Intellectual Property and Usability Testing

26 Jul 2005 - 1:36pm
9 years ago
12 replies
784 reads
Richard Zobarich
2004

Hi,

May I have your advice please? I would like to explore issues surrounding Intellectual Property and Usability Testing.

I am currently providing User Experience Research and Design services for a start-up in Winnipeg, Manitoba, Canada. Time after time, we revisit the notion of Intellectual Property (IP) and Usability Testing. For example, does IP exist before Usability Testing or not? If so, who owns the IP? The dynamic is very interesting because it includes executive stakeholders from university, industry, and government, all coming together to wage wins over the venture and "ideally" hammer out a solid business plan. Design by United Nations? Good times!

Anyway, here are some issues I would like to work through:

1. An executive of Technology Transfer at the University asserts that there needs to be IP from usability testing in the form of "know-how", that can be licensed "before" usability services are administered. In fact, the executive is so very convinced that the venture will fail without any ad hoc, licensed IP. Part of the reasoning is that a lack of IP will result in a failure to attract sufficient start-up capital and credibility. Naturally, the executive is attempting to protect the interests of both the university and university researchers. What are your thoughts?

2. In the flavour of Monty Python's Quest for the Holy Grail: Executives from industry fart in the general direction of the Technology Transfer Executive. They see no clear definition of IP from usability testing that can be licensed "before" usability testing services are administered. So, whilst vacationing atop ivory towers, executives catapult cows and chickens at each other. Time passes ever so slowly between cycles of engagement, perhaps because cows are becomming scarce in Canada now that the borders are open again. Oh, the drama! Much to my surprise though, I do not hear the sound of coconuts banging together into the sunset. Indeed, a spark remains to bridge the gaps between university, industry, and government. Yet still, the Executives pass the buck and loiter above the trenches, waiting for a Champion to save the day. Who will that Champion be? Will the drama continue? You might ask, "What fruit will the swallow bear?" Well, that depends on what kind of swallow w

e're taking about now, doesn't it? If we're talking about a European Swallow ... Pardon me. I just sacked those that were responsible for sacking me.

Side B - Do Japanese subtitles to Monty Python make sense?

3. Running along now: A few researchers from the University of silly walks, also believe that no IP exists before usability testing. So...

Great, a majority exists but at the end of the day, the Technology Transfer Executive needs a hard-nosed win for the University with respect to the licensing of IP around usability testing. One of the goals of this venture is to tune a community of innovators with great user experience research and design. I believe that in order to meet this end, all parties need to come down from the clouds, ante-up, and truly "interact" with each other from ground zero. That which will arise from the synergy will be above and beyond what can be accomplished alone. OK! Much easier said than done.

So, please let me know: How would you create synergy and make forward progress in these trenches? A moment please, while I put in my mouth guard.

%)

For more context, check out :: http://www.umanitoba.ca/research/smartpark/ ::

Thank you for your consideration.

Richard Zobarich
204.480.1041

Comments

26 Jul 2005 - 2:03pm
Todd Warfel
2003

Don't you have to have something to perform usability testing on
(paper or interactive)? By that definition, if something exists, you
could argue there's IP (Intellectual Property). Perhaps there's
something more complicated that I'm missing.

On Jul 26, 2005, at 2:36 PM, Richard Zobarich wrote:

> For example, does IP exist before Usability Testing or not?

Cheers!

Todd R. Warfel
Design & Usability Specialist
--------------------------------------
Contact Info
Email: twarfel at mac.com
AIM: twarfel at mac.com
Blog: http://toddwarfel.com
--------------------------------------

26 Jul 2005 - 2:32pm
Doris Lamontagne
2005

Since you are located in Canada, I would recommend that you consult with the Canadian Intellectual property Office. here is their web site:
http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_main-e.html

Intellectual properties laws can vary between countries and continents. However, before administrating any usability testing, you should always have your subjects sign a non-disclosure/confidentiality form. This might give some protection to your intellectual property rights. However, an intellectual property lawyer will be the best advisor on the matter.

Doris Lamontagne
Interaction designer
Ottawa

Richard Zobarich <rzobarich at shaw.ca> wrote:
[Please voluntarily trim replies to include only relevant quoted material.]

