutical drugs.”
standards in consumer electronics, the various Note that we deliberately decided to use the word
mobile telecommunications and WiFi stan- “patents” in the title of the course, not the term “intel-
dards, and the Transmission Control Protocol lectual property (IP).” Although the course also
(TCP) and the Internet Protocol (IP) standards, extensively covers copyrights, trademarks, design
without which the internet could not work.
Standards-setting meetings are not about dusty rights, and other forms of IP, our prospective students
may not be acquainted with the term IP.
rooms with old-fashioned participants but In terms of set-up, Patents and Standards is a series
are actually the places where firms send their of three consecutive courses focused on exploration,
very best and brightest people, and where they specialization, and application, respectively. Each of
negotiate and decide what a technology field these courses spans one quartile (approximately 11
will look like 10 or 20 years from now. This
is where the winners and losers in industries weeks) and requires a nominal workload of 140 hours
(for class attendance, assignments, exam preparation,
are decided.
b. As future engineers, knowledge of patents and etc.). For students, the course is well aligned with the
underlying philosophy of the USE courses:
standards will likely serve students well in their
daily work, and the skills they develop in this • User perspective: Here, we interpret the user as
class enhance their curricula vitae (CV) in a the individual, creative user/innovator/inventor
valuable way and may give them a leading edge who is aiming to patent their own research
when applying for jobs. The ability to both or design results, considering other means of
know when one of their own inventions has protection (e.g., copyright, design right), or
the potential to receive exclusive protection considering involvement in standards. The user
and how to avoid using innovations that oth- perspective focuses on the creation of societal,
ers have been able to protect are not merely firm, or individual value and the skills to rec-
desirable skills; increasingly, companies will ognize such values. We pay particular attention
expect engineers to do these competently. Some to the entrepreneur and the role of patents in
companies may even see individuals who do firm creation, attracting capital, etc.
not possess such fundamental knowledge as a • Societal perspective: This perspective focuses
risk and a business liability. At the same time, on both the positive and negative impact of pat-
while the law can create risks—which should enting on society as a whole, both in economic
be minimized from a firm’s perspective—it can and non-economic terms, following recent crit-
also offer opportunities to create value (19). ical discussions by authors such as Jaffe, Bessen,
c. Some graduates go even further; quite a sig- and Boldrin (20,21). We also address the impact
nificant number of engineers who graduated of standardization (and, specifically, the impact
from our institute have gone on to make patents of a lack of standardization) and the complex
and/or standards their main field of expertise. interplay between standards and patents.
They work as patent attorneys or standardiza- • Entrepreneurial perspective: This perspec-
tion experts. For instance, Philips Intellectual tive focuses on how firms adopt patenting
Property & Standards, the department of that and standardization strategies and how that
firm responsible for standards and patents and affects the industries in which they are active.
headquartered in Eindhoven, employs no fewer It involves multiple firm perspectives, such as
than 245 professionals. start-ups, upstream knowledge firms, large
d. Both patents and standards affect individ- implementing firms, universities and knowl-
uals, markets, businesses, and society as a edge institutes, and so on. Specific attention
whole, raising many interesting questions. For will be paid to knowledge-intensive firms,

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new technology-based firms, and the creative of selected areas, especially those relating to grand
industry, which is especially relevant in the challenges such as energy, health, and smart mobility.
Dutch context. Students are also stimulated to take a broader view,
• The holistic approach we adopt on IP is in line like thinking about the societal impact of patents on
with recent academic contributions on value the availability of AIDS medication. Finally, students
articulation, such as the paper by Conley et learn how design rights, copyrights, trademarks, and
al. (22). other Intellectual Property Rights (IPR) are used in
conjunction with patents.
Other academics have shared their experiences of During the specialization course, we aim to expand
designing content for educating engineering students students’ knowledge in selected, relevant topics and
in patents (23,24). For teaching patents, there is also offer more theoretical depth. More than in the first
a variety of classroom materials and books available, course, we build on academic work in the fields of
including some specifically aimed at engineering law, economics, and management science. The topics
students (25). We use the second edition of the World include university patenting, quantitative approaches
Intellectual Property Organization handbook on IP as to estimate patent value, the economics of patents
the primary book (26). An advantage to the students and copyright, open-source developments, and the
is that this book is available without charge. This is relationship between patents and antitrust/compe-
complemented by over two dozen specific journal tition law. In a similar vein, we address a number of
papers, book chapters, and articles on specific topics topics in the field of standards. One specific lecture
addressed in the course. Finding suitable materials for is dedicated to issues when standards and patents
the standards part of the course was more difficult. come together; this is the main research interest of the
After an extensive stock-take, we could not find a developers of this course (for their work on this topic,
handbook that would suitably align with the scope see 27 and 28, among others). The specialization
and depth of our course, and so we use a compilation course also aims to train students in a specific skill
of materials from different sources. set, enabling them to analyze larger sets of patents
During the exploration course, students are such as patent portfolios. This skills training comes
trained in the basic concepts of IP systems, their in the form of three related group assignments, which
history, the ways in which actors use the systems, are complemented by instruction lectures, tutoring
etc. In the process, we strive to create awareness and lectures, and feedback on group assignments.
understanding of the role and importance of both During the application course, students finally
patents and standards in technology and society. get involved in conducting a project of their choice,
Preferably, we create enthusiasm for the topic. Here, in which they apply the knowledge and skills they
students are continuously challenged, provoked, and acquired in the previous offerings. They apply this
interactively involved. They are shown how some knowledge on a technical topic relating to their own
companies can only survive if they position them- undergraduate program (e.g., electrical engineering,
selves properly in a compatibility standards regime, physics, or biomedical technology). To achieve true
how innovation is positively and negatively affected integration between their technical field and the field
by patents, how huge numbers of overlapping patents of patents and standards, students carry out this proj-
(‘patent thickets’) impact markets, and how extremely ect in groups (typically three to five students) and are
aggressive patent strategies (e.g., patent trolls and pri- supervised not only by the course teachers but also
vateering) threaten and sometimes kill their prey. We by a scientist from their own technical department.
show how patents have developed far beyond their The four project options for students are described
original role (providing a manufacturing monop- in Figure 1.
oly) towards becoming the business assets required
to obtain freedom to operate, to defend a company USING ACADEMIC INNOVATION IN THE
against others, and to strategically block others or PATENTS AND STANDARDS COURSE
extract money from them. Students learn why pat- While our university has taught intellectual prop-
ents and standards are most relevant in a number erty for a very long time, and has offered dedicated

PATENTS AND STANDARDS COURSES AT EINDHOVEN 499



Figure 1: The four types of projects in the application course.
Patent landscape study: This is an in-depth study of the global patent situation for a specific technology, appli-
cation area, or product category. Such studies are usually performed by a firm to determine freedom-to-operate,
understand their own licensing position, understand the position of potential acquisition targets, and more. It
usually comprises several elements, such as firm ownership of patent portfolios, firms’ portfolio value, technology
trends, time trends, geographical trends, white spot analysis, and more. Examples of topics chosen by students
in recent years are electronic terahertz spectroscopy and imaging, wafer steppers/lithography, and 3D television.
Patent pool investigation: An in-depth analysis of a patent pool of choice, usually focused on patents that are
essential to implement a specific technological standard. Apart from investigating why the pool was established
and how it further developed, this project includes a quantitative analysis, which tries to address whether (and
how) patents in the pool differ from other patents also essential to the same technical standard. Such an analysis
could reveal, for instance, whether the pooled patents are of higher technological value/merit than those outside
the pool by performing a patent citation analysis. Examples of topics chosen by students in recent years are pools
dedicated to the ITU H.265/ HVEC standard, the IEEE 802.11 standard, and the ETSI 3G/UMTS standard.
Analysis of standardization and standards adoption discourse: Here, students perform a critical investigation
of how a standard of choice has developed over time. The typical questions posed in such a project are: How do
standardization processes lead to successful standards? How did stakeholders contribute to the standard and,
perhaps, ‘shape’ it in their own direction? When do we have an outbreak of a standards war? Examples of topics
chosen by students in recent years are: standards for personal area medical networks, for wireless charging, for
digital video interconnect, and for TCP/IP.
Patent your own invention: Some of our creative or inventive students may come up with their own unique
solutions for problems. In these projects, such a student (together with other group members) can investigate
whether their invention is patentable and whether it is advisable to do so. Elements of such a project are a prior-art
search, claims drafting, and a consideration of the commercial opportunities of an eventual patent. Students also
consider whether another form of protection (copyright, design right, trademark) may be more effective. In the
spirit of patents, a non-disclosure agreement can be signed by students, supervisors, and other involved staff.
Examples of topics chosen by students in recent years are rain tires, millimeter-wave anechoic chambers, interac-
tive light control, elementary method to replace SF6 in power grid circuit breakers, and tidal energy generation.


courses on this topic for over a decade, the devel- for the final assessment. Each student in the course
opment of this new course prompted considerable is equipped with a small response device, also known
challenges. Primarily, the new course was aimed at a as a ‘clicker,’ which is uniquely linked to the student’s
much wider audience (undergraduate students from ID in the administrative system. At the start of every
many different engineering sciences) than the previ- classroom meeting, there is a 10-minute period in
ous courses (usually innovation scholars). Secondly, which three to four test questions are projected on
the Bachelor College was seen as being of utmost the screen. Students have 30 seconds to select the
strategic importance for our university. We took this appropriate answer. Immediately after that, the right
opportunity to try to include interactive learning answer is displayed, plus live statistics on how the
and blended learning (29), as well as several other students answered that question. If necessary (i.e., if
academic innovations, in order to meet the high many students give incorrect answers), the teacher
expectations. Thanks to the support of education elaborates on the question.
experts at our institute, we integrated the following b. Guest lecturers: There are few things students
elements into the course. appreciate more than hearing from people in the field,
a. Classroom response system: This is a system and, as developers of this course, we could not agree
whereby we offer students each week, throughout the more. For that reason, we have guest lecturers on an
course, the opportunity to test their knowledge and almost weekly basis, complementing and illustrating
see whether they are well on their way to preparing the materials and regular lectures, talking about their

500 BEKKERS & BOMBAERTS



own work, and sharing their own ideas. Covering will be using peer reviewing in one way or another
almost all the main topics of the course, we have (especially if they go into science), and it might be
patent attorneys, patent lawyers, a European Patent useful to gain experience with this mechanism as
Office examiner, academic inventors, participants in well as benefiting from the opportunities it offers to
standardization, managers of large firms (including learn and improve.
Philips and Volkswagen), as well as external academ- e. Role-playing game: For both patents and stan-
ics in the fields of competition law and open source. dards, firms’ strategic behavior plays an important
Student evaluations clearly express appreciation for role. Sometimes firms decide to compete, some-
this aspect of the course. times they decide to collaborate. Here, we believe
c. Assignments with progressive feedback: As that role-playing games (also known as ‘serious
indicated above, the second part of the course (‘spe- games’) offer interesting opportunities for inter-
cialization’) includes a series of group assignments active learning. To this end, we include a game in
that train students in patent search and analysis skills. which five different organizations—all consisting of
All three group assignments are in the same techno- student participants—are given the task to negoti-
logical area, which can be selected by the students ate a future standard (in our case, to regulate flying
themselves. After an instructional lecture, students cars). Some organizations are product manufacturers
start carrying out their task and are given the oppor- or regulators, while others represent end users or
tunity to attend tutor meetings for individual help. safety interests. For each of the parties, some of the
After submitting the first report, the student group interests and positions are publicly known (to all the
receives detailed feedback on their work. During other groups), whereas other interests or negotiation
the next round, they not only work on the second goals are only known to the party in question. The
assignment but can also improve their report on the game is also designed in such a way that some of the
first assignment based on the feedback. The second participating organizations’ goals are conflicting, so,
assignment is such that it builds on the first assign- necessarily, some will win and others will lose. During
ment. Then, there is another round of submission, multiple negotiation phases, the students themselves
feedback, and a third assignment. The group’s final learn to negotiate and protect their interests. After
report contains the work on all three assignments, the game is over, the outcomes are discussed with all
having benefited from several opportunities for feed- the students, and we ask them to explain the outcome
back and improvement. and what they would do differently next time.
d. Peer review: For the third part of the course, when f. Collaboration with technical departments:
students conduct their in-depth projects, we designed Because the Bachelor College aspires to integrate
a peer-reviewing process in which individual stu- social science insights with technological knowledge,
dents assess a number of reports written by other we opted for full involvement of the academics from
student groups. The reviewing rubric is quite detailed the technical departments within our university. In
and extensive, ensuring that not only the content is this way, students work on actual, real-life issues,
evaluated but also general skills in terms of report and they have to justify that their work is also tech-
structure, language and writing style, referencing, and nologically sound.
so on. The peer evaluation is not only one of the ele- g. Collaboration with patent attorney firms: Espe-
ments for the final grade but is also used by groups to cially for students who conduct a ‘patent your own
improve their report based on the received feedback. invention’ project, we have set up a collaboration with
Students in the early years of the course expressed three patent attorney firms based in the Eindhoven
little appreciation for peer reviewing as a method, and region. Under that collaboration, students are offered
some even protested, seeing it as way for teachers to the opportunity to present a nearly-finished patent
outsource their work to others. We discovered that proposal to a patent attorney specialized in the field
spending more time explaining the benefits of peer and compare their own assessment of patentability
reviewing changed that attitude completely. We now with that of the expert. Some student groups have
explain that, in their later careers, many students used this opportunity in recent years.

PATENTS AND STANDARDS COURSES AT EINDHOVEN 501



h. Essays: In the first part of the course, students are Despite such limitations, we believe these surveys are
also challenged to think about the ethical and moral instructive for teaching staff and enable us to make
considerations relating to patents. In fact, several of targeted improvements.
the lectures present a rather critical view of the state The main results of the student surveys in 2013,
of the patent system, its effectiveness, and its societal 2014, and 2015 are summarized in Table 3. Overall
consequences. Students are required to write a short scores and satisfaction levels are quite good. When we
essay on an ethical or moral question of choice and look to the exploratory course that is central to this
present this to an audience. A typical topic would article, it scores the highest of all 10 exploratory USE
be the concern that an IPR system may drive the courses offered at our institute. Our overall course
price of pharmaceuticals above a level that people evaluation score is 3.8 on a scale of 5 (average of
in developing countries can afford. the ten courses is 3.4, ranging from 2.9 to 3.8). The
satisfaction level of our course is 4.0 on a scale of 5
We have found the above new elements to be (average of the ten courses is 3.4, ranging from 2.7
worthwhile didactic innovations and believe that they to 4.0). One aspect that caught our attention was that
are important for achieving success in satisfying a rel- students pass our course relatively easily (i.e., the pass
atively diverse and sometimes challenging audience. rate was above average for our institute), yet the effort
Having said that, we see them as complementary to they self-reported putting into a course, in terms of
classical teaching in a motivating and inspiring way hours spent, was lower than the defined workload.
and not as a way to replace classical teaching. This, in fact, illustrates one of the previously discussed
challenges identified by the independent assessment
EVALUATING AND IMPROVING THE of the Bachelor College. At this point, we decided
PATENTS AND STANDARDS COURSE to use the series of patents and standards courses
The TU/e has a policy whereby each course is for a pilot study in order to explore how students’
monitored on an annual basis using student feed- study load could be increased while, critically, not
back. A core element of this quality monitoring is a reducing the level of student satisfaction. The pilot
non-obligatory survey among all participating stu- study also received financial support from the Dutch
dents. For this course, the survey included almost 4TU.Centre for Engineering Education and the TU/e
forty five-point Likert scale questions, including orga- Innovation Fund.
nization, teacher’s performance, quality of teaching The pilot had three main elements. Firstly, we
materials, the different educational methods (lec- reviewed and improved the final exam. Using a
tures, assignments, role-playing games), preparation matrix, we ensured the right mix of knowledge ques-
for assessment, actual assessment (exams, clickers, tions based on multiple dimensions: topic (covering
grades of assignments), actual time spent, etc. There the seven main topics of the course), learning goal
were also questions allowing students to share their (knowledge, reasoning, or application), and difficulty
views on the extent to which learning goals have been (easy, moderate, and hard). We also adopted a model
achieved, whether the course was useful, whether in which each of the seven topics was covered by
they enjoyed it, and whether they believe they will three different types of questions. The model had
use what they learned in their future profession. three multiple-choice questions per topic and one
(See Table 2 for a list of relevant questions.) In a open question. It also had one one-line question per
series of open questions, students can comment on topic in which students are only allowed to use up to
what they liked and what they believed should be 10 words for their answer, testing whether students
improved. Such surveys are not perfect. There is a can produce the right terminology or explanation,
risk of self-selection in terms of response that can without seeing these already stated as in a multiple
lead to bias (although our response rate of 40% is choice question. Secondly, the pilot reviewed and
quite satisfactory and mitigates extreme risks) (30). improved the classroom response system (‘clicker’)
In some groups of students, there is also a known tests, bringing them in line with the more challenging
attitude to be critical of everything, right or wrong. final exam. Consequently, students got a better feel

