When you’re thinking about creating prior art to block competitors, you usually think about your company’s own patent applications. However, you can’t file a patent application on everything unless you have an infinite budget. You could also write an academic paper, but that still requires significant effort and may not be appropriate for ongoing software development. Defensive publications can fill the gap between a patent application and an academic paper. These defensive publications can impede competitors without the cost of a patent application or the time commitment of an academic paper. Elizabeth and Nathaniel were joined by Sabrina Chang, Senior Patent Counsel at Google, to talk about Google’s defensive publication program. Sabrina explained how the program was built, how AI can be used to keep costs down, and how the program helps recognize innovation across the company.

Evaluating software development for potential patent protection can seem more difficult than for hardware or manufacturing methods.  There are lots of reasons for this, but one may be the cultural hesitancy among software developers to pursue patent protection.  Software developers are used to sharing, collaboration, and moving quickly.  They don’t tend to think of their work as an invention.  That’s why our guest Karl Barnfather suggests orienting your review around innovation instead of invention.  Karl shared his experiences with Elizabeth and Nathaniel on this episode, including engaging with developers and overcoming their propensity to say “this was trivial” or “this didn’t take very long.”  Incentive schemes, training, and adding a publication option can all help increase the flow of disclosures and provide more options for protection.

Much of a company’s innovation is based on its talent.  If you look at recent news, the semiconductor industry needs more talented people.  But life disruptions can derail a promising student from being an engineer, scientist, or technician in the semiconductor industry.  Scholarships won’t cover things like needing new tires for your car, covering the cost of a funeral of a family member, or other emergencies.  A huge percentage of promising students can’t absorb costs like that, which puts a dream of working in the industry out of reach.  It also removes that individual’s future innovation contribution from the future talent pool.  Elizabeth and Nathaniel were joined by Ruthe Farmer, Founder and CEO at Last Mile Education Fund, which closes critical gaps in funding and career support for financially vulnerable college students who are in the “last mile” to graduation in high-demand STEM fields.  An alumnus of the fund, Aburva GS, also shared her personal experiences about how the fund kept her on track to graduation and enabled her to stay in the semiconductor industry.

Approximately 86% of high-tech IP litigation involves a non-practicing entity. Unfortunately, challenging the NPEs forces companies to make a decision: why should my company pay the costs of a challenge when my competitors benefit? Enter Unified Patents, which helps members deter invalid or unsubstantiated patent assertions. Elizabeth and Nathaniel were joined by Sasha Sokhis from Unified Patents to learn more about the Unified Patents organization, how it helps members, and recent trends in IP disputes.  Sasha also discussed their patent reexamination and licensing strategies.

The United States is one of the largest non-European filers at the European Patent Office, with around a quarter of its total applications in 2024. That means semiconductor companies need to consider European patent rules and procedures as part of their filing strategy. On this episode, Elizabeth and Nathaniel were joined by Phil Sanger from Grey Wolf IP in the United Kingdom to learn about some issues in European patent practice that come up when trying to coordinate prosecution from the US. First, they discussed the standard for obviousness, including the number of references that can be cited in Europe, starting from the closest prior art reference, and the importance of technical effects. Then they discussed Europe’s (dreaded) intermediate generalization and strategies to avoid adding undesired features in a claim amendment. Drafting the specification in a way that the desired feature is optional or is not necessarily only linked to other features can help in this situation, but that requires activity well before the patent application is filed in Europe.

Companies from across tech industries have been carefully watching Europe’s Unitary Patent system since its 2023 launch.  A Unitary Patent offers simplicity and reduces the administrative burden for applicants.  You manage one patent, pay one renewal fee, and have one legal system to deal with.  You also can obtain a single injunction across 18 European countries.  However, there is a risk.  A competitor can invalidate your Unitary Patent in a single action.  Now that we have nearly 22,500 patents requested and over 940 cases already filed in court, Elizabeth and Nathaniel were joined by Paul Keane and David Keane, both European patent attorneys at FRKelly in Ireland, to understand recent trends and potential strategies to implement the Unitary Patent system in a company’s global patent portfolio.

Things at the USPTO are slowing down. Patent pendency, or the time from filing a patent application to substantive examination, is increasing based on the USPTO’s own statistics. The USPTO has reduced its staff, including the elimination of an entire regional office. The USPTO is also eliminating telework, which many patent practitioners fear will further reduce headcount and lead to further delays. As delays increase, what can patent owners do to efficiently pursue patent protection on next-generation technology? Nathaniel and Elizabeth welcomed John DiMaio, a patent attorney at Hodgson Russ, back for another episode to discuss the USPTO programs that are still available. John explained the process and benefits of Patent Prosecution Highway, petitions to make special, and Track One.

The threat of an infringement lawsuit is never far from the mind of an in-house attorney in the semiconductor industry. After all, companies in the semiconductor industry are known for extensive patent portfolios. Recent plaintiff demands and verdicts have been huge. Enhanced damages for willful infringement (i.e., treble damages and attorney fees) are enough to bankrupt some. Opinion letters from counsel are allegedly the cure for these risks, but they won’t automatically save you. Opinion letters need to be soundly written and management needs to be comfortable with the conclusions. Nathaniel and Elizabeth were joined by Scott Alter and John Trembath to talk about opinion letters. Scott and John also discussed IPRs and how they can be used effectively in litigation.

Spares and consumables are a huge part of the price for any piece of semiconductor capital equipment.  They can also be difficult to protect.  Knock-offs are common, which reduces revenue for tool manufacturers and potentially causes reliability problems.  Michaël De Vroey from European law firm Simont Braun joined Nathaniel Lucek and Elizabeth Morris to share the European perspective on design protection for consumable parts.  Manufacturers can protect consumables in Europe with design rights.  Michaël discussed the factors that are examined, including the impact of functionality on a consumable’s shape, the visibility requirement, and how a consumable is integrated into a tool.  Michaël also discussed the enforcement of design rights in Europe and the “repair clause” in the new EU Design Regulation and Directive.

There has been a lot of press about the 2022 CHIPS and Science Act, which was designed to revitalize the US semiconductor industry.  Not surprisingly, other parts of the world also want to fund domestic semiconductor production.  Demonstrating that global objective, we learn more about the European Chips Act on this episode.  Europe recognized the strategic importance of the semiconductor