Hi,

May I have your advice please? I would like to explore issues surrounding Intellectual Property and Usability Testing.

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26 Jul 2005 - 4:06pm
Richard Zobarich
2004

Thank you for your responses.

Todd Warfel wrote {

Don't you have to have something to perform usability testing on (paper or interactive)?

}

I think that IP arises from usability testing but does not precede it with greater value. Usability standards come to mind. However, I am struggling to see the benefits [to a company] of abstracting the technique of usability testing to capture IP beforehand. It seems to me a little like trying to license the scientific method. Does it make sense to have a standard way of doing usability tests? Well, yes to a certain extent. Could a company license a variation of the ISO definition of usability as a proprietary platinum standard? Sure but I fail to see the value in it because usability testing "depends" in part on (a) specified users, trying to (b) accomplish specified goals, with (c) a particular product, in (d) a particular context. So, usability standards are of much higher value after the testing has occurred. Now, who would own usability standards gained from testing?

Doris Lamontagne wrote {

However, an intellectual property lawyer will be the best advisor on the matter.

}

There are N camps of intellectual property lawyers. One camp serves university interests, another serves industry, and yet another serves government interests. Curious. I wonder what kind of response I would get if I contacted the Canadian Intellectual Property Office of Canada and asked for a referral to someone with expertise in usability and ip? ;)

Sincerely,

Richard Zobarich

26 Jul 2005 - 4:44pm
Todd Warfel
2003

This is the part I'm struggling with. Perhaps I'm not clear on what
you're asking.

Is the company stating that there's IP in the product you're testing,
or that there's IP in the method you're using to do the usability
testing? If the later, you're probably going to run into problems
with a little thing called "prior work." Unless you come up with an
entirely new method of usability testing.

What am I missing?

On Jul 26, 2005, at 5:06 PM, Richard Zobarich wrote:

> However, I am struggling to see the benefits [to a company] of
> abstracting the technique of usability testing to capture IP
> beforehand.

Cheers!

Todd R. Warfel
Design & Usability Specialist
--------------------------------------
Contact Info
Email: twarfel at mac.com
AIM: twarfel at mac.com
Blog: http://toddwarfel.com
--------------------------------------

26 Jul 2005 - 6:34pm
Richard Zobarich
2004

Todd Warfel wrote:

> This is the part I'm struggling with. Perhaps I'm not clear on what
> you're asking.
>
> Is the company stating that there's IP in the product you're testing,
> or that there's IP in the method you're using to do the usability
> testing? If the later, you're probably going to run into problems with
> a little thing called "prior work." Unless you come up with an
> entirely new method of usability testing.
>
> What am I missing?

Perhaps I wasn't clear. An influential person is trying to assert the
latter, in the interest of securing University "know how (to do
usability testing)"; assuming the "know how" exists only in University
Land. Others argue that there is no University know how to license,
period. For example, I know how to conduct Usability Tests and I am not
a University Researcher. Are you suggesting that if University
Researchers have an "entirely" new way of doing usability tests, that
they might be able to license the methodology as IP? Could you
elaborate on what you mean by "an entirely new method of usability
testing"?

Also, could you elaborate on "prior work" and how that might correspond
to IP?

Thank again.
Richard
204.480.1041

26 Jul 2005 - 6:57pm
Donna Maurer
2003

I know that every country has a different approach to IP, but I'd think that most of us
can't claim IP over pre-existing methods. There is *so* much material about usability
testing that already exists that it would be reasonably rare to have IP on the technique.

That said, I did come up with a new method of testing that I wrote up for boxes and
arrows a couple of years ago:
http://www.boxesandarrows.com//archives/card-based_classification_evaluation.php

I would own the IP for this as I developed the technique and it is quite different to other
usability methods.

Conversely, Todd and I wrote an article about card sorting for B&A:
http://www.boxesandarrows.com/archives/card_sorting_a_definitive_guide.php

We don't own any IP for the card sorting technique as it was pre-existing and we just
summarised it. We do have some claim over copyright of the article, but not the
technique.