502 BEKKERS & BOMBAERTS



for the level of difficulty and the required study effort. As part of the pilot, we analyzed the effect of the
Finally, we distributed a representative test exam course redesign with qualitative data from student
and organized a session in which students, pairwise, surveys as well as two focus group interviews. In gen-
could assess each other’s exam papers (based on the eral, the results show a positive development between
correct answers and assessment grid we supplied). 2014 (before the pilot) and 2015 (once the pilot was
This exercise would allow them to test not only their implemented). The positive evaluation of the course
own knowledge but also see how different types of remains virtually at the same level, as well as the
answers would give different results when using the degree to which students say they enjoy the course
assessment grid. To our own surprise and disappoint- (Table 4). But the students report that the work load
ment, only one student turned up for this session even increased from 2.4 to 2.7, where a score of 3 indicates
though the students themselves had asked for more that the workload is perceived exactly equal to the
opportunities to test for the exam. This illustrates aim of 140 hours (a lower score indicates it is easier,
that making successful improvements is not always a higher score indicates it is more demanding). We
a task you can easily predict. also observed that the pass rate dropped from 94%

Table 2: Selected, Relevant Questions from the Student Questionnaire Used in Our Regression Analysis
Variable Full question
Course setup Are you satisfied with the substantive setup of the course (for example, structure, teaching
approach, nature of assignments and tests, and opportunities for contact)?
Course organization Are you satisfied with the organization of the course (for example, study guide, availability
of lecturers and material, provision of information, scheduling, and planning)?
Teacher B Are you satisfied with teacher B (for example, explanation, pace, enthusiam, and willingness
to help)?
Lectures Are you satisfied with the lectures (for example, structure, content, level, and coherence)?
Study materials Are you satisfied with the study materials for the course (for example, books, readers/lecture
notes, websites, and video lectures)?
Study guide Are you able to use the study guide?
Sufficient exercises Do you feel there were sufficient exercises available?
Use clickers Are you satisfied with the use of clickers during this course?
Course materials Have the course materials, practice opportunities, and interim tests/assessments contributed
to the learning process/ability to pass the module?
Role-playing game Are you satisfied with the role-play about the flying car?
Time attended Which percentage of the teaching sessions for this course have you attended this quartile?
contact moments
Time self-study On average, how many hours of self-study (outside of the teaching sessions) have you spent on
this course per week in this quartile?
Time final test Excluding the teaching sessions, how many hours have you spent in preparation for the final
test?
Work rigor Do you feel that the number of credits (5 ECTS = 140 hours) for this course (including teaching
sessions, self-study, interim tests, and final test) corresponds to the effort you have applied?
Work spread Do you feel that the study load for this course is distributed equally throughout the quartile?
Enjoyment Have you enjoyed taking this course?
Relevance The course contributes to my dvelopment as an engineer.
Course evaluation On a scale form 1 to 10, how would you rate this course?

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Table 3: Student Evaluation Results for the Series of Courses on Patents and Standards
Exploration Specialization Project Total set
Survey question
course course course of courses
“How would your rate this course?” 3.8 3.4 3.7
“Have you enjoyed taking this course?” 4.0 3.2 4.0
“I feel that in this project I have been engaged in an authentic 4.6
example of engineering practice.”
“Do you think this package of courses is relevant for your 4.2
discipline?”

“How would you rate the series of courses as a whole?” 3.6
“This package of courses has contributed to my development 3.6
as an engineer.”
Note: Numbers are based on our calculations using the official student evaluation results. Results shown are the averages of the evaluation
outcomes of the first three years the course was offered (2013, 2014 and 2015), and are shown on a five point Likert scale. They are based
on a total number of 112 student responses, equivalent to a response rate of approx. 40%. The “total set of courses” is based on a single
evaluation survey (these questions were introduced only with the most recent version of the survey).




Table 4: Selected, Relevant Questions Used in the Student Questionnaire
Average Average
Variable Full question score 2014 score 2015
(N=46) (N=36)
Overall
course “On a scale from 1 to 10, how would you rate this course?” 7.0 (sd 1.9) 7.1 (sd 1.5)
evaluation
Enjoyment “Have you enjoyed taking this course?” (five point Likert scale) 4.0 (sd 1.2) 4.0 (sd 1.2)
“Do you feel that the number of credits (5 ECTS = 140 hours) for this
Work rigor course (including teaching sessions, self-study, interim tests, and final 2.4 (sd 0.8) 2.7 (sd 0.6)
test) corresponds to the effort you have applied?” (five point Likert scale)
Pass rate [percentage of students that passes the first time they sit the exam] 94% 84%




Table 5: Selected Stepwise Regression Analysis for Course Evaluation
Model Unstandardized Coefficients Standardized
Course Coefficients t Sig.
Evaluation B Stad. Error Beta

(Constant) 0.321 0.532 0.602 0.549
Enjoyment 0.946 0.112 0.616 8.477 0.000
Work spread 0.491 0.093 0.313 5.267 0.000
Work rigor 0.408 0.113 0.176 3.606 0.001
Teacher B 0.333 0.114 0.223 2.921 0.005
Study Guide -0.314 0.118 -0.155 -2.658 0.010

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to 84%. In other questions (not shown), students and 20 students are (very) satisfied. We speculate that
also reported spending more time both on prepara- this particular activity brings some (engineering-ori-
tion for the final exam as well as weekly self-study. ented) students quite far out of their comfort zone,
These numbers indicate that the pilot achieved its whereas other students enjoy having their social and
objective: a higher workload but not at the expense negotiation skills tested.
of satisfaction levels. We ourselves found it remarkable that the class-
Having completed this exercise and collected room response system (‘clickers’) did not turn out
a wide range of data, we also decided to explore to be a predictor of overall satisfaction. Whereas
whether we could discover which elements of a course our data does not support a conclusion that clickers
could be defined as determinants of the students’ help to improve overall satisfaction, we do believe
overall course evaluation. We did so by conducting clickers are useful, providing opportunities for test-
a stepwise multiple regression, in which a range of ing knowledge as well as inserting more interactive
aspects of the course served as predictors (see Table moments into lectures.
2 for the exact questions) and the course evaluation It is important to mention that this course adds to
as the dependent variable. the larger programmatic learning goals of the TU/e
A stepwise multiple-regression was conducted to and its Bachelor College (Figure 2). In brief, this
evaluate how the different predictors could explain course makes students “aware of the significance
the course evaluation. In Table 5, we show the most of other disciplines,” and it increases their ability to
interesting findings. Of the seventeen predictors we “communicate their results of their learning, think-
tested, five were significant predictors of overall sat- ing, acts and decision-making processes.” After the
isfaction. These five are “enjoyment,” “work spread,” course, students increased the “intellectual skills that
“work rigor,” “teacher B,” and “study guide.” Together, enable them to reflect critically, reason and form
they predict no less than 85% of the variance in the opinions under supervision.” They are “aware of the
variable representing overall satisfaction. The twelve societal contexts of science and technology (com-
other predictors did not enter into the equation (p > prehension and analysis).” And, finally, in addition
.05). The findings from this quantitative analysis were to a recognizable domain-specific profile, students
in line with those of the two focus group interviews: “possess a sufficiently broad basis to be able to work
Enjoying the course played a high role in the total in an interdisciplinary and multidisciplinary context.”
evaluation, as did having the work well spread out The course contributes to the formation of 21 st
over time and having an appropriate level of rigor (i.e., century engineers, who should be capable of criti-
sufficiently challenging the students and not giving cal thinking, as reiterated by the TU/e’s educational
them exams that are too easy). We also observe from vision: “Engineers of the future must be professionals
both the data and the interviews that the performance capable of thinking critically and independently […]
of specific teachers had a significant impact on overall they must be able to contribute to solving societal
satisfaction. One outcome of the analysis, however, problems […] They must have an inquiring and cre-
is puzzling: The higher the students scored the qual- ative attitude, a high degree of creativity and societal
ity of the study guide, the lower they scored overall responsibility” (13). We believe the methods used in
satisfaction. This is a counterintuitive outcome, and our course engage students in this broader engineer-
the students in the focus group interviews were not ing profile.
able to shed further light on what might be happening
here. CONCLUDING REMARKS
The role-playing game created some fascinating Views on education, technology, and society have
findings. Whereas the distribution of answers to been subject to huge changes in recent decades, and
almost all the questions in our survey resembles a engineering studies have been challenged to respond
Bell curve, the answers about satisfaction with the to these developments. In an attempt to rethink its
role-playing game are extremely polarized. In total, education program—in order to train ‘engineers for
15 students are (very) unsatisfied, 1 student is neutral, the 21 century’ who are skilled and prepared for the
st

PATENTS AND STANDARDS COURSES AT EINDHOVEN 505



Figure 2: Overview of the overall learning goals of the Bachelor of Science graduates at Eindhoven University of technology.
Bachelor of Science graduates:
a. are qualified to degree level within the domain of engineering science and technology,
b. are competent in the relevant domain-specific discipline(s) at the level of a Bachelor of Science […]
c. are able to conduct research and design under supervision,
d. are aware of the significance of other disciplines (interdisciplinary work),
e. take a scientific approach to non-complex problems and ideas, based on current knowledge,
f. possess intellectual skills that enable them to reflect critically, reason and form opinions under
supervision,
g. are good at communicating the results of their learning, thinking, acts and decision-making processes,
h. can plan and implement their activities,
i. are aware of the temporal and societal contexts of science and technology (comprehension and
analysis),
j. in addition to a recognizable domain-specific profile, possess a sufficiently broad basis to be able to
work in an interdisciplinary and multidisciplinary context. Here, multidisciplinary means focusing on
other relevant disciplines needed to solve the design or research problem in question.


challenges of their profession in the future—Eind- response system do, indeed, help to achieve that goal.
hoven University of Technology has developed a new The data collected also shows that overall student
and novel Bachelor College curriculum. This new satisfaction is mostly determined by how much the
curriculum can be considered a success. An in-depth, students enjoy the course, how well the workload
independent assessment showed that numerous goals is spread out over time, whether that workload is
were well achieved, including attracting new stu- sufficiently heavy, and the perceived performance
dents with broader profiles. The assessment talks of of the teachers involved.
‘systemic reform’ and ‘impressive achievements.’ Yet, We believe that our experiences in the redesign of
several significant challenges remain, both in terms the entire curriculum for our technical undergrad-
of furthering the coherence and integration of tech- uate program, and the development of the series of
nical and non-technical elements in the curriculum courses on patents and standards specifically, can help
as well as in making non-technical elements more other institutes to further develop and improve their
challenging and demanding for students. teaching programs, and we hope that this article will
This paper discusses the experiences with one inspire them to do so. We would like to offer them
specific course in the new curriculum, Patents and the following recommendations:
Standards. Starting out from the notion that any engi- 1. Do not be afraid to take a step back and think
neer will benefit from a basic understanding of the in an open and unrestrained way about what
role of both patents and standards in business and knowledge and skills future graduates should
society, the course implements academic innovations master. While such a step takes courage, and
in order to achieve its learning goals; these include may challenge vested interests, we think it is
but are not limited to a classroom response system, the best way to ensure a teaching program that
practitioner and industry involvement (guest lectur- meets the changing demands and requirements
ers, patent attorneys’ assistance), role-play, and peer of the future employers of these students and
reviews. In further attempts to make this specific of the needs of society.
course more challenging and demanding while, criti- 2. Take the opportunity to explore academic
cally, avoiding a negative impact on overall enjoyment innovations such as interactive learning and
or satisfaction, we conducted a pilot study. From blended learning (see Section 4 for specific
this pilot, we conclude that design improvements in innovations that we implemented in our own
final exams and in weekly testing via the classroom new course). They provide opportunities for

506 BEKKERS & BOMBAERTS



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ACKNOWLEDGMENTS 9. Salimi N, Bekkers R, Frenken K. Does working
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Technology and Innovation, Vol. 19, pp. 509-524, 2017 ISSN 1949-8241 • E-ISSN 1949-825X
Printed in the USA. All rights reserved. http://dx.doi.org/10.21300/19.2.2017.509
Copyright © 2017 National Academy of Inventors. www.technologyandinnovation.org



THE UNITED STATES PATENT SYSTEM AND ENGINEERING

EDUCATION: AN ALLIANCE FOR INNOVATION

Charles A. Garris, Jr. and Charles A. Garris, III 2
1
1 Department of Mechanical and Aerospace Engineering, The George Washington University, Washington, DC, USA
2 Departments of Product Development, Engineering, and Technical Services, CMD Corporation, Appleton, WI, USA
While the patent system has long been a neglected tool in the education of American engineers,
this essay presents five propositions that support the notion that an understanding of patents
should be an integral part of the education of every engineer who practices in the United
States. The essay first lays a philosophical and historical foundation that explains the role of
the patent system in a competitive free-market society and how it influences the behavior of
those who seek to innovate. Then, an upper-level design course that heavily utilizes the patent
literature and provides a foundation for understanding the role of patents in American industry
is discussed in detail. This course has been used over many years at the George Washington
University and includes analysis of many of the ethical dilemmas facing engineers in the heat of
competition, some of which are discussed in this essay. This essay concludes with a discussion
of why the role of patents in engineering education should increase in the twenty-first century.

Key words: Design; Innovation; Patents; Litigation; Thermal systems; History of technology;
America Invents Act (AIA)



INTRODUCTION innovation and productivity-related growth (3). This
Throughout the history of the United States of essay argues that both are equally important and
America, innovation has created technology that must be unified by leveraging the U.S. patent system
blossomed, grew to maturity, and formed the basis during a student’s education. Garris (4) made many
of advancement (1) for our developing nation. The of these arguments 15 years ago. The present paper
growth of our economy has always depended on the will reiterate those arguments and bring in modern
creation and incubation of ideas and technologies, developments.
each undergoing a life cycle for products that always
must eventually end. While most agree that innova- ENGINEERING EDUCATION IN THE
ST
tion is the lifeblood of our nation, there are diverse 21 CENTURY
opinions as to what stimulates innovation. Abraham There have been a number of critics of engineering
Lincoln (2) opined that our patent system was the education who have made calls for reform. Tien (5)
essential ingredient in motivating innovation. Others observes that, due to political forces, internation-
have opined that it is U.S. higher education, particu- alization, human migration, and the information
larly in science, technology, engineering, and math revolution, the engineering environment is changing
(STEM) that is the essential ingredient in generating rapidly, and engineering education must respond

_____________________
Accepted: July 3, 2017.
Address correspondence to Charles A. Garris, Jr., Ph.D., Professor of Mechanical & Aerospace Engineering, Department of Mechanical & Aerospace
nd
Engineering, The George Washington University, 800 22 Street NW, Washington, DC 20052, USA. Tel: +1 (202) 994-3646; Cell: +1 (703) 963-7871.
E-mail: [email protected]

509

510 GARRIS & GARRIS



accordingly. Among his prescriptions are fostering education in America has largely been due to the
teamwork in ways that enable students to develop culture of academe in America, where faculties are
their individual talents in an engineering context, try- created from within and have little experience with
ing more innovative approaches to forging links with the world of industry although the majority of their
business and industry, and generating excitement by students will end up there. Lang et al. (9) observe
presenting real cases to students. Augustine (6) also that, in the post WWII era:
expresses concern about the need for engineering Newly-minted engineering Ph.D.’s joined the
education to keep pace with the rapidly changing
world. He identifies several needs to which educa- ranks of academia without industry experience
and perpetuated the research emphasis on cam-
tors must respond. These include the need to keep puses for the last forty years. While this research
abreast at a time of rapid change in technology; the has contributed immeasurably to our technolog-
need for engineers to be more aware of economic and ical advancement, the widening separation of
political factors; the growing importance of ethical faculty and curriculum from industry needs and
and moral issues; the need to reverse the increasing
detachment of engineering schools from engaging expectations has resulted in a real threat to our
competitiveness in the global marketplace.
students in practical applications as well as the need to
encourage practical experience among research-ori- This threat can have real consequences, as Porter (3)
ented engineering faculty; and the need to respond notes that “a competitive location produces prosperity
to the increasing tendency of engineering projects for both companies and citizens.”
to cut across established fields, thereby requiring Another reason that faculty have not traditionally
multi-disciplinary teams. embraced the patent system is that the academic
The Accrediting Board for Engineering in Tech- culture of sharing research and publication is not
nology (ABET) has published its EC2000 criteria entirely compatible with the concept of excluding
for engineering programs (7). The criteria specify others from the use of research findings.
11 learning outcomes and require programs to assess This essay will demonstrate that the patent
and demonstrate their students’ achievement in each system is:
of those areas. EC2000 retains earlier accreditation 1. An important inspirational tool to motivate stu-
standards’ emphases on the development of students’ dents and bring out their creative capabilities.
mathematical, scientific, and technical knowledge, 2. A useful teaching resource for industrially
but it also emphasizes developing other professional relevant case studies and projects in design.
skills such as those described above. 3. A subject of increasing importance to industry
The positive effects of these efforts as well as their
in our litigious society.
great importance in today’s environment can readily 4. An essential tool for the exploitation of one’s
be appreciated. However, an essential resource for ideas for personal or corporate gain.
pedagogy and engineering practice, one that has 5. A window to the real world that involves eco-
been at the heart of American capitalism from the nomic, ethical, social, international, and legal
founding of our nation, has not been widely adopted issues that students find exciting and beneficial.
in engineering education. This missing resource is
the U.S. patent system. 6. A way for faculty inexperienced with industry
to become acquainted with real-world issues
The U.S. patent system was created through the in collaboration with their students.
U.S. Constitution (8) for the purpose of promoting
the “progress of science and the useful arts.” The It is, therefore, the thesis of this essay that instruc-
impact of the patent system on innovation in Ameri- tion on the patent system, through a project-oriented
can industry in the year 2017 is more important than design course, provides an excellent methodology
it ever has been. The reason that the patent litera- to achieve many of the goals called for by Tien (5),
ture and the role of patents in a competitive society Augustine (6), Hoover (10), and ABET (7). Further-
appear to be neglected in undergraduate engineering more, the discussion presented herein is equally

PATENT SYSTEM AND ENGINEERING EDUCATION 511



valid for all branches of engineering (e.g., computer, “the main policy tool used to advance innovation.”
chemical, electrical, mechanical, aerospace, civil, and There is much concern within the U. S. as to how the
environmental). nation can maintain its preeminence as an engine
of innovation and economic growth. Interestingly,
HISTORICAL BACKGROUND OF THE U.S. these concerns were also felt by the founding fathers
PATENT SYSTEM AND ITS IMPORTANCE as they were drafting the U. S. Constitution.
TO THE NATION In 1789, the nation had just emerged from a rev-
It is well known that the phenomenal capacity to olution that severed the governmental linkage of
innovate and create new ideas has provided a most America with England. However, having severed the
important impetus to U.S. economic growth and is governmental linkage, it was equally important that
essential for the creation of new employment oppor- the nation sever its commercial dependence as well.
tunities in the future. The global economy has, at the This necessitated the creation of an engine of inno-
same time, resulted in a depletion of employment vation to spur the economy of the nation with new
opportunities as developing countries learn how to technologies and industries. To specifically address
exploit new technologies with a lower labor cost. this concern, the founding fathers included in the
These forces for creation and loss of employment U.S. Constitution (8) the right to a patent in Article
have been dominant issues in recent political debates. I, Section 8: [The Congress shall have power] “To
Porter (3) observes that “America cannot address promote the progress of science and useful arts, by
its economic prospects without a clear understand- securing for limited times to authors and inventors
ing of what we mean by competitiveness and how the exclusive right to their respective writings and
it shapes U.S. prosperity.” While the U.S. has served discoveries.” This is often called “the intellectual
for well over a century as a source of worldwide property (IP) clause” of the U.S. Constitution. It is
innovation and new industries, this leadership is interesting to note that this statement constitutes the
being fervently challenged by many industrialized only individual right written into the main body of
nations who have aggressively subsidized the cre- the U. S. Constitution, which is the exclusive right
ation of innovation-based economies (11). Porter of an inventor or author to a patent or copyright. All
(3) advises, “Increasing productivity over the long other rights came through subsequent amendments
run should be the central goal of economic policy. to the U. S. Constitution.
This requires a business environment that supports The founding fathers probably were influenced
continual innovation in products, processes, and by economist Adam Smith (13). Smith stated that a
management.” It is important to understand that patent for invention is an important exception to his
innovation not only involves the creation of new antipathy to monopolies for the following reason:
ideas but also the development and effective imple-
mentation of the new technologies into competitive Thus the inventor of a new machine or any other
products and services that enhance the productivity invention has the exclusive privilege of making
and vending that invention for the space of 14
of the nation’s economy. The U.S.’s ability to compete years by the law of this country, as a reward for his
and prosper in global economy of the 21 century will ingenuity, and it is probable that this is as equal
st
require that innovation be enhanced and encouraged and one as could be fallen upon. For if the legis-
as never before. Namely, an opportunity exists to lature should appoint pecuniary rewards for the
educate students on the nation’s central repository inventors of new machines, etc., they would hardly
of innovation history and future. ever be so precisely proportioned to the merit of
Wessner (11) identifies “the pillars of U.S. inno- the invention as this is. For here, if the invention
vative strength” as i) strong protection of intellectual be good and such as is profitable to mankind, he
property; ii) federal funding of research; iii) great will probably make a fortune by it; but if it be of
research universities; iv) national laboratories; v) the no value he also will reap no benefit. (14)
private sector; and vi) public-private partnerships.
Ponchek (12) describes the U.S. patent system as President Abraham Lincoln was very interested

512 GARRIS & GARRIS



in improving the lives of mankind through the use Despite our patent system’s importance to the
of innovation and took enormous interest in the U.S. economy and job creation, Congress has
U.S. patent system. He formulated a lecture, which he not passed major reforms in more than 55 years.
delivered various times, that traced paradigm-chang- During that time, advances in technology and
ing advances throughout history that had enabled manufacturing have changed the way our patent
man to advance by major leaps. Among the advances system is used. Innovation has been impeded in
that he cited were the spinning and weaving of tex- recent years by a patent system that too often
tiles, the use of animal labor, the making of iron, grants low-quality patents with overly broad
the creation of the printing press, etc. Among the claims, which have been used by opportunists
paradigm-changing technologies he cites is the IP to extort royalty fees from manufacturers – par-
clause of the U.S. patent system. President Lincoln ticularly in the high-tech sector. The problem of
is, to date, the only U.S. President who holds a U.S. low-quality patents is exacerbated by a litigation
Patent (U.S. Patent no. 6,469, May 22, 1849). As Lin- system that yields unpredictable and often over-
coln observed: compensating damages determinations, which
divert investment and resources from innovation.
Next came the Patent laws. These began in (18)
England in 1624 [Statute of Monopolies]; and, in
this country, with the adoption of our constitution In June 2005, Representative Lamar Smith intro-
[Article I, Section 8]. Before then, any man might duced the Patent Reform Act of 2005, known as HR
instantly use what another had invented; so that 2795. At that time, several inventors expressed their
the inventor had no special advantage from his concerns. In 2005, Dean Kamen, founder of DEKA
own invention. The patent system changed this; Research & Development and distinguished inventor
secured to the inventor, for a limited time, the on over 100 patents, said, “The patent system has
exclusive use of his invention; and thereby added been a main driver of keeping the U.S. economy
the fuel of interest to the fire of genius, in the ahead of the rest of the world since this country was
discovery and production of new and useful formed. Any bill that tinkers with the main engine
things. (15) of innovation ought be looked at very, very carefully
and not whipped along” (19). Kamen also stated in
As emphasized by Smith and Lincoln, the beauty his testimony to Congress (20) that:
of the patent system was that it unleashed the “fire
of genius” by creating a powerful incentive for the To work correctly, the patent system must
inventor. Interestingly, Thomas Jefferson (16), often appropriately reward innovation and risk. . . As
considered the father of the U.S. patent system since innovation becomes ever more important to
he was (involuntarily) put in charge of it at its incep- America’s global competitiveness, a strong patent
tion, was very skeptical of it and was not naive to the system is more important than ever. I strongly
problems that might result from providing an exclu- urge you to be extremely hesitant to move any
sive right to technology. He said, “Inventions then legislation that could undermine an enduring
cannot, in nature, be a subject of property. Society component of the economic system that has made
may give an exclusive right to the profits arising from America the envy of the world for more than two
them, as an encouragement to men to pursue ideas centuries.
which may produce utility, but this may or may not The Patent Reform Act was not passed in the 2005
be done according to the will and convenience of the session of Congress and was debated and amended
society, without claim or complaint from anybody” over a six-year period. Senator Patrick Leahy joined
(17). in leading the patent reform legislation, which even-
President Jefferson’s concerns have certainly res- tually emerged as the America Invents Act (AIA) (21)
onated in the modern times. Senator Patrick Leahy and was signed into law by President Obama in 2011.
of Vermont said: The benefit of this legislation is very controversial.
Since the AIA has been in effect for several years,

PATENT SYSTEM AND ENGINEERING EDUCATION 513



there are currently many opinions of the benefits and evidence of the changing paradigm, U.S. universities
damage to the U. S. patent system (22,23). While it filed 22,150 patent applications, issued 5,130 licenses,
probably will have the long-term effect of improving and generated $2.6 billion in licensing income in 2012
the quality of patents, as sought by Senator Leahy, (25).
it weakens the presumption of validity of a patent
and subjects patent owners to very costly post-issue BACKGROUND INFORMATION ON PATENTS
proceedings, which may deter inventors and small A U.S. patent is a legal instrument that empowers
companies from creating and developing innova- the holder to exclude others from making, selling, or
tions. In Dean Kamen’s testimony (19), he further using a process, machine, manufacture, or compo-
emphasized, “If anything this country should be sition of matter, or any improvement thereof, for a
finding ways to strengthen the patent system in the specified period of time. When one makes, sells, or
global competitive environment, not make it harder uses another’s patented invention, one “infringes.” It is
to get and protect intellectual property. We need to important to understand that the patent system is an
add incentives, not add barriers.” essential feature of capitalism as practiced in the U.S.
One observes that there has been an enormous and was conceived of as such by our founding fathers,
evolution of the U.S. patent system over time from who were influenced by the teachings of Adam Smith
the epoch of Adam Smith and the founding of the (13), the father of capitalism. So important was con-
nation to the present. This evolution maintained the sidered the encouragement of individual innovation
original ideas of the founding fathers to promote in the “useful arts” through the patent system that the
invention by creating an incentive to an individual first Secretary of State, Thomas Jefferson, was given
inventor. Unfortunately, as expressed by Senator by Congress the leadership of the Board of Arts (16),
Leahy, it also created a system that allowed abuse the predecessor of the U.S. Patent and Trademark
by unethical opportunists to extort royalties from Office (USPTO). Thomas Jefferson himself reviewed
creative inventors through the court system. “Patent and approved the very first U.S. patent applications.
Trolls” constitute a particularly egregious form of It is very clear that the greatest American inven-
such opportunists. President Obama issued a series tors were strongly motivated by the patent system.
of Executive Orders to the Patent Office “to protect Thomas A. Edison patented 1,093 inventions (26).
innovators from frivolous litigation” from Patent His office in West Orange, New Jersey, was lined
Trolls (24). In the same article, however, it stated that with the Patent Gazette, which was an important
“some big software companies, including Microsoft, reference for him. Much of his energy was directed
expressed dismay at some of the proposals, saying towards protecting his inventions through litigation.
they could themselves stifle innovation.” Edison’s inventions spawned tremendous compe-
Universities have been partly complicit in this tition as well as a multitude of industries. Electric
evolution by their failure to educate young engineers power, lighting, recording, motion pictures, batteries,
and potential entrepreneurs in the history and prin- rubber, and other industries were started by Edison.
ciples of the patent system and how it can still play Clearly, the patent system provided him with the
the role that President Lincoln intended, adding “the incentives needed to pursue his inventions, and the
fuel of interest to the fire of genius, in the discovery public benefitted immensely in precisely the manner
and production of new and useful things.” described by Adam Smith.
Many U.S. research universities have been seeking Today, while some patents are pioneering, the
new revenue streams through technology transfer. vast majority of patents are improvements on prior
This necessitates a new paradigm whereby profes- inventions. Given that an invention is novel (27), the
sors are permitted the freedom to work with private patent law states that a patent may not be obtained
companies outside of their traditional roles within “if the differences between the subject matter sought to
the university. In this manner, universities can retain be patented and the prior art are such that the subject
professors who might otherwise leave academia due matter as a whole would have been obvious at the time
to lucrative opportunities in the private sector. As the invention was made to a person having ordinary

514 GARRIS & GARRIS



skill in the art to which said subject matter pertains” engine technology, won $28.9 million from Hyundai
(28). Sirilla (29) provides a thorough and entertaining in a patent lawsuit (33). There is an abundance of
history of how the courts have struggled with the patent litigation proceeding in the U.S. with large
question of obviousness throughout the 19 and 20 settlements. The importance of patents in interna-
th
th
centuries. tional trade is also enormous. While a U.S. patent
excludes others from practicing an invention only
in the U.S., this exclusion prevents infringing prod-
ucts from entering the U.S. The U.S. International
Trade Commission has a special court that issues
injunctions to prevent foreign-made products from
entering the U.S. for reasons of patent infringement,
among other things. Even if an infringing component
is part of a complete assembly, the entire assembly can
be enjoined from entering the U.S. For example, an
automobile whose seats are treated with an infringing
anti-stain chemical can be prevented from entering
the U.S. Similar problems can be encountered when
American products infringe on foreign patents and
are exported to those countries. As the global econ-
omy develops, the international dimension of patents
is becoming increasingly important.
As we enter the 21 century, patents have become
st
both the shield and the broadsword of industrial
competition. Since design engineers in industry are
the creators of much of the innovation resulting in
patents, it is becoming more important that they
Figure 1. Number of U.S. utility patents per year according to understand the fundamental issues surrounding them
the USPTO’s 2016 data. and use them to their advantage.
Because of the competition resulting from cur-
rent global economic conditions, the availability of THE IMPORTANCE OF PATENTS TO
information via the digital age, and technological ENGINEERING EDUCATION
breakthroughs, the number of patents issued per In what follows, we present five propositions that
year has skyrocketed since the mid-eighties, as seen will seek to persuade the reader that a solid under-
in Figure 1. According to Rubenstein (30), before standing of patents should be an integral part of
1980, patents were considered of questionable value, an undergraduate engineering education across all
and willful infringement was common. One corpora- branches of engineering.
tion’s strategy purportedly was to “infringe now and Proposition #1: Optimal Design Is an Integrative
pay little if anything later.” However, in the eighties, Process
there were many cases with huge damage awards Sir Isaac Newton, in a 1675 letter to Robert Hooke,
that changed the environment. For example, recently, stated, “If I have ever seen further, it is by standing
Carnegie Mellon won a lawsuit over Marvell Technol- on the shoulders of Giants.” So it is with the design
ogy Group for $750 million, which, after legal fees, process. If one truly wishes to design the best possi-
will be shared with the inventors (31), and Samsung ble product, one must integrate the experience and
Electronics Co., Ltd. will pay Apple Inc. $548 million accomplishment of predecessors. The patent literature
over alleged patent violations for the pinch-to-zoom shows in considerable detail the very best design that
feature (32). Paice LLC, a small U.S. company cre- particular inventors could conceive of at a point in
ated by an individual inventor that develops hybrid time. The high cost of obtaining a patent and the