Do you guys have to apply for some sort of licence for IP? In Australia, IP is like
copyright - it comes into being at the time of creation, and ownership of it is usually
written into a contract or employment agreement.

Donna

On 26 Jul 2005 at 18:34, Zobarich, Richard M. wrote:

> [Please voluntarily trim replies to include only relevant quoted
> material.]
>
> Todd Warfel wrote:
>
> Perhaps I wasn't clear. An influential person is trying to assert the
> latter, in the interest of securing University "know how (to do
> usability testing)"; assuming the "know how" exists only in University
> Land. Others argue that there is no University know how to license,
> period. For example, I know how to conduct Usability Tests and I am
> not a University Researcher. Are you suggesting that if University
> Researchers have an "entirely" new way of doing usability tests, that
> they might be able to license the methodology as IP? Could you
> elaborate on what you mean by "an entirely new method of usability
> testing"?
>
> Also, could you elaborate on "prior work" and how that might
> correspond to IP?
>
--
Donna Maurer
Maadmob Interaction Design

e: donna at maadmob.net
work: http://maadmob.com.au/
blog: http://maadmob.net/donna/blog/
AOL IM: maadmob

26 Jul 2005 - 7:19pm
Todd Warfel
2003

This basically summarizes "prior-work." If the work already exists
(e.g. card sorting), then you cannot obtain a patent for IP. However,
if it's a new technique, method, product (e.g. card based
classification), then you can obtain a patent for IP.

On Jul 26, 2005, at 7:57 PM, Donna Maurer wrote:

> That said, I did come up with a new method of testing that I wrote
> up for boxes and
> arrows a couple of years ago:
> http://www.boxesandarrows.com//archives/card-
> based_classification_evaluation.php
>
> I would own the IP for this as I developed the technique and it is
> quite different to other
> usability methods.
>
> Conversely, Todd and I wrote an article about card sorting for B&A:
> http://www.boxesandarrows.com/archives/
> card_sorting_a_definitive_guide.php
>
> We don't own any IP for the card sorting technique as it was pre-
> existing and we just
> summarised it. We do have some claim over copyright of the article,
> but not the
> technique.

Cheers!

Todd R. Warfel
Partner, Design & Usability Specialist
Messagefirst | making products & services easier to use
--------------------------------------
Contact Info
Voice: (607) 339-9640
Email: twarfel at mac.com
AIM: twarfel at mac.com
Blog: http://toddwarfel.com
--------------------------------------
Problems are just opportunities for success.

27 Jul 2005 - 11:25am
Nick Ragouzis
2004

Richard,

I do hope that you are using this exercise as a motivator
to look for, and structure a way to develop and capture,
then capitalize on, such intellectual property.

Assuming your organization can solve the challenge of
defining/implementing the protections in promotion, and in
work process and products, I suggest these considerations:

FIRST: on the capture ... you are probably working with folks
who have an idea about the type of work that is targeted for
harvest, and the costs and efforts associated.

It is important to make this explicit in your efforts, not
just assumed in the background. The reason is both complex
and simple. Simple because most IP is not a significant-enough
innovation and goes unnoticed, undeveloped, or unprotected
within the required time and parameters. Complex because this
question (what's targeted?) entirely controls what's worth
doing something about and what types of protection are
appropriate, at every stage ... and even the control of
what work/IP the team may use as a basis for future work,
and the teams that can visit other orgs, engage in NDAs,
work with customers, etc.

Another way to ask the question on capture: How much will you
invest in investigation and development of emerging ideas, and
control of their use and dissemination?

This is the challenge in Donna Maurer's 'quite different' method:
unless she'd developed it further, claimed a specific innovation
over know[n/able] methods and met such a test, documented it, and
claimed protection, all within legislated and regulated time (wrt
epoch Apr '03, at the latest) and requirements, she only owns the
'IP' of/on the copyrights on her own expression of the idea, maybe
also related to marks, but not the idea itself. But even if all
that were so, her own further/future improvements, or reduction
to specific practice, would/could have a special standing in
future claims for protection.

In other words, If you want to harvest IP you'd better be serious
about it, and being serious about it can have great effects on
instigating such innovation, and on its use in your practice.