PATENT SYSTEM AND ENGINEERING EDUCATION 515



“best mode” requirement of the law ensures this. It discipline of interest. As a result, engineering students
is clear that not all patented inventions are commer- tend to design in a vacuum, basing their concepts on
cially feasible or even well-conceived. Nevertheless, their own limited personal experiences. The engi-
those that are excellent and industrially significant neering design curriculum should provide students
can be identified by the professor for use in class. with an appreciation of the work of predecessors and
A well-chosen patent will reveal how the inventor emphasize the importance of “build[ing] on the shoul-
overcame certain problems as well as the background ders” of previous designs. Proficiency in searching the
that led to the need for better technology. One of the patent literature can provide the needed background
best ways of learning design is to see case studies of and enable engineering students to utilize ideas and
how experts in the field solved a particular problem. approaches that they never considered at the outset.
The patent literature provides this. Barnes (34) dis- The patent literature is a marvelous reference source
cussed how the case method of teaching has been of ideas and should be a primary reference for all
very effective in other disciplines and is not widely design engineers, as it was for Thomas A. Edison (26).
used in engineering. Hoover (10) stated, “Case studies Further, engineering students are currently taught to
should offer a useful technique for teaching design, identify a specific problem and provide the respective
but, although instructive cases abound, most are solution. The art of strong patent writing is a balance
not well enough documented to be readily useful to between protecting specific solution attributes and
teachers.” Patents can serve as skeletal case studies. maximizing the breadth of possible embodiments
The specific details that are left out of a patent form or solutions to prevent would-be competitors from
the basis of a design project and can be patterned on working around the inventor’s specific solution. The
the industrial environment. George (35) states that “a engineering education system must imbue its stu-
valuable way to ground students in the basic processes dents with an awareness and passion for strategic
of [engineering], and perhaps entice them, is to build innovation so that a student not only invents but also
into introductory courses real or simulated research has a strategy for protecting the idea in the compet-
experiences.” Simulated industrial experiences using itive global landscape.
patents will be discussed later in connection with a Proposition #2: The Ethics of Design in Competi-
design course that has been offered at the George tive Industry Are Intricate
Washington University. When the founding fathers incorporated the pat-
Earlier in this essay, the observation was made ent system in the U.S. Constitution, they explicitly
that while some patents are pioneering, most are stated that its purpose was: “to promote the Progress
improvements over prior patents. In the eyes of an of Science and useful Arts” (8). The patent system
experienced design engineer, many of these improve- provides three mechanisms by which progress is
ments seem trivial. While awareness of this quality promoted. The first mechanism is that inventors
of patents is important for the design engineer in are provided a major financial incentive to exercise
industry, it in no way diminishes the value of pat- their creativity and create new technologies. The
ents either as a design resource or as a pedagogical second mechanism is that after the expiration of a
resource. On the contrary, the inventor is obliged to patent (currently 20 years from filing), the invention
explain at great length the problems that one is trying becomes the property of the public, and the results of
to solve and why one’s approach is better, or at least the inventor’s work can be exploited by all. The third
different, than others. The inventor is required to mechanism by which the patent system promotes
disclose related patents and publications that further progress is through the encouragement of compet-
establish the utility, novelty, and non-obviousness of itors to search for non-infringing alternatives. The
the invention. motivation to compete will drive individuals and
While American engineering students are gen- corporations to seek novel ways of participating in
erally well-grounded in the fundamentals, design the market without infringing on others’ rights. In the
courses rarely provide an historical perspective process, new and better technologies are developed,
on how designs have advanced in the particular and the march of progress continues.

516 GARRIS & GARRIS



Although engineers in academia who are not engineer who has developed a patentable invention to
versed in the industrial world might regard “design- ask several rhetorical questions: How can my inven-
ing around a patent” as an unprofessional activity, tion be designed around? In specifying my invention,
such attitudes totally misunderstand the dynamics of am I incorporating unnecessary limitations? Is there
a free-market economy. In Roton Barrier v. Stanley an alternative way of practicing my invention by mak-
Works (36), Judge Rich wrote in the decision that ing a minor (or major) modification? The engineer
“‘designing around’ is the stuff of which competition can then arrive at alternate designs, which can be
is made and is supposed to benefit the consumer.” In included in the patent (referred to as “embodiments
this case, the Court of Appeals for the Federal Circuit of the invention”), and the claim language can be
reversed a lower court ruling of infringement because drafted to include all of these embodiments, resulting
it was clear that Stanley Works made a considerable in a stronger and better patent. After performing
effort to “design around” the Roton Barrier patent. this exercise, the engineer might actually come up
This effort was well documented at the trial, and the with new concepts that were better than the original.
effort was considered to be strong evidence that there Hence, this activity of seeking alternative designs to
were “substantial differences between the claimed and achieve the same function is good design practice
the accused products.” The logic of the court, which is as well as being good patent practice. It results in
the currently accepted logic in American patent law, stronger patent protection, improved competitive-
is that if a group of highly qualified engineers puts in ness, and lower patent lifecycle and commercial costs.
a substantial effort to avoid infringement of a known Furthermore, if an engineer is well versed in patent
patent, the product of their work (the accused device) law, this type of analysis is an integral part of his or
must be a substantial variation and, hence, does not her thinking process in the beginning of the design
infringe. The philosophy of the court was clearly process rather than at the production stage when
consistent with that of Adam Smith (13), who would changes are costly. This approach of seeking alterna-
applaud efforts to “design around” patents because tive approaches, viz., “designing around” one’s own
they promote progress through intense competition. invention, is a practice that should be introduced in
Although its role in a free-market society is fre- undergraduate engineering curricula.
quently misunderstood by engineering faculty, in The legal literature clearly shows that practices
the real world of American industry, the practice of such as infringement, plagiarism, theft of trade
“designing around a patent” is alive and well. Short secrets, bribery, espionage, and fraud are not as
courses (37) such as Designing Around Valid U.S. uncommon as we would wish in the highly com-
Patents are widely advertised and professionally petitive global industrial environment. Discussion
acceptable. Graduates of engineering schools should of the ethics of intellectual property naturally leads
be well grounded in the ethics of this practice. There into a vibrant discussion of a wide range of ethical
is an old adage in industry that your competitor is the and non-ethical behaviors that engineers may be
first purchaser of a new product off your assembly faced with in the heat of industrial competition.
line. Engineering leadership must shepherd its prac-
In K-2 Corporation v. Salomon (38), an alleged ticing engineers to consider the value in re-utilizing
infringer simply replaced a rivet fastening an in-line select claims that were made in abandoned or expired
roller skate to a shoe with a hex-head screw. Since patents, sometimes from the competition. Engineer-
the patent used the wording “permanently affixed,” ing education and culture must not only encourage
the Court of Appeals for the Federal Circuit ruled engineers to “build on the shoulders” of previous
non-infringement since they judged the screw to designs but also clarify the ethical correctness in so
be removable even though Salomon’s product was doing.
the same in every other respect. Review of litigation
reveals that the ease with which a valid patent can Proposition #3: Innovation in a Litigious Environ-
be “designed around” is startling when the design ment Can Be Dangerous
engineers don’t anticipate such efforts. Rapid global technological changes are sweeping
In prosecuting a patent, one seeks the broadest the engineering environment and creating extremely
scope possible. Hence, it is a good exercise for a design intense competition. Huge investments are being

PATENT SYSTEM AND ENGINEERING EDUCATION 517



made in developing this rapidly evolving new tech- production step of individually balancing the fans
nology. To protect investments, increased emphases after molding, as had previously been done. The basic
on patents and patent litigation are an important idea was quite innovative and cost effective and was
manifestation of these changes that can directly patented by Gelbard (41). However, the Gelbard pat-
affect the way design engineers can and do oper- ent had expired; hence, his technology was in the
ate. There have been many cases where companies public domain. However, the Gelbard patent (41)
have developed engineering designs, incurred the was silent on the issue of whether the adjustment
expense of tooling for production, and were ready screws should be adjusted from outside or inside
to go to market, only to find that the same designs the mold. Gelbard’s drawings showed a preferred
had already been patented. Even worse, companies embodiment with the screws adjusted from outside
have gone to market, only to get sued for staggering the mold. A manufacturing engineer at Denso, work-
sums of money for patent infringement. Even when ing with a mold following the expired Gelbard patent
a product is patented, under the AIA, the issued pat- (41), made what he considered a trivial and obvious
ent can be challenged and often may be invalidated. modification to the adjustment screws. Because of the
USPTO data shows that from 9/16/2012 through mold’s arrangement in the injection machine, access
7/31/2016, under the new AIA, 51,759 patent claims to screws from the rear of the mold was difficult, so he
from 3,410 issued patents were challenged, 23,062 of cut a screwdriver slot on the end of each of the screws
these claims were analyzed by the USPTO (Patent inside the mold. Little did he, or his company, know
Trial and Appeal Board (PTAB)), and 11,721 claims that this infringed on the Swin patent (42). The jury
were found unpatentable by PTAB in a final written in the Federal District Court awarded $25.2 million
decision. (39). Under these proceedings, patents are (40), and the decision was upheld by the Court of
primarily invalidated by having a competitor produce Appeals for the Federal Circuit.
prior art that proves that the patented invention is For an engineer who is working in the industrial
not novel or is obvious in view of known technology. environment, there is a legal minefield that must be
While this data may serve to discourage inventors negotiated whenever there is an effort to innovate. A
from seeking patent protection, which allows them to design engineer or an engineering group leader who
profit from their innovations, as Senator Leahy said, is well versed in patents can avoid pitfalls leading to
the purpose of this new system is to strengthen pat- costly litigation and use the system to their advantage.
ents. Thus, it is incumbent on the inventor to be sure Augustine (6) promoted the need to “equip engineers
that the innovations are truly novel and that they have with a better understanding of issues that shape the
searched exhaustively through the literature to be sure practice of their profession.” For a design engineer,
that the invention is novel and non-obvious. Similarly, basic knowledge of patent law is part of the necessary
an entrepreneur may wish to invalidate a competitor’s “equipment,” and this information should be provided
patent in order to compete. When patents are litigated in an undergraduate engineering education. This
in the courts, as previously discussed, multimillion basic knowledge can help shape an engineer’s career
dollar settlements are quite common. In worst-case with successes and avoid an education through costly
scenarios, companies have been put out of business commercial errors.
due to patent infringement. An injunction to cease Proposition #4: Patent Rights Are Valuable Assets
selling an allegedly infringing product can destroy A patent is a piece of property very much akin to
a company. In the education of design engineers, land. It can be bought, sold, and licensed for apprecia-
the importance of awareness of patented products ble sums of money. For certain technology, licensing
in one’s domain cannot be overemphasized. fees can create revenue streams of many millions of
In Tec Air v. Denso (40), the technology in the dollars per year for the owner of a patent. When a
suit involved the placement of adjustment screws patent is filed in the United States, as stated in the U.S.
in an injection mold for the purpose of incorpo- Constitution, ownership of the patent resides with
rating balancing lugs in a plastic automotive fan the inventor unless 1) the inventor signs away his
during production. This avoided the labor-intensive rights, or “assigns” the patent, to his or her designee

518 GARRIS & GARRIS



or 2) the inventor was specifically hired to invent a contractual arrangements with their employers and
product. This principle was recently upheld by the negotiate appropriately prior to accepting employ-
U.S. Supreme Court in the Stanford University v. ment. Unfortunately for the engineers, largely due
Roche Molecular Systems, Inc. case (43). A crucial to their ignorance of the patent world, this has not
issue is the question of who the inventor is. In the yet become common practice. Were it so, compa-
U.S., the inventor is the person who first conceived nies would be forced to devise sophisticated ways
the invention. The inventor is not the helper, the to attract, motivate, and retain engineers with their
engineer who proved the concept, the team who corporate patent policies and employee benefits pack-
made the concept a marketable product, the group ages. These policy changes could, in turn, produce the
leader, or the employer. While engineers are often “fuel of interest” for the “fire of genius” and extend
magnanimous in sharing credit with colleagues in this nation’s long standing as an innovation leader.
journal publications and other work products, such Tien (5) discusses at length the well-known
collegial gestures have no place in determining inven- “pipeline issue,” whereby the best and the brightest
torship. The patent system’s definition of an inventor do not select engineering as a profession. While he
is neither intuitive nor obvious. and others prescribe various solutions, which are
Particularly in industry, but also in academia, engi- generally directed toward better outreach and more
neers frequently are obliged to sign a contract upon user-friendly curricular changes, they do not focus
commencing employment transferring some or all of on what is probably the crucial motivational factor
future patent rights to the employer. Sometimes, the in selecting engineering as a career path. This is that,
rights of the employers are limited to the technology notwithstanding the fact that the work of engineers
on which the employee is working, and sometimes has undeniably made possible the American way
not. In some states, such rights of the employer are of life, engineers are not currently compensated in
considered implicit in the employment of a person if proportion to their contributions to society. Bok (44)
the invention is related to the area of employment so conducted a comprehensive study of why young peo-
that even if no formal contract is signed, patent rights ple enter various career paths and how compensation
may be automatically assigned to the employer. The affects these choices. He observed:
rights of an inventor and the rights of an employer As the demands of modern society continue to
are quite complicated, and many ethical issues can increase, we must begin thinking of talent as a
arise as to who owns an invention and who is enti- finite resource and start to worry more about how
tled to credit for the invention. Issues of conflict of it is distributed among different occupations and
interest are common. It is not unknown for corpo- professions…. One point that seems perfectly clear
rate executives to claim inventorship inappropriately
or unbeknownst to the actual inventor simply to is that students, lured in part by the prospect of
high earnings, seek to enter the predominantly
enhance their professional status. private professions in much larger numbers that
Another trend that our engineering graduates the system can absorb. Schools of medicine, for
must face is the volatility of the job market. The feel- example, have usually attracted at least double the
ing of obligation that corporations once assumed numbers of applicants as there are places available.
for the long-term employment and welfare of their
employees, and, conversely, the loyalty of employees More than twice as many students applied to law
schools in the 1980’s as could be accommodated…
to the long-term success of their employers, is mostly With so many successful students flocking to
a thing of the past. This trend has been exacerbated management consulting organizations and cor-
by an increasing frequency of corporate downsiz- porate law firms, one has to ask whether money
ing, reorganization, mergers, and acquisitions, all has become too dominant in shaping the career
resulting in traumatic upheavals of the corporate choices of talented undergraduates. (44)
entity. While in a bygone era, employees would gladly
relinquish the fruits of their creativity to the corpo- While Bok (44) laments that compensation plays
ration, now they should quite rightly analyze their such a significant role in the career choices of many

PATENT SYSTEM AND ENGINEERING EDUCATION 519



of our brightest youth, and in a better world it might the online search capabilities available, from the
not, the reality is that it very much does. If engineers convenience of the internet, one can delve into the
had a keen understanding of the patent system, and evolution of any particular technology. While this
demanded appropriate royalty arrangements with searching capability can be an instrument of great
their employers for their inventions, engineering pleasure, it is also a valuable tool for the prospective
could become a very lucrative profession for the most inventor to gain new insights into the advancement
creative design engineers. This would be likely to of a technology. Embedded in the patent archives
make engineering competitive with law, medicine, are records of continuous progress in human genius
and business in attracting the brightest creative and and creativity.
scientifically inclined students. It would also stem the Another dimension is that the patent system
exodus of excellent design engineers into manage- provides human social mobility. Sluby (45) showed
ment, which is currently an inexorable career path how African Americans have been able to use
for bright engineers who seek better remuneration their inventions and the patent system as a tool for
and status. This, in turn, would utilize more effec- upward mobility in times when discrimination made
tively our “finite” human resources for the benefit of advancement very difficult. Of course, the exclusive
society and the engineering profession. If engineers rights conferred by patent ownership know no race
were better informed of the rewards from the patent or gender boundaries. Similarly, in ages when women
system, the “fire of genius,” as stated by President faced insurmountable obstacles in the workplace,
Lincoln, could be unleashed. the patent system provided an avenue of upward
As previously stated, universities also are becom- mobility, as has been chronicled by the Lemelson
ing more interested in patents and are becoming Center for the Study of Invention and Innovation at
willing partners to students and faculty that seek to be the Smithsonian Institution. They have chronicled 59
entrepreneurs and innovators. Many universities have stories of women inventors’ astounding achievements
been successful in negotiating royalty and licensing (http://invention.si.edu/ tags/women-inventors).
arrangements based on their patents, and there is
motivation for universities to exploit the economic REFERENCE INFORMATION FOR UNITED
potential of research activities conducted by their stu- STATES PATENTS
dents and faculty. Industry is often eager to invest in Clearly, if faculty are to utilize the patent system
the market potential of this research. The enthusiasm in design courses, they must familiarize themselves
for universities to develop inventions was partly in with the philosophical foundation of patents, the lan-
response to the Bayh-Dole Act of 1980, which gave guage and structure of patents, the resources available
universities patent rights to inventions resulting from for searching patents, and the legal fundamentals of
government-funded activities. However, convert- patents. There is an abundance of online information
ing the right to patent into a commercial success in and books on these subjects. The USPTO website is
a university requires an educational ecosystem of a valuable source of information (www.uspto.gov).
patent-knowledgeable and motivated faculty and It includes patent search engines, the patent laws,
students. the Manual of Patent Examining Procedure, the Pat-
Proposition #5: Patent Processes Reflect the ent Classification Manual, and many other useful
History of Technology references. In addition, Google has a very power-
Today, in 2017, there have been over 9.7 million U. S. ful search engine that is free for searching patents
utility patents issued since 1836 when the numbering (https://patents.google.com). These resources make
system began. All 9 million patents are classified utilizing the U.S. patent system very easy with a little
according to “class schedules” (i.e., subject matter practice. Also, international patents may be searched
division), which are identified in the U.S. Manual online. Engineering colleges may also identify a ‘res-
of Classification. If one is a student of the history ident expert,’ who may occasionally offer consulting
of any particular technology, the patent archives services as an expert witness for patent infringe-
are a delightful and authoritative reference. With ment trails. Ideally, a university should encourage

520 GARRIS & GARRIS



continuing education and training, and its leadership for a specific application based on the innovations
should overtly encourage a designated steward to described in the selected patent. In addition to the
earn a patent agent registration. selected patent, a project summary is provided, which
specifies goals, design constraints, and target markets.
SENIOR DESIGN COURSE UTILIZING PATENTS Since patents attempt to have a scope that is broad

Over the past 15 years, I have developed a 3-credit enough to cover a wide spectrum of potential appli-
hour senior-level project-oriented design course, cations, an inventor provides enough information
Thermal Systems Design, in which the patent lit- to enable one to practice the invention but rarely
erature and the role of patents in design is heavily limits the specification to a specific design. There is
integrated. The course requires two design projects normally a chasm between what is usually described
during the semester. Enrollment in the class is usually in the patent and a commercially viable design. The
about 25 students. Although I have conducted this idea of the design project is to bridge this chasm. In
course for mechanical engineers, the approach is doing so, the users’ needs must be established, mate-
equally adaptable to any branch of engineering. rials must be selected, structural elements must be
A key feature of the course is to simulate a highly designed, the system must be understood, integration
competitive industry-like design environment. For into a larger system must be analyzed, commercial
each project, the class is broken up into about five strategy must be explored, cost analysis must be done,
teams of five students each. Once the projects get and a variety of other activities must be undertaken.
under way, each team is expected to regard the con- Setting priorities and distribution of tasks is left to
duct of their project as “top secret” and in no way the individual team to determine, and interesting
confer with members of other teams. The other teams differences among the teams usually occur.
are the “competition!” Students are given flexibility The project, as described in the project summary,
in the choice of teammates. In the competitive envi- can be of three different types, each defining a plausi-
ronment established, there is a tendency for the high ble situation that a design engineer might encounter
achievers to unite while underachievers find them- in industry. They are as follows:
selves likewise assembled. While this characteristic Type I Project: Our company, GW Engineering,
of the model is sometimes disturbing, it does make seeks to enter a market and has purchased a license
excellence possible, establishes a high standard, and for a patent. It is known that competitors hold
provides a better yardstick than grades to those who patents on alternate technology, and the team is
are deficient. therefore advised to avoid straying too far from
Typically, before the semester begins, I conduct the elements of the licensed patent for fear of
a search in an interesting area, whereby appropriate risking an infringement situation. The students
patents are selected. The projects often involve energy, are instructed to design a product based on the
biotechnology, automotive technology, or other areas patent claims and specification.
that the students might find exciting. One immedi-
ately realizes that the USPTO provides a veritable Type II Project: Our Company, GW Engineering,
gold mine for ideas for potential engineering design seeks to enter a market, and Company X offers
projects. In selecting patents, particular attention is us a license for their patent, which, Company X
given to those that are assigned to major corporations asserts, will enable us to successfully compete.
or prosecuted by a major patent law firm to ensure GW Engineering’s design team is charged with
that the first patent to which the students are exposed determining if the invention is feasible and worth
is legally well-crafted and one which covers realistic its hefty licensing fees. There is often disagreement
technology. Crawford (46) humorously showed that among the various groups as to this determination,
leading to very spirited and probing discussions.
not all patents are commercially viable. References 47
to 56 are patents that have been the basis for projects Type III Project: GW Engineering must enter a
in this Thermal Systems Design course. highly competitive market now or miss the boat.
Each project consists of designing a product Its customers are pleading for a special product

PATENT SYSTEM AND ENGINEERING EDUCATION 521



that meets their needs. However, Company X, however, everyone benefits by observing at close hand
our prime competitor, is the leader in the field in this microcosm the difference between effective
and holds a patent on an invention that precisely and ineffective teamwork and the consequences in
satisfies our customers’ needs. Company X refuses terms of competitive position. Another interesting
to license the technology. Company X will soon aspect of the final presentations is the dramatic dif-
dominate the market unless we take action imme- ference in approaches observed among teams. Some
diately. The goal is to “design around” Company teams might have highly creative designs, others
X’s invention and obtain a non-infringing alterna- might perform very advanced materials selection,
tive that will enable GW Engineering to satisfy its and still others might develop great insight into
customers’ needs as well as reap immense profits. human factors or cost analysis. An important lesson
that often emerges is that there are different ways to
During the semester, lectures are devoted to
explaining the fundamentals of patents while ana- approach design, and all of them may be excellent,
lyzing the technical details of the particular patent but one is probably the best. Seeing this at the final
used for the project. Discussions on ethics, economic presentation teaches them the importance of not
principles, and principles of good design naturally being satisfied with an excellent design because there
emerge. In addition, the course utilizes case studies, may be another approach that will deliver an even
field trips, and guest lectures, which substantially better design. When teams are fully engaged in the
enhances the learning experience of the students. project, the results can be extremely rewarding for
Each project has a duration of about six weeks, and the students and the professor alike. It is important,
the amount of work to be done is substantial. For this however, to be clear with the students at the outset
reason, team organization is an important element regarding expectations, and close supervision by the
of success. It is frequently observed that teams who professor is needed to help the students focus on the
have difficulty with the first project improve greatly central issues. The projects can be very complex,
on the second after gaining experience in working and only a limited treatment may be appropriate
as a team. Students learn to break up the project into for a semester project. If the scope of the project is
tasks, to delegate the tasks among team members, and not made clear at the outset, students can easily find
to integrate all of their findings. For each project, each themselves overwhelmed. Nevertheless, the chal-
team must give three presentations: two interim and lenge of a real-world experience with an exciting
one final. The interim presentations are “top-secret,” new technology can lead to a memorable learning
and only the team and the professor participate. The experience. In addition, the student obtains a good
final presentation is formal and includes the full class. working knowledge of patents and their role in pro-
The final presentation is an important element moting innovation.
in the educational process because it constitutes the
first opportunity for the competing teams to observe CONCLUDING REMARKS
the work of the other teams. The different groups are The importance of the patent system in promoting
encouraged to critique the work of their colleagues engineering innovation was well known to Thomas
as well as to learn from them. Experience has shown Jefferson, Benjamin Franklin, Abraham Lincoln,
that these presentations take on a very competitive Thomas Edison, and many other great American
tone and are quite dynamic. They provide lessons leaders of the past. As asserted by Dean Kamen, the
that are not easily forgotten. In a given cohort, the patent system continues to be a main driver of keep-
range of accomplishment can be staggering. Teams ing the U.S. economy ahead of the rest of the world.
that work effectively, with every individual carrying Nevertheless, a review of the curricula in modern
his or her own weight, demonstrate creativity and American engineering schools suggests that pat-
outstanding accomplishment. Other teams floun- ents are not an important element in the pedagogy
der with disputes, poor coordination, domineering of design and innovation. This is partly due to the
and oppressive individuals, and lackadaisical par- culture of universities, where ideas are shared rather
ticipants—phenomena of the real world! In the end, than protected, and the faculty reward system does

522 GARRIS & GARRIS



not encourage interest in patents. It is also partly 3. Porter ME. The looming challenges to U.S. com-
due to the general lack of experience of engineering petitiveness. Harv Bus Rev. 2012;90(3):55-62.
faculty with patents, in particular, and the industrial 4. Garris CA. The United States patent system: an
culture, in general. If engineering education is to be essential role in engineering design education.
reformed so as to better prepare students for careers J Eng Educ. 2001;90(2):239-246.
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and invention, bridging this cultural gap between neering enterprise. In: National Academy of
academia and industry should serve as a focal point. Engineering. Forces shaping the U.S. academic
This can be achieved by university policies that either engineering research enterprise. Washington
seek to hire faculty with industrial backgrounds or (DC): The National Academies Press; 1995. p.
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ity litigation also provides faculty with deep insight Apr 11.
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recognized that these activities enhance the value neering change: a study of the impact of EC2000.
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It encourages the pursuit of ideas yet defies the free shall Rev Intell Prop L. 2016;16(1).
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Technology and Innovation, Vol. 19, pp. 525-535, 2017 ISSN 1949-8241 • E-ISSN 1949-825X
Printed in the USA. All rights reserved. http://dx.doi.org/10.21300/19.2.2017.525
Copyright © 2017 National Academy of Inventors. www.technologyandinnovation.org




THE EVOLUTION OF AN INTERDISCIPLINARY COURSE:

INTELLECTUAL PROPERTY AND BUSINESS STRATEGY


David Orozco
College of Business, Florida State University, Tallahassee, FL, USA


This article is a reflective case study that traces the epistemological and pedagogical evolution
of a course called Intellectual Property and Business Strategy that integrates law, technology,
business strategy, and ethics within an engineering-oriented curriculum. This course was taught
over a ten-year period at four academic institutions. The article traces a historical evolution
of this interdisciplinary course and its epistemological broadening over time. The article also
discusses the knowledge foundations that underpin the course. Three broad knowledge domains
are examined, including the broader legal environment, stakeholder analysis, and strategic
management. The article also discusses five learning goals that have emerged from the course
and the methods for achieving these goals.
Key words: Pedagogy; Innovation; Technology; Commercialization; Patents




“Again, you can’t connect the dots looking forward; you can only connect them
looking backwards. So you have to trust that the dots will somehow connect
in your future. You have to trust in something—your gut, destiny, life, karma,
whatever. This approach has never let me down, and it has made all the differ-
ence in my life.”
Steve Jobs
Co-founder of Apple, Inc.


INTRODUCTION called Intellectual Property and Business Strategy.
As an educator, a large part of my job is to moti- This article is a reflective case study that traces the
vate and assist students as they embark on a lifelong epistemological and pedagogical evolution of this
course as it was taught over a ten-year period at four
journey to connect the dots. To further this goal, I academic institutions, each with a fairly different
design courses with a systems approach and introduce student profile.
a broad array of material to stimulate holistic learn- One of the unifying aims of the course has been
ing. This article will discuss my attempts to educate to prepare students to appreciate and connect the
technologists about law and strategy through a course dots that will arise in their professional lives. At
offering that has evolved considerably and is now the core of my interest in teaching interdisciplinary
_____________________

Accepted: July 3, 2017.
Address correspondence to David Orozco, Florida State University College of Business, 821 Academic Way, Office 415, Tallahassee, FL 32306, USA.
Tel: +1 (850) 644-9733. E-mail: [email protected]


525

526 OROZCO



courses that target engineers, designers, and scientists are the source of value creation through their techno-
(henceforth referred to as “innovators”) is a belief that logical advancements and inventions. The value chain
law, technology, society, and business are all closely framework that is often used in strategic management
interwoven and that the world is improved when education and planning exercises depicts technology
individuals from diverse backgrounds collaborate development as a fundamental value-creating activity
to create and capture economic value. that is often linked to other business activities to gen-
Some of the greatest advances in technology and erate competitive advantage (2). Additional value in
innovation have emerged from individuals who have this well-accepted framework is created and captured
been able to connect the dots across disparate fields. through subsequent primary and support activities,
Thomas Edison, the Wright brothers, Tim Berners such as manufacturing, distribution, marketing, legal
Lee, Bill Gates, and many others come to mind as indi- administration, and corporate governance (Figure 1).
viduals who spanned knowledge domains to create Innovators, therefore, play a fundamental and
new and pioneering areas of scientific inquiry. Along early role in value creation at the individual, team,
the way, many innovators experienced great personal and firm levels of analysis. A general trend is the
growth and satisfaction through the development commercialization of knowledge assets among firms
of their entrepreneurial and business leadership competing within the knowledge economy (3). This
skills. Innovators often succeed as entrepreneurs, has resulted in macro-level adjustments. For example,
and research shows that many start-up companies the investment rate in intangible assets in the U.S. is
are initially led by their scientific founders (1). One currently 14.3 % of gross domestic product compared
of the goals of a course like Intellectual Property and to a 9.5 % investment rate in tangible property (4).
Business Strategy is to spark the imagination of inno- These are the assets on firms’ balance sheets that, in
vators who are curious about their role in the larger part, comprise patents, designs, trade secrets, brands,
value-creation ecosystem and stimulate their interest copyrights, and know-how.
in pursuing business opportunities. The creation of The fortunes of nations are increasingly depen-
courses such as this one also encourages university dent on innovation and the systems that incentivize
instructors to span disciplines and experiment within innovators who reside within their borders (5,6).
their curricular and institutional environments. South Korea’s industrial transformation is a recent
Innovators should, at a minimum, appreciate their and striking example. China is undergoing a simi-
vital role in the value-creation ecosystem. Often, they lar transition period as its economy and intellectual



Firm Infrastructure

Support Human Resource Management
Activities Technology Development Margin

Procurement


Inbound Operations Outbound Marketing Service
Logistics Logistics And Sales Margin






Primary Activities
Figure 1. The value chain of the firm (2).