SECOND: Yes, absolutely, there is IP latent in the methods of
studying usability. To assume otherwise just doesn't credit the
work we all depend on. Whether it's possible to develop IP of
significance on one's own ... well that depends greatly on the
resources and perspectives you can engage while advancing that
protected work. And the matters addressed in "FIRST." But if
you've got those issues aligned, then press on and make it your
mission.

THIRD: There *is* a further interesting aspect here. Yes, I do
think there is an aspect of (call it) product-related innovation
available to your effort (or something like your effort, if one
wanted to go that way).

This has to do with the simple nature of the work (and blatantly
clear failing of current methods, q.v. "SECOND"): most usability
assessments only find problems of the type the organization
knows how to write reports for. That is, reporting styles and
methods are determinant. A simple example is the huge error in
card sorting, when the test prohibits an "other" pile: this is
an intervention in the test -- motivated by the difficulties
in making clear the meaning of those 'discards' (It has no
other statistical or methodological credibility, except in
as much as the those conducting the test hope, at that stage,
that the pile will be small or have only so-called low-value
categories. This would be so even should one have a further
metric of 'fitness' for assignments otherwise made.)

The upshot here is that your organization may wish to
fully develop solutions to particular problems, and the
(non-prejudicial) means to judge the need/efficacy for such
solutions in a random implementation under test. Such IP might
extend from the detection/methods and related metrics, but here
I'm talking mostly about after that stage when the eligibility
is clear: IP that enables your organization to assess the solution
paths, to recommend particular design steps/work, and to offer
particular technology to assist in that (either the design work,
or the solutions).

One domain that will readily come to mind is the mobile arena.
Other domains are those with high/special safety or response
requirements. But we can see that such innovation is possible in
less complex domains, from prosaic enterprise systems to mundane
'statics'. In all of these cases your organization would advance
itself as the org. to come to once one has some clue that the
domain of the difficulties in a product lie in the area of your
expertise -and- they need your testing/reporting/whatever
expertise to determine the true extent of the challenge/need
-and- they're ready to license protected IP solutions.

I underscore that these (in this "THIRD" consideration) would
be innovations in design processes (making a distinction from
innovations in usability methods) or innovations in design
solutions (from particular designs, to, say, widgets or
software algorithms that you'll only license after conducting
usability under contract in your labs).

- - - - -

The overriding question remains, tho': What is your team'
business?

For most folks offering their usability services to the marketplace,
apparently the balance is struck towards sharing IP in usability
methods (with perhaps a limited set of innovations held close) ...
even using the sharing as part of promoting the usability testing
business. In this model, targets for competition and innovation are
in efficiencies, potential for marshalling resources (or costs of
such), reporting, speed of (of effectiveness in) take-up of new
innovations, levels of specialization by domains of some market-
relevant distinction, promotion, etc.

One might conclude that because of diffusion effects, few folks
having innovations of the types in "SECOND" or "THIRD" actually
offer their usability services to the marketplace. They offer
the marketplace other innovations (e.g., teaching enterprises to
do testing, offering widgets as solutions to particular problems,
etc.) And I would guess this is a much more efficient way of
working ... but maybe your organization's mission really is
served by doing it in some other mix.

In any case: don't give up, especially since you have the rare
case of someone actually asking the questions ... maybe you can
actually do something interesting! Something unexpected.

--Nick

> Todd Warfel wrote:
>
> > Is the company stating that there's IP in the product you're testing,
> > or that there's IP in the method you're using to do the usability
> > testing? If the later, you're probably going to run into problems with
> > a little thing called "prior work." Unless you come up with an
> > entirely new method of usability testing.
> >
> > What am I missing?
>
> Perhaps I wasn't clear. An influential person is trying to assert the
> latter, in the interest of securing University "know how (to do
> usability testing)"; assuming the "know how" exists only in
> University Land. Others argue that there is no University know how to
> license, period. For example, I know how to conduct Usability Tests
> and I am not a University Researcher. Are you suggesting that if
> University Researchers have an "entirely" new way of doing usability
> tests, that they might be able to license the methodology as IP?
> Could you elaborate on what you mean by "an entirely new method
> of usability testing"?
>
> Also, could you elaborate on "prior work" and how that might
> correspond to IP?
>
> Thank again.
> Richard
> 204.480.1041

27 Jul 2005 - 2:40pm
Richard Zobarich
2004

Thanks again to all who responded.