IP & BUSINESS STRATEGY COURSE 527



property (IP) system mature, and, in the process, analysis, and strategic management. Section three
it has become the number one patent-filing nation will examine five learning goals that have emerged
in the world (5). China’s patenting activity is linked from the course and the methods for achieving these
to that nation’s aspiration to compete at the highest goals. Following this section, the article concludes.
strategic levels in the global knowledge economy (6).
Studies confirm that nations undergo a transition HISTORICAL EVOLUTION
period of capacity building and intellectual capital Intellectual Property and Business Strategy
development that is correlated with increased levels evolved from an original course offering developed
of patenting. Patents are therefore an imperfect but and spearheaded by another educational pioneer,
acceptable proxy to measure national innovative Northwestern University professor James G. Conley,
capacity (7). One study assessed China’s national a National Academy of Inventors Fellow who has held
innovative capacity and demonstrates that patenting appointments at both the Kellogg School of Manage-
in China has increased significantly since 2001, led by ment and the McCormick School of Engineering.
universities and members of private sector industry Professor Conley’s vision for a patent-focused
(7). China is following global and macro-level trends engineering course called Innovation and Invention
that will assuredly have a significant impact on U.S. fit the needs of an engineering curriculum program
firms and innovators going forward. update at Northwestern, Engineering First® (2016
The idea of teaching business and IP to inno- conversation with Professor James G. Conley, unref-
vators is not novel. Professors Robert Rines of the erenced). The award-winning Engineering First
Massachusetts Institute of Technology and Charles curriculum provides first-year students with engi-
Garris of the George Washington University persua- neering experiences, integrates engineering science
sively argued in favor of integrating patent law as a and mathematics, and emphasizes design and the
key aspect of engineering education (8-9). Professor process of design thinking (10). Professor Conley’s
Garris cogently argued that the U.S. patent system is proposed course would serve as a bridge in the newly
an essential learning tool in engineering education revised curriculum to “establish the critical link…
to teach industrially-relevant case studies; educate between design, innovation and competitive advan-
engineers about the legal risks of inventing; raise tage” and would use in-depth case studies from the
awareness of the value that engineers create since patent literature to highlight cases of technology,
patents can be valuable property rights; teach students innovation, and competitive advantage (Memoran-
about the broader economic, legal, and ethical envi- dum from James G. Conley, unreferenced). In 2003,
ronment; and provide a means for faculty to engage Professor Conley submitted a proposal to Northwest-
industry (9). An interdisciplinary course like Intel- ern University’s Murphy Society to develop a new
lectual Property and Business Strategy builds from engineering course called Innovation and Invention
the important contributions offered by pioneering (Memorandum from James G. Conley, unreferenced).
and far-seeing educators such as Professors Rines The Murphy Society awards funding for special fac-
and Garris. ulty and student-initiated engineering projects (10).
The balance of this article is organized as follows. The Society is named after university benefactor,
The first section will provide a historical evolution industrialist, and prolific inventor and patentee Wal-
of the course. This discussion spans four academic ter P. Murphy.
institutions during a period of ten years. The course In 2003, Innovation and Invention was approved
evolution will reflect the differing needs and goals as a 3-credit upper-division course at Northwestern’s
of each institutional setting and an epistemological McCormick School of Engineering. The course was
broadening of the subject matter as the course has introduced in 2004 and initially enrolled 40 students.
matured over time. The second section will discuss In 2006, I was asked to help re-design and co-teach
the knowledge foundations that underpin the course. the course partially to fulfill my duties as a post-doc-
Three broad knowledge domains will be assessed, toral research fellow affiliated with Professor Conley’s
including the broader legal environment, stakeholder multidisciplinary research center, the Kellogg Center

528 OROZCO



for Research in Technology and Innovation (11). Thirteen years after its first introduction, the
The course was initially structured as a ten-week course continues to be offered and remains a popu-
quarter course, meeting once a week for three hours lar offering within Northwestern’s Engineering First
and covering the sequence of topics listed in Table curriculum. Currently, the course is called Intellec-
1. Students were required to purchase a customized tual Property and Invention (DSGN 350) and is
course pack, consisting primarily of background legal offered every spring term. The principal change in
guides and utility patents. the course has been the introduction of patents in
Innovation and Invention exposed undergrad- the fields of social networking and e-commerce to
uate engineering students to the major IP regimes, better reflect the state of the art in these important
with a heavy emphasis on utility patent-related read- areas of invention. Presently, the course is taught by
ings, discussions, presentations, and case studies. Clinical Associate Professor Daniel P. Brown, who
The diversity of inventions covered in reading and is a prolific inventor and entrepreneur (12).
discussion was designed to illustrate the broad appli- I offered a different version of the course in 2007
cability of patents to innovation and to cater to the at my subsequent place of academic employment,
diverse backgrounds of students representing bio- Michigan Technological University (MTU). At MTU,
medical, electrical, mechanical, and civil engineering I redesigned an upper-division course, Intellectual
and computer science, amongst other disciplines of Property Law, Technology and Society (BA/SS 3650),
applied sciences. The course was also a platform for that had previously been offered. This course was
engineering students to gain additional experience added to the curriculum prior to my arrival in 2006
with group projects, oral presentations, and writing as a general elective open to all majors across cam-
assignments. pus. The course was designed to expose students to
Table 1: Innovation and Invention 2006 Course Syllabus
Week Topic Description

1 Course, syllabus introduction, pedagogy, Innovation in the context of invention,
deliverables, and student responsibilities competitive advantage
2 General introduction to “How to read a Introduction to invention, trade secrets,
patent” patents
3 Invention history, trade secrets, patent Team presents inventions: B&D Snakelight
regimes across time. Willy Wonka and the
Chocolate Factory

4 Patent prosecution strategy Team presents inventions: Alcoa 7150 alloy
5 Novelty, usefulness, obviousness and Team presents inventions: ASF Unicore
patentable inventions. Patentability and the bolsters and side frames
new combination of old ideas, Edison and
the lightbulb
6 In Class MIDTERM EXAM Team presents inventions: Eolas framing
of web pages
7 Innovation source identifiers: marks, trade Team presents a patent: Cox 2 pain
dress, trade names inhibitor

8 The expression of ideas: copyrights Team presents inventions: Fax standard
9 Student presentations of final projects Student presentations of final projects (cont.)
10 Student presentations of final projects (cont.) Course review and summary

IP & BUSINESS STRATEGY COURSE 529



the legal and public policy implications of innova- Baker, unreferenced). A recent course description
tion and the IP system. Students enrolled are from states that the course “[c]overs principles of intel-
diverse fields of study, such as electrical and mechan- lectual property law, addressing managerial and
ical engineering, physics, chemistry, social sciences, policy issues in copyright, trademark, trade secret,
communications, economics, computer science, and and patents. Readings and discussions also cover
business (13). how these property and legal systems impact the
The 3-credit, semester-long course was offered balance between property exclusivity, technological
jointly by the School of Business and Economics innovation and public access” (13).
and the Department of Social Sciences and delivered In 2015, I offered a third version of the course at
using a collaborative team-teaching approach that Florida State University (FSU), my current place of
proved to be effective (13). Students in the course employment. Having taught law-related courses to
rated the team-teaching approach 4.25 on a five- non-lawyers, I appreciated the broadening impact
point Likert scale (1 = Strongly Disagree, 5 = Strongly that such courses could have on students and the
Agree) (13). The course was also made available as curriculum. Unlike the two prior institutions, no such
an elective to multiple engineering programs, such offering was in place when I arrived at FSU, so the task
as the interdisciplinary minor in nanoscale science/ fell on me to create the course from scratch. My plan
engineering and MTU’s capstone Enterprise Design was to create an elective 3-credit course called Intel-
Program (13). I first taught a version of the course lectual Property and Business Strategy that would be
in fall 2007 and enrolled approximately 30 students. offered jointly through the graduate business school
The syllabus of the version I taught offered this program and the law school and combine MBA stu-
description: dents with law students to stimulate interdisciplinary
This course covers the principles of intellectual discussions and projects. I approached my law school
property law, addressing legal and contemporary faculty colleague Professor Jake Linford, a special-
policy issues in patents, copyrights, trade secrets ist in copyright and trademark law, to co-teach the
and trademarks. The strategic management of course. This offering required some entrepreneurial
intellectual property rights is also a focal concern. effort, creativity, and administrative support from our
Drawing from these two perspectives, significant respective colleges (business and law) to facilitate exe-
attention is devoted to how the law impacts the cution. To achieve this, we established two sections
balance among property protections, techno- of the course, each through our respective colleges
logical innovation and public access. The course as a special topics course, thereby reducing the need
design emphasizes learning through lectures, case for a lengthy course approval process. The course was
studies, group work and exercises. considered half an overload for each instructor.
The content of Intellectual Property Law, Technol- Enrollment in the alpha version of Intellectual
ogy and Society differed in several respects since it was Property and Business Strategy was almost evenly
tailored to a broader audience of students, many with split between graduate business students and law
non-technical backgrounds. The goal was to broaden students. The course was designed to enroll an
the subject matter to include societal and public policy approximately equal number of students from each
topics since IP relates to several important and inter- graduate program to stimulate interdisciplinary
esting policy issues. The course covered all the major teamwork and discussion. Additionally, two Ph.D.-
IP regimes and included public policy topics such MBA students with backgrounds in biology and
as the open source and copyleft movements, digital several students with information technology-related
piracy, traditional knowledge, and patent hold-ups. experience enrolled in the course, demonstrating its
The course continues to be regularly taught at continued appeal to scientists and engineers. Given
MTU using a collaborative team-teaching approach that the student make-up consisted primarily of
with instructors from social sciences, business, and non-scientists and engineers, however, we decided
the university’s Office of Innovation and Industry to focus primarily on the legal, strategic, and socie-
Engagement (2016 conversation with Professor Jim tal issues surrounding IP management rather than

530 OROZCO



discrete technology-related topics. This focus allowed tailor course material to this unique group of working
us to introduce more advanced topics related to legal professionals, most of whom had advanced science
strategy. For example, we discussed the concept of and engineering degrees and significant industry
legal endogeneity, that is, when strategic parties do experience.
not take the law as a given and instead attempt to The class met six times. Each three-hour eve-
shape legal rules and outcomes using legal, media, ning class was designed to have a lecture and a
policy, economic, and political means (14-16). The discussion-based case study component. Earlier in
course description stated: the program, the students studied basic IP regimes
since a prerequisite for the course was a class on IP
This course covers the broad agenda of using intel- fundamentals. A greater emphasis was, therefore,
lectual capital for competitive advantage. With placed on strategic management and advanced topics,
globalization, intangible assets such as human including IP-enabled business models, litigation strat-
capital, intellectual property, brands and relation- egies, licensing, data mining, regulatory strategies,
ships have become the dominant proportion of a lobbying, policy, and ethics. As with the prior course
firm’s market value. Yet most firms do a poor job versions, a customized reading packet was assembled
of managing this intellectual capital strategically. and comprised mainly articles and cases. The course
This course adopts a “lifecycle” approach to the description for the course states:
management of an intellectual asset, covering the
creation of the asset, the codification of the asset To better prepare you as a strategic manager of
in the form of intellectual property (IP), the val- knowledge-based assets, this course adopts a
uation of the assets, the protection of the assets lifecycle approach that covers the creation of an
and leveraging of same into future markets for intangible asset, its codification and protection
growth. Case studies examine management chal- as intellectual property rights, their leveraging
lenges in entertainment, finance, pharmaceuticals, through contracts and other strategic techniques
health care, consumer electronics, agribusiness, such as litigation, data mining and administra-
biotechnology, consulting, venture capital, tele- tive proceedings. The course also approaches
communications, software and other contexts. intellectual property strategy from a stake-
Additionally, the social implications of intellectual holder perspective. The effective and strategic
property policy are discussed. management of intellectual property and other
knowledge-based rights considers various import-
The semester-long course was offered once during ant constituents that include: external regulators,
spring 2015, and course evaluations indicate that it the courts, administrative agencies, inter-firm
was well-received. The team-teaching method also departments, top management, partners, custom-
proved to be successful and well-received by the stu- ers, competitors, the media and public at large.
dents. Plans are in place to offer another version of the
course that will expand to include students enrolled The course was well received by the MSL stu-
in the science, technology, engineering, and math dents and received an overall rating of 5.7 out of 6.0.
(STEM) disciplines. Enrollment consisted of nine students, which was
I offered the most recent version of Intellectual appropriate for this relatively new program target-
Property and Business Strategy during summer 2016 ing the part-time evening program enrollees during
as a six-week course offered through Northwestern the summer months. It was also perceived as a cap-
University School of Law’s Master of Science in Law stone-type course that integrates legal knowledge
(MSL) program (17). The MSL degree program pro- with the type of applied business strategy competency
vides focused and practical business-centered legal that STEM students seek to apply in the workplace
training to STEM professionals. I was invited to visit as future business leaders. As experienced scien-
during the summer as an adjunct visiting professor tists and engineers, the MSL students greatly valued
to develop a 1.5-credit modular course for the pro- understanding the deeper legal, strategic, societal,
gram. I decided to revamp the preexisting offerings to and ethical implications of innovation and IP rights.

IP & BUSINESS STRATEGY COURSE 531



existing legal doctrine and to strategically limit a
KNOWLEDGE FOUNDATIONS OF IP AND competitor (19). The dynamics and complexity of
BUSINESS STRATEGY the U.S. common law and regulatory system can be
Having taught four different versions of the course evaluated and discussed in much greater detail using
at four different institutions during a period of 10 the context-specific case study method.
years facilitates critical reflection on the epistemo- An expansion of focus to include the broader
logical foundations of interdisciplinary offerings legal environment facilitates integration of the next
that combine law, technology, and business strategy. knowledge domain, stakeholder analysis. Stakeholder
During this process, I have determined that three core analysis involves assessing the broader business,
knowledge domains with their applicable theories and legal, political, and social environment to identify
frameworks inform and explain the behavior of stra- the groups, institutions, and interests that impact the
tegic actors who exploit knowledge-based assets. My firm and its innovators (20). Early iterations of the
experience is that these knowledge foundations have course paid little attention to external stakeholders,
significant implications for innovators as participants and considerable attention focused on a few key insti-
in the value ecosystem and are, therefore, pedagogi- tutional actors, such as the USPTO or the courts. A
cally valuable. The three key theoretical foundations broader stakeholder analysis allows one to recognize
are the legal environment of business, stakeholder and analyze the legal, strategic, ethical, and political
analysis, and strategic management (Figure 2). Each forces that shape innovation. From this perspective,
knowledge domain will be briefly discussed next. the legislature, the executive branch and its admin-
istrative agencies, the courts, trade associations, the
media, business partners, regulators, and public advo-
The Legal cacy groups can impact innovation and strategic
Environment Stakeholder Strategic outcomes (20). For example, the latest version of the
of Business Analysis Management course discusses strategic attempts to influence public
opinion related to non-practicing patent entities as a
means to weaken patent appropriability in complex
Figure 2. Theoretical foundations.
technology industries, such as software (21). From
The earliest versions of the course focused on the this perspective, the role of ethics and norms can
patent regime. Subsequent offerings broadened to be introduced as an important countervailing force
encompass other IP regimes, including trademarks, against the employment of overreaching strategic
copyrights, trade secrets, and designs. These various behavior (16).
IP regimes are just one facet, however, of the much The third key knowledge domain involves strategic
broader legal environment. The broader legal envi- management. The introduction of strategic manage-
ronment encompasses institutions and processes that ment theories and frameworks helps to explain and
include the courts, litigation, negotiations, adminis- guide decision-making within the fields of innova-
trative agencies, regulators, statutes, and contracts. As tion and IP management. Several perspectives have
the course evolved and became richer in its content, informed the course over the years. One perspective
the emphasis shifted to these broader legal dimen- is that of Michael Porter and his insights related to
sions. From this perspective, technology and the IP value chain analysis and the firm’s strategic choice
regimes are just a starting point for strategic deci- to either insource or outsource business activities to
sion-making processes and behavior. For example, in achieve cost leadership or differentiation (2). Value
the most recent course offering, a case was analyzed chain analysis provides a foundation to examine other
in which an incumbent firm opposed a much smaller important concepts, for example, the role of strategic
competitor’s trademark application at the U.S. Patent downstream complementary assets such as manufac-
and Trademark Office (USPTO) and strategically turing, distribution, and branding and their relation
stalled the registration for three years (18). Another to innovation and technology appropriability levels
case examined how litigation can be used to challenge (3). The value chain also provides a foundation to

532 OROZCO



examine the firm’s essential internal capabilities and LEARNING OBJECTIVES AND DELIVERY
its linkages with external strategic partners through As the course evolved over time, I identified the
the execution of a successful business model (2,22). five key learning objectives that are listed in Table 2.
For example, in the latest version of the course, These learning goals assume a working knowledge
IP-enabled business models were introduced and of the various IP regimes. This assumption is not
effectively discussed using various case studies, such necessary, however, and a sixth learning goal can
as those involving Tabasco hot sauce and the Amazon encompass learning the basic content of the vari-
Worlds fan fiction distribution platform (23,24). ous IP regimes. Alternatively, an entire prerequisite
Another aspect of strategy involves an emergent course, such as IP Fundamentals, can be structured
area of research, corporate legal strategy. Legal strat- to achieve this goal. Depending on the program
egy encompasses a diverse range of behavior with scheduling and needs, the course can alternatively
differential impact and is predicated on the under- introduce these property regimes at the beginning.
standing that not all attorneys and managers have Various useful resources exist that succinctly intro-
the same legal capabilities (15). The course, in its duce the IP regimes to non-lawyers (26).
current form, discusses the concept of rare, strategi- Various cases and reading materials help to achieve
cally-qualified attorneys who work with innovators the first learning objective. The writings of Teece and
and managers to transform the legal environment and Porter, for example, explain the role of appropriabil-
help firms achieve long-term competitive advantage.
A useful framework that integrates all of these strate- ity regimes, downstream strategic complementary
gic perspectives is the value articulation framework assets within the value system, and how firms can
(25). This meta-framework integrates value chain, profit from innovation despite lacking a first-mover
business model, and legal strategy capabilities and advantage (2,3). Industry or technology-specific case
provides a strong pedagogical basis to discuss IP studies can illustrate the pitfalls innovators often face
strategy cases. as entrepreneurs who often must compete against
Figure 3 illustrates how Intellectual Property and large incumbents (27). Other case studies that use the
Business Strategy evolved over time to build on sev- value articulation framework illustrate how IP can
eral important knowledge domains. be leveraged across existing and new value chains,
i.e., markets (25). These materials reinforce how, and
under what conditions, innovators can be a pivotal
Strategy/ source of value creation and subsequent capture.
Ethics The second learning goal assesses the broad reg-
ulatory and legal system in relation to innovation.
Useful materials highlight how the three branches of
Legal
Environment government may impact the innovator. For example,
a rich discussion can be gained from an assessment
of the USPTO’s internal rules and judicial case law
referencing patent and trademark oppositions. Leg-
IP Regimes
islative amendments to important statutes such as
the U.S. Patent Act can offer a rich source for dis-
cussion related to legislation’s impact on innovators.
The practice of industry lobbying can also highlight
Patents the heterogeneous needs among innovators with
respect to the IP system (28). Judicial opinions also
provide a very rich source of material to illustrate
the competing interests of parties and the role of the
courts as the social arbiters of the appropriate balance
Figure 3. Knowledge domain evolution. between private and public interests.

IP & BUSINESS STRATEGY COURSE 533



Table 2: Learning Objectives

Learning objective 1 Understand the innovator’s role in the value chain and the need for strategic
complementary assets

Learning objective 2 Understand how public policy and regulation can strategically impact the
innovator

Learning objective 3 Understand the innovator’s role in developing internal firm capabilities to
generate IP-enabled business models

Learning objective 4 Understand how legal strategy, litigation, and other adversarial processes can
impact innovation

Learning objective 5 Understand how ethics and public opinion impact innovation-related outcomes

The third learning goal related to IP-enabled Lastly, the fifth learning goal related to ethics and
business models is best attained with the aid of public opinion can be supported with materials that
industry case studies and guest speakers. Effective examine timely topics such as legal bullying, legal
cases demonstrate internal innovation capabilities crowdsourcing, and patent hold-ups in technol-
that are strategically linked with key external players ogy standard-setting environments (19). Materials
to achieve long-term competitive advantage. The and case studies should reinforce the impact these
value articulation framework, once again, provides a
useful resource to sample cases (25). Other excellent normative forces often have on innovation-related
resources for this topic include the works of Ches- outcomes. Figure 4 provides a visual depiction of all
brough (22), Shapiro and Varian (29), and Pisano five learning goals.
(14). The topic of IP-enabled business models lends
itself to expansive class discussions including the
complementary role contractual licensing provisions
as a method for exchanging value between parties.
Students quickly learn that their success as innovators
is often linked to the value that is shared with key
external constituents using institutional arrange-
ments such as licensing contracts.
There are ample opportunities to introduce mate-
rials related to the fourth litigation-related learning
goal since there is no shortage of IP controversies
and disputes. A considerable amount of strategic
industry insight and information can be gathered
from publicly available litigation documents. For
example, trade secret, utility patent, and trademark
complaints can be introduced to discuss the nature
of legal claims and how they relate to competition.
This technique also introduces students to the courts,
settlement negotiations, the common law process,
appellate decisions, and the economic costs of the
U.S. adversarial legal system as strategic determinants
of business and innovation outcomes (18). Figure 4. Summary of learning objectives.

534 OROZCO



CONCLUSION Intellect Property. 2007;5(3):426-435.
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Technology and Innovation, Vol. 19, pp. 537-552, 2017 ISSN 1949-8241 • E-ISSN 1949-825X
Printed in the USA. All rights reserved. http://dx.doi.org/10.21300/19.2.2017.537
Copyright © 2017 National Academy of Inventors. www.technologyandinnovation.org






TRANSFORMATIVE BUSINESS STUDIES:
TECHNOLOGY TRANSFER IN THE SOCIAL SCIENCES


Magnus Gustafsson and Anastasia Tsvetkova
Åbo Akademi University, Turku, Finland


In order to successfully transfer research results of business studies to practical application, there
is a need to produce knowledge that has practical relevance and is transferrable to new contexts.
This, naturally, creates requirements for the research process and methodology. In this paper,
the methodology for conducting transformative business studies is presented, which is based on
a combination of the design science research paradigm, participative research, and controversy
mapping inspired by actor-network theory. The combination of these research methodologies
and paradigms forms a methodological basis for producing transferrable research results that
concern larger organizational and social change. It allows approaching ill-defined research
problems through design thinking and systematically validating and verifying research results
with practitioners in order to ensure the applicability of results in practice. To illustrate the
methodology, we utilize an example of a method for designing business ecosystems that was
developed in a collaboration between Åbo Akademi University and the research-based con-
sultancy PBI Research Institute. This method was created during a series of projects devoted to
the biogas-for-traffic business and concerned the development of enabling business ecosystems
for innovations. Due to the way the knowledge was recorded, it was possible to transfer this
knowledge to new contexts, such as logistics and energy business.
Key words: Actionable knowledge; Controversy mapping; Design science research; Transfor-
mative business studies; Technology transfer




INTRODUCTION such as those concerning organizational and social
University technology transfer can be described change, face challenges in undergoing the same
as an organizational activity that transfers research process. Simply put, not all research results can be
patented and easily replicated in different industrial
results, in the form of innovations or other knowl- applications. Nevertheless, the significance of the dif-
edge, for the benefit of society. Most commonly, it is fusion of academic thought grows as society addresses
accomplished through licensing intellectual prop- complex industrial and social challenges. This is the
erty to commercial actors that are able to utilize the case for research results and solutions developed
results in practical applications (1). This is a rather in academia that tackle a number of sustainability
well-established process for the transfer of concrete challenges, for example, within energy and logistics
technologies, but research results that are broader, domains. The main question we ask in this paper

_____________________

Accepted: July 3, 2017.
Address correspondence to Magnus Gustafsson, Åbo Akademi University, Faculty of Science and Engineering, Laboratory of Industrial Management,
Piispankatu 8, 20500, Turku, Finland. E-mail: [email protected]


537

538 GUSTAFSSON & TSVETKOVA



is how business research should be organized and utilize an example of a method for designing business
conducted so that it leads to a meaningful change ecosystems that was developed in a series of projects.
of behaviors. This is a crucial question since not The biogas-for-traffic business was the context for
any research will suffice. We thereby stipulate that these projects, and the main practical aim was to
the success of technology (and knowledge) transfer design a business ecosystem that would enable the
directly depends on the quality of the research results utilization of biogas as fuel in public and commercial
produced and the research process used. transportation in a focal country. The theoretical aim
Research, in general, is about producing new of this study was, in turn, to develop a method for
knowledge. New knowledge means knowledge that designing enabling business ecosystems that could be
did not exist before. But, for research results to lead applied in other similar problematic contexts, such
to technology transfer, the results also need to have as introducing cleaner technologies in the some-
a practical utility, and they must in some way benefit what rigid and institutionalized energy and logistics
society (or a member of society). If the result lacks industries.
practical meaning, then it cannot be transferred, and In the next sections, we describe the methodology
it has limited practical benefit. Thus, for a successful for performing transformative business studies, which
technology transfer, there is a need to ensure that is based on design science research, participative
research results are relevant and valid and, at the research, and actor-network theory, followed by the
same time, replicable in new contexts. example of how it was applied in the biogas-for-traffic
We argue that the research results that are trans- case and which concrete research tools were used.
ferrable need to be produced within a pragmatic or We further discuss the transferability of research
actionable research paradigm, which we refer to as results produced in the exemplary research case and
transformative business studies. In this paper, we conclude by outlining implications for researchers
define transformative business studies as research and practitioners.
within business and social studies that is induced by
real-life challenges and leads to changes in business METHODOLOGY FOR TRANSFORMATIVE
practices and larger social change besides producing BUSINESS STUDIES
general theoretical knowledge on the phenomena in
question. We further stipulate that certain research Design Science Research
modes are more conducive for performing such Producing transferrable research results requires
studies. In particular, design-oriented research, such a research process with transferability as its objective.
as design science research in organizational studies Research, in general, can be classified in two different
(2–5), intentionally produces results that can solve modes, reductionist analysis and purely descriptive.
real-life problems rather than generate only explana- The former is found primarily in the natural sciences,
tory or descriptive knowledge. Participative research which take “nature apart to discern and understand
methods (6–11), on the other hand, facilitate ensuring its fundamental units” (25), while the latter is com-
the relevance and validity of produced knowledge. mon for sciences describing social and cultural
Finally, stabilizing the actors supporting or opposing phenomena, such as humanities. There is, however,
a solution, inspired by actor-network theory (12–16), the third mode of research, which is not always
is a crucial part of successful technology transfer. perceived as ‘pure science’ due to its applied nature—
The combination of these research methodologies design science research (2,20,25,26). Design science
and paradigms, we believe, forms a strong method- research (DSR) is the underlying paradigm in such
ological basis for producing transferrable research disciplines as engineering, medicine, and computer
results that concern larger organizational and social science because its aim is to create knowledge that is
change, and, therefore, are particularly suitable for prescriptive and that leads to action with improved
performing transformative business studies. results. While DSR is a natural research mode for the
To illustrate the research process that we propose aforementioned sciences, the research results that
for successful transformative business studies, we can foster greater sustainability improvements often

TRANSFORMATIVE BUSINESS STUDIES 539



Table 1: Comparison of the Three Modes of Research
Science Humanities Design
Purpose Understand phenomena by Describe, understand, and Produce the systems that do
uncovering causalities, critically reflect on the not exist yet, i.e., change the
patterns, and forces that human experience of existing situations into desired
underlie these phenomena phenomena ones
View of Representational: Constructivist and Pragmatic:
knowledge • our knowledge represents narrative: • knowledge is in service
the world as it is • all the knowledge arises of action
• nature of thinking is from what actors think and • nature of thinking is
descriptive and analytic say about the world normative and synthetic
• nature of thinking is
critical and reflexive
Character of Reductive analysis Descriptive Prescriptive (actionable)
knowledge
Examples of Natural science Humanities Design and engineering based
scientific (physics, mathematics, biology) (history, hermeneutics, upon diagnosis
domains literature) (engineering, medicine,
architecture, computer science)

Focus of theory Discovery of general causal Key question is whether a Does an integrated set of
development relationships among variables certain (category of) design propositions work in a
(expressed in hypothetical human experience(s) in an certain ill-defined situation?
statements): Is the hypothesis organizational setting is The design and development of
valid? Conclusions stay within “good,” “fair,” etc. new artifact tends to move
the boundaries of the analysis outside boundaries of initial
definition of the situation
Metaphor Life understood retrospectively Life as it can be
Adapted from (20); based on (3).
require more than only engineering. A certain degree is in fact an event, a process: the process namely of
of process, organization, and social engineering is its verifying itself, its verification” (32). Knowledge of
necessary in order to ensure the improvement works this sort is able to support and motivate practitioners’
in practice and can be implemented by organiza- actions in order to achieve the desired goal.
tions. Organizational and social sciences, however, This is in contrast to purely explanatory knowl-
are far less familiar with design science although edge, which is able to answer the question ‘how to’
attempts to adopt this mode of research have been only by establishing general cause and effect rules or
made (2,26,20). laws and extrapolating into the future. The difference
DSR, as opposed to explanatory and descriptive between the three main modes of research and the
modes of research, uses target systems and design knowledge produced within them is demonstrated
propositions when defining the initial situation in Table 1.
and urges people towards thinking how the system DSR is relevant for addressing research problems
could be made to work (3). The main outcomes of where the underlying laws are not discoverable, too
such research include the design proposition, i.e., complex to be reduced into a limited number of
the desired outcome, and the knowledge of how to variables, or are even irrelevant (e.g., due to their
achieve it (3) that can be transferrable to other similar high degree of conditionality). Sustainability chal-
contexts. The truth of such knowledge can be assessed lenges, being an example of social challenges that
in pragmatic sense; that is, as James puts it, “its verity require transformative business studies, fall under

540 GUSTAFSSON & TSVETKOVA



this definition due to their complexity. Academia is that require transformative business studies
responsible for producing research results that are are prone to institutional rigidity, uncertainty,
not only of a descriptive and explanatory character organizational inertia, and lack of cooperation.
but are also, and importantly, applicable, ‘actionable’ Thus, the change of attitudes and ways of work-
knowledge that can put humanity on a path to sus- ing can be better achieved when the research is
tainable development. done in cooperation with the key actors rather
than through handing over the research results
Participative Research to the practitioners for implementation after
The second cornerstone of the methodology for the study is over.
transformative business studies is the participative The involvement of practitioners can be achieved
action research (PAR) mode, which can ensure the through employing both consultants and researchers
relevance and applicability of research results and in the study as demonstrated in Figure 1. The role of
thereby their ability to transform society. There are a the researcher in this process is to understand each
number of methodologies associated with PAR, such of the problems inside the context (48) and, together
as action research and clinical research. In this paper, with the consultant, generate actionable knowledge.
we specifically focus on clinical research (8,38,40–45) The role of the consultant is to ensure the benefit of
as the methodology for performing PAR (which we the client and those stakeholders deemed relevant
refer to as PAR or clinical research or clinical inquiry for achieving a sustainable outcome. The researchers
interchangeably) due to its focus on extant involve- and the consultants set the stage for problem solving
ment of organizations as active research participants. (11) as the context evolves and new problems emerge.
It builds on the idea of engaging in research activities This enables the practitioners to explore and act upon
that are based on the needs of organizations and the the emerging knowledge, thus generating actionable
co-creation of solutions in collaboration with said data (38).
organizations. It allows not only the accessing of The collaboration between researchers and consul-
sensitive contexts but also ensures the commitment of tants gives researchers access to rich data while giving
the research participants to co-create valid knowledge clients access to new knowledge that is developed
(9,39). The validity and, what is equally important, the and applied with the aim of improving the client’s
relevance and actionability of the produced knowl- situation. The iterative process of research and appli-
edge are ensured by studying social systems “as they cation, at the same time, allows for abstraction of
react to experimental manipulation” (46). research results so that the knowledge can be applied
The sufficient involvement of relevant practi- in other contexts to realize the benefit to society and
tioners, we believe, is necessary due to the following the relevant stakeholders. Though practitioners have
reasons: knowledge of the incumbent context, the role of the
consultants and the researchers becomes central
• Complex and ill-defined research problems: as new knowledge emerges and the project moves,
When the target of the research is not clear, according to plan, into unknown territory.
there is not only the question of how to solve The researchers here draw upon more general and
the problem but also that of what the problem fundamental sources to bring insight to the emerging
is, and the dialogue with practitioners helps knowledge landscape. This requires self-awareness
obtain a multitude of angles on the problematic and reflection on the part of the researcher (7). The
context. process is driven by a need for relevance in terms of
• Need for change: When the purpose of the actionability, which makes the knowledge valid in a
study is to trigger change in an industrial orga- pragmatic sense (32). Through participatory research
nization, the involvement of the actors who are methodology, i.e., clinical inquiry, the researchers,
to carry out or will be affected by the change is consultants, and practitioners create knowledge that
necessary in order to ensure its success. is both actionable and generalizable. The validity
• Institutionalization: Problematic contexts and relevance of this knowledge is measured in its

TRANSFORMATIVE BUSINESS STUDIES 541



Activities Outcome

Literature studies Identifying problematic context and potential solutions
Disseminated
Researchers’ role Publishing Verifying theoretical findings with academic community knowledge
theoretical



Participation in
projects as subject Pre-design of Identification of Implementation Input to problem
solution
challenges
solution
matter experts
Interface Knowledge production Diagnosis of Envisioning outcome Normative Transferrable
models
problems
knowledge


Consultant’s role Collaboration Initial design Solving challenges Implementation clients’/social
Solution
plan
development
Solution to
problems
Obtaining information, verifying results with the client
with the clients
Figure 1. Organization of a transformative business study and the role of researchers and consultants.

actionability. The fact that the solution works is proof structure of elements that influence and form the
in itself, and the more it works, the truer it is. problem at hand. One tool for understanding the
actor-network in any particular context is to identify
Actor-network Theory and Controversy Mapping and map the controversies and the combination of
The development of the design proposition for programs and anti-programs forming the contro-
a complex research problem can be equally depen- versies (14). The purpose of controversy mapping
dent on economic, social, technical, physical, and is to identify the arguments supporting and oppos-
political features, among other factors. To design a ing a system or a solution. Controversy mapping
solution, none of these critical issues can be left out helps us understand how the opposing arguments
because doing so might undermine the resilience (anti-program) and who holds them can be co-opted,
of the solution as such. The design proposition is countered, or eliminated and how the supporting
chosen based on the type of theory that is best appli- arguments (program) and who holds them can be
cable to the model. In case no applicable theory is strengthened. The front line of controversy demon-
available, the problem is approached inductively, strates whether the program or anti-program is
focusing on why the theories do not solve the prob- prevailing and how the alignment of forces changes
lem. Moreover, it is difficult to prescribe the success over time. As the issues are tackled iteratively, the
of developing a solution based upon one set of fac- controversy front line between the program (p) and
tors. At the point of transfer, the knowledge is part anti-program (ap) will shift (see Figure 2). In order
of a complex socio-technical actor-network, which to achieve a functioning solution, the researchers and
together forms the solution (12,35–37). consultants need to be able to enroll enough argu-
To fully understand the (social) requirements of ments (p) on their side, strengthen these arguments,
the solution, one needs to understand the complex and weaken and co-opt the opposing arguments (ap).