Todd Warfel wrote {

This basically summarizes "prior-work." If the work already exists (e.g. card sorting), then you cannot obtain a patent for IP. However, if it's a new technique, method, product (e.g. card based classification), then you can obtain a patent for IP.

}

Ok.

Donna Maurer wrote {

There is *so* much material about usability testing that already exists that it would be reasonably rare to have IP on the technique.

}

I agree.

Donna Maurer wrote {

http://www.boxesandarrows.com//archives/card-based_classification_evaluation.php I would own the IP for this as I developed the technique and it is quite different to other usability methods.

}

Great use of a card-based technique to measure the usability of a classification outside of its implementation. The way I see it then, is that IP might be established on the basis of developing and focusing "a unique blend of techniques" on measuring the usability of "a particular product", which in your case was the classification.

What value is there for you in owning IP for the card-based classification technique? Hypothetically, what if you developed your technique over the course of many years and fine-tuned it while pursuing your Ph.D. in Human Factors? Would you or the University ultimately own what is rightfully yours? In my circle, an influential person might say that your IP is needed for the company to succeed but the University owns that IP, not you. How would you respond?

Donna Maurer wrote {

Do you guys have to apply for some sort of license for IP?

}

There are too many unknowns at this time to give a meaningful answer.

Bernie Monette wrote {

So in broad strokes: you provide the item to be tested, we perform the test: who owns the results? Do you share them? Does your client own them exclusively? Or (more preferred) do they remain yours that you have licensed to your client for their private review.

}

Yes ... and contract agreements and nondisclosures will take care of the company vs. client IP. We wish to use Usability Testing as a means of establishing ground zero. Then we would like to steer clients towards innovative design solutions, among other things. However, we seem to be struggling over who owns the internal IP. Should the company as an entity own the IP? This makes kind of sense if the IP is a result of an equal collaboration between university researchers and non university researchers. However, I see complications similar to those I posed to Donna.

<A hypothetical scenario>

What if Donna had been developing her technique over the course of many years only to fine-tune her approach at Company X, with very minimal direction from others involved at Company X. Then perhaps Company X decides to claim ownership over the technique as IP licensed to clients. Should Donna not be entitled to the IP? What could Donna do to protect herself? Would she simply be bullied into submission? More importantly, does anyone care enough about Donna in the Trenches or is she simply an asset?

<End of Hypothetical Scenario>

Nick Ragousis wrote {

I do hope that you are using this exercise as a motivator to look for, and structure a way to develop and capture, then capitalize on, such intellectual property.

}

Yes but I fear that I'm losing too much sleep over the matter.

Nick Ragousis wrote {

FIRST. Another way to ask the question on capture: How much will you invest in investigation and development of emerging ideas, and control of their use and dissemination?... In other words, If you want to harvest IP you'd better be serious about it, and being serious about it can have great effects on instigating such innovation, and on its use in your practice.

}

I agree. I'm aiming (open to revision) to spend a reasonable amount of energy on harvesting IP, acknowledging that one must make sacrifices for the greater good of innovation and its dissemination. My problem is with those that claim ownership through exploitation. It would be great to arm the Donna's of the world.

Nick Ragousis wrote {

SECOND. Whether it's possible to develop IP of significance on one's own ... well that depends greatly on the resources and perspectives you can engage while advancing that protected work. And the matters addressed in "FIRST."

}

Great. I expect even less sleep while being part of establishing an open yet secure model of innovation within a bubble.

Nick Ragousis wrote {

SECOND. Whether it's possible to develop IP of significance on one's own ... well that depends greatly on the resources and perspectives you can engage while advancing that protected work. And the matters addressed in "FIRST."

}

Usability testing helped me burst bubbles. Now we are blowing a better bubble but old habits die hard - IP is inhaling again and is trying to steal the show.