542 GUSTAFSSON & TSVETKOVA



associations between actors


substitution of actors controversy front line










e changing actor
network coalitions in e shiing actor
network coalitions in
favour of the programme the antiprogramme


Figure 2. Exemplary controversy mapping diagram.

Controversy mapping is one tool that, as we pro- sustainable investments and projects. Sustainability
pose, can be used for addressing the actor-network can be broadly understood as meeting the needs of
related to a solution developed within transformative our generation without compromising the ability of
business studies. It is deeply intertwined with the future generations to meet their needs (19).
other two cornerstones of the methodology we pro- In this format, research and consulting is done
pose in this paper because it aims at helping reach a hand in hand. Whereas the consultants can be
good and “implementable” design proposition while considered results-oriented general practitioners,
rooting it with the practitioners who are to imple- researchers participated in consulting projects as
ment, affect, or be affected by the solution. subject matter experts. As consulting projects are led
by consultants, it is the project manager who chooses
EXEMPLARY ECOSYSTEM DESIGN RESEARCH which researcher to engage in the project. Researchers
PROJECT and consultants also engage in a continuous dialogue,
The method for designing business ecosystems, with researchers querying the consultants as to how
used as an example of transferrable knowledge in this a certain phenomenon looks in practice and consul-
paper, was developed within a series of projects that, tants, for example, asking researchers to elaborate
we argue, were carried out as transformative business on a persistent phenomenon they have observed.
studies. The projects were organized as a collabora- Consultants also apply the concepts previously devel-
tion between academia (Åbo Akademi University) oped with the outcome fed back to research. Thus,
(17) and a research-based consultancy (PBI Research the collaboration between researchers and consul-
Institute) (18). tants is continuous and iterative in the PBI-ÅAU
PBI Research Institute (PBI) is a research-based arrangement.
management consulting company that collaborates The common feature of the projects that we use as
with Åbo Akademi University (ÅAU) to develop an example in this paper was the interest in business
new knowledge, which is then applied in practice. ecosystems in which the respective actors operate or
PBI focuses on industrial investments and projects could operate. Besides solving actor-specific prob-
especially in the transportation and energy sec- lems and producing respective research results,
tors. PBI strives to adopt, transform, create, and the main scientific outcome of the projects was the
implement new knowledge on how management method for designing business ecosystems. We argue
practices may be improved in order to enable more that the research mode and methodologies utilized

TRANSFORMATIVE BUSINESS STUDIES 543



during the research projects allowed us to develop are commercially available. Biogas is used to a large
and transfer research results for practical use despite extent in Sweden, especially for public transport,
the complexity and uncertainty associated with the waste handling, and in passenger cars. However,
design of business ecosystems. While part of the biogas was not used in transportation in Finland,
research results were case- and context-specific, the which is Sweden’s neighbor. Therefore, the goal of
method and mindset for developing business ecosys- the project was to establish biogas for transportation
tems were formulated on a more generic level so that in a municipality in Finland and then expand it to
the method could be applied in multiple contexts. As other parts of the country. The research studied the
will be demonstrated, the method was later applied challenges of green technologies with local economic
in other industrial contexts. It is important to note benefits and their adoption in Finland. In doing so,
that the application of the research results in practice the project team worked together with multiple actors
in other cases, i.e., the technology transfer, did not in the ecosystem (see Table 2).
stop the research process; the method for designing Throughout the process, the consultants tried to
business ecosystems was further developed, and new solve the problems with adopting biogas as traffic
aspects of the problem, as well as the solution, were fuel, while the researchers in the team were, at the
discovered. same time, making observations about what kinds of
Specifically, the series of projects related to the challenges the combined project team (researchers
usage of biogas in transport (20–24). Biogas is meth- and consultants) was facing.
ane that arises from anaerobic digestion of biomasses
such as sewage sludge, manure, household waste, THE APPLICATION OF METHODOLOGY FOR
or crops. Biogas can be produced as a by-product TRANSFORMATIVE BUSINESS STUDIES IN
of the sewage treatment process. Biogas is a locally THE EXEMPLARY PROJECT
produced renewable fuel that reduces local imports While no particular research question was ini-
of fuel and refines local waste into transport fuel. tially identified, the biogas-for-traffic project started
The technologies for using biogas in transportation with a general question: Why don’t green, potentially

Table 2: Ecosystem Actors Involved in the Exemplary Ecosystem Design Project
Role in the ecosystem Ecosystem actors
Biogas production and • Biogas producers
distribution • Biogas and natural gas distributors
• Other fuel distributing
Biomass supply • Farmers and their representatives
• Waste management companies (including wastewater treatment)
Biogas consumption • Fuel users (transportation, delivery, waste management companies)
Equipment supply and • Suppliers of gas-driven vehicles
maintenance • Equipment and facility suppliers (biogas treatment, distribution)
• Engineering companies
Policy-making • Various departments of focal municipality authorities (environmental, transport,
waste management), which represented the citizens
• Relevant state-level governmental and non-governmental authorities
Financing • Funding and investment organizations
Research and • Research organizations (research in farming, transportation, etc.)
benchmarking • Companies and municipalities that consume biogas in Sweden (for benchmarking
and experience sharing purposes)

544 GUSTAFSSON & TSVETKOVA



sustainable technologies such as biogas production problem or deduced from theory but can only be
from waste and by-products of different industries get informed by problem specification and theory. Thus,
traction in the market, and, particularly, in the Finn- theories in this case serve as instruments to explore
ish transportation sector? The specific interest was in the problematic context and devise means to change
understanding how an enabling business ecosystem it (32).
could be formed. The choice was between studying The incorporation of DSR into the research meth-
existing ecosystems retrospectively and inducing odology for transformative business studies was the
how they were created or participating in actually first step for ensuring that the knowledge produced
creating them. The main reason for choosing DSR at ÅAU is actionable at PBI and for its customers.
over historic, explanatory, or descriptive research To achieve the relevance of the study, the bio-
was the need for producing prescriptive, actionable gas-for-traffic projects relied on a clinical inquiry.
knowledge, i.e., knowledge on how to tackle problems For this, both researchers from ÅAU and consultants
generated from the process of tackling the problems from PBI were involved in the project. In certain
and recording both successes and failures. More- cases, the same people acted both as researchers and
over, existing retrospective studies on the successful consultants, but the roles and responsibilities differed
development of industrial eco-parks shed light on accordingly. Importantly, the consultants’ role was to
the success stories but were deeply rooted in local maintain an ongoing dialogue with the practitioners
contexts (27–30). In practice, most of these eco-parks in order to diagnose the research problem and ensure
appeared spontaneously (27,31), and thus the moti- the practical relevance of the produced solutions to
vations and fine details of their development could this problem.
be missed or simply forgotten when the descriptive Following the process presented earlier in Figure
research about their organizational evolution was 1, the responsibility of researchers was to provide
undertaken. theoretical insights while diagnosing the problem
In the focal case, initially no concrete problem, and developing solutions together with the consul-
such as lack of political will or lack of technological tants, thereby acting as subject matter experts. In
innovation, could be pinpointed as a reason for strug- the focal case, their role was to bring the existing
gles with developing a biogas-for-traffic solution in body of knowledge about business ecosystems and
the country. The answer for the question could not biogas-for-traffic business into the research process.
be found from prior studies because the question The consultants, on the other hand, were responsible
was yet unknown. The problem needed to be found for developing the working solution that would solve
‘on-site’, which justified the need for the researchers the clients’ problems related to using biogas as traf-
to be part of the team of consultants developing a new fic fuel. For that, consultants built a direct interface
ecosystem in order to identify pitfalls and hindrances with the clients through actively involving them in
as they occurred in real time. the project meetings, interviews, and workshops.
Another reason for choosing the DSR approach This was necessary both for obtaining the first-hand
was its emphasis on a creative leap between knowl- information about the challenges and possibilities in
edge that is generated in exploratory and explanatory the biogas-for-traffic business and ensuring that the
science and a design proposition (2). The develop- produced knowledge is useful for solving the clients’
ment of a design proposition is not based on the problems.
causality discovered in ‘pure’ science (A causes B; The interface between the research and consul-
therefore, do A if you want to reach B) but rather is tancy was the actual knowledge production achieved
based on pragmatic ‘reasonableness’ of a solution (C through joint project participation. While the con-
is the problematic context, and D is a design proposal sultants verified the actionability and usefulness of
based on the vision of an ideal target outcome O; if the produced knowledge with the practitioners, the
D overcomes problem C and leads to O, then it is researchers’ responsibility was to verify the academic
a good solution). A proper solution to a complex merits of this knowledge, i.e., its originality and ability
and ill-defined problem cannot be induced from a to be applied in other contexts. This allowed them to

TRANSFORMATIVE BUSINESS STUDIES 545



achieve both actionability and transferability of the stabilize the context and control the anti-programs
produced knowledge. that might have hindered the solution. Stabilizing
To provide an example of how the knowledge here means making sure that there are no uncon-
produced had both practical and theoretical merits, trolled issues that may introduce uncertainties that
during the research within the biogas-for-traffic case, could make the entire solution collapse.
it appeared that the scope of local delivery trucks In the biogas-for-traffic case, it meant, for exam-
needed to be redefined. Local delivery trucks are ple, engaging farmers in order to be able to ensure
usually bought primarily as a unit, not a lifecycle reliable raw material supply for biogas production
solution, since diesel is a homogenous, abundantly (p). Although initially waste management companies
available product, and there are many competing were considered as the main biomass suppliers (p),
service centers. A biogas-driven truck would be analysis showed this raw material flow would not be
dependent on a single supplier with uncertain ser- sufficient to scale up (ap). This was a problem. For the
vice support. To address this issue, it was decided that solution to be economically sustainable, it had to be
biogas delivery trucks would be offered including scalable (ap). Therefore, an additional source of raw
lifecycle service support and fuel. Customers would material had to be found that could meet anticipated
pay a certain price per kilometer and would not be demand. Such raw materials can be grown (p), but
exposed to fluctuations in the fuel price. This was doing so would displace cash crops, thus driving up
possible because biogas production and price was costs to unsustainable levels (ap). The solution to
not strongly influenced by fluctuations in the oil this was found by growing biogas-appropriate crops
price. The offer was limited to customers who signed simultaneously (p) with the traditional cash crops
up for leasing large enough fleets of biogas-driven (p). While these new crops would not have normally
trucks for a long enough time. It was also allowed been considered valuable, they would bring revenues
to organize pooling among customers to aggregate in this case (p) and could be grown without reduc-
demand. Ensuring a large-enough fleet, in turn, was ing cash crop acreage (p), thereby reducing the cost
a prerequisite for the truck provider to invest in the pressure on farmers. This action would also improve
local service center. In this example, the generated the soil composition and thus support the main cash
context-specific knowledge included the under- crop (p).
standing that, in Finland, a total package including As parts of the solution became actionable, they
the vehicles, their servicing, and fuel would be most were ‘blackboxed’ as plausible actors. Figure 3 shows
attractive for involving various truck operators in the blackboxed sub-systems, or modules, of the bio-
the biogas-for-traffic ecosystem. More generalized gas-for-traffic case. For example, module 3 ‘Biogas
knowledge, which could be transferred to new con- for truck operators’ can be separated from module
texts, included the solution mindset, which aims at 4 ‘Biogas for car users’ because the two modules are
tackling potential customers’ uncertainty related to functionally different. Trucks are high capital expen-
the introduction of new technology to the market. ditures (CAPEX), consume large amounts of fuel,
Finally, controversy mapping was used as a tool for and are purchased based on a business-investment
stabilizing the actor-network related to the business calculation. Module 2 differs from trucks in the sense
ecosystem in focus. Since the problem of enabling that the municipality has a very strong say since the
biogas-for-traffic business was complex, ill-defined, investment is based on municipal tendering of bus
and multi-variate, one strength (p) could easily be services. Plausibility does not mean this was the best
countered by a weakness (ap) in another dimension. or ultimate solution, only that it was good enough
For the solution to function, it had to be viable, and under the circumstances in this context. At the same
it had to work economically, environmentally, and time, those actors that were unresolved were taken
socially; otherwise, it would face opposition wherever apart in order to address the parts of the problem
it fell short. This meant the boundaries of the solution and thereby strengthen the program and enroll new
were not static. As new knowledge and problems actors to counter the anti-program.
emerged, new arguments were needed in order to

546 GUSTAFSSON & TSVETKOVA



5. Biomass from farming to biogas 2. Biogas for public transportation

biogas Bus City
Animal manure operators
farm

digestate
Crop Biogas producer biogas Truck users Vehicle
farm and distributor dealers
green biomass
digestate 3. Biogas for truck operators
sludge
Wastewater City biogas Leasing
treatment parks Car users company
1. Sewage sludge to biogas 4. Biogas for car users

Figure 3. Blackboxed subsystems (modules) in the target ecosystem.
One example of taking a problem apart and black- research process. The actual end-point of the research
boxing its elements was the question of what kind is reached when all the key parts of the system have
of pricing mechanism would be suitable for biogas been stabilized to the point that the practitioners
sales. To facilitate the investment in biogas produc- are able to proceed by taking action according to
tion and distribution infrastructure, the pricing logic the knowledge generated (11,38,39). Therefore, the
was of crucial importance. Low prices would be good outcome of transformative business studies is both
to lure customers (p) but would make scaling up knowledge and actual change that can be generalized
and getting financing for the investment more diffi- from the specific case (7,38).
cult (ap). The solution was to divide customers into
different categories. Big customers that committed TRANSFERABILITY OF RESEARCH RESULTS
early to the biogas-for-traffic ecosystem would get The biogas-for-traffic projects resulted in specific
long-term contracts with fixed (inflation indexed) recommendations as to how the municipality, in col-
prices. This was motivated since the customers were laboration with the key stakeholders, should proceed.
taking a CAPEX risk (ap) by committing to technol-
ogy that was more expensive (ap) and with unclear This result is context-specific and thus cannot be eas-
second-hand value (ap). It was possible since biogas ily replicated. The projects also resulted in a generic
production was not exposed to variations in the oil academic model for how complex business ecosys-
price (p). For small customers, the price would be tems could be mapped and redesigned alongside the
allowed to vary more in line with oil prices (petrol practical, context-specific knowledge. It consists of
and diesel), which would provide a healthy margin the following sequence of specific steps:
(p). Table 3 shows the characteristics of subsystem 3: 1. Structure the business ecosystem according to
the current business logic of each actor, the risks and functional modules (Figure 3)
uncertainties related to joining the biogas-for-traffic 2. Establish collaboration between the modules
ecosystem, and the change in business model needed with incentivizing mechanisms
for each specific actor. The integrator, in this case the 3. Enable scaling of the ecosystem through rep-
biogas producer and distributor, is a special actor that lication based on modularity
integrates all the other actors into the ecosystem. 4. Integrate the functional modules with the help
Thus, actionable knowledge is not generated of boundary-spanning business models that
only as the ultimate outcome. It is constantly pro- build on the incentives in the adjacent modules
duced (and sometimes overturned) throughout the