Nick Ragousis wrote {

I underscore that these (in this "THIRD" consideration) would be innovations in design processes (making a distinction from innovations in usability methods) or innovations in design solutions (from particular designs, to, say, widgets or software algorithms that you'll only license after conducting usability under contract in your labs).

The overriding question remains, tho': What is your team' business?

}

To build innovative ...

Nick Ragousis wrote {

IP that enables your organization to assess the solution paths, to recommend particular design steps/work, and to offer particular technology to assist in that (either the design work, or the solutions).

}

Hopefully something interesting and unexpected will come from this. Time to capitalize.

Sincerely,
Richard

27 Jul 2005 - 5:14pm
Donna Maurer
2003

Just a couple of comments. Please note that I only know a little about this, having
talked to my lawyer about it recently (heading off potential problems with an ex-
employer) and my understanding is based on Australian law, which could be quite
different.

On 27 Jul 2005 at 14:40, Richard Zobarich wrote:

> What value is there for you in owning IP for the card-based
> classification technique? Hypothetically, what if you developed your
> technique over the course of many years and fine-tuned it while
> pursuing your Ph.D. in Human Factors? Would you or the University
> ultimately own what is rightfully yours? In my circle, an influential
> person might say that your IP is needed for the company to succeed but
> the University owns that IP, not you. How would you respond?

The value, if I wished to do so, would be in having this as a special technique and
using it as a differentiator when bidding for projects, then making money from the
technique during projects. I don't do that (and never intended to - this was just an
example) - I put it in the public domain so other people can use the technique.

I'd guess that if you developed a technique while pursuing your PhD through a
particular university, they would certainly have claim over the IP - they have provided
the means for the IP to have been developed. You may have even signed something
to that effect.

> <A hypothetical scenario>
>
> What if Donna had been developing her technique over the course of
> many years only to fine-tune her approach at Company X, with very
> minimal direction from others involved at Company X. Then perhaps
> Company X decides to claim ownership over the technique as IP licensed
> to clients. Should Donna not be entitled to the IP? What could Donna
> do to protect herself? Would she simply be bullied into submission?
> More importantly, does anyone care enough about Donna in the Trenches
> or is she simply an asset?
>
> <End of Hypothetical Scenario>

All I would have to do is show that the IP existed before I worked for company X, or
was already available in the public domain.

If I had developed the technique while working for a range of employers, not
personally, it would be messy. Most employment contracts here assign all IP that is
developed during the employment term, to the employer. Most project contracts also
assign IP to the client. When someone else is paying me, I own very little. That's just
how it is.

Donna
--
Donna Maurer
Maadmob Interaction Design

e: donna at maadmob.net
work: http://maadmob.com.au/
blog: http://maadmob.net/donna/blog/
AOL IM: maadmob

27 Jul 2005 - 6:17pm
Todd Warfel
2003

This is pretty standard. When I've done internal consulting for
companies, they claim the IP. I know Cornell is the same way -
anything you develop that can be defined as related to your job is
own by Cornell, regardless of whether you develop it during work
hours or not (if you're a salaried employee).

This became an issue with a friend of mine who is a photographer and
in charge of one of Cornell's lab's for digital video. They claimed
that any photo he took during his employment there would be owned by
them, as it was linked to work that would be defined by his job. This
was a huge issue, as he's had some photos in very prominent magazines
and receives royalties from them.

Cornell also tried to lay claim to anything he developed prior to
coming to Cornell as well, which would entitle them to photos he's
currently receiving royalties for. But I don't think this last one
held up.

On Jul 27, 2005, at 6:14 PM, Donna Maurer wrote:

> Most employment contracts here assign all IP that is
> developed during the employment term, to the employer.

Cheers!

Todd R. Warfel
Design & Usability Specialist
--------------------------------------
Contact Info
Email: twarfel at mac.com
AIM: twarfel at mac.com
Blog: http://toddwarfel.com
--------------------------------------

28 Jul 2005 - 2:29pm
Richard Zobarich
2004

Bernie Monette wrote{

Ivan Hoffman http://www.ivanhoffman.com/ has written extensively on these sorts of issues and you might want to visit his site.

}

Great stuff here. Thanks.

Richard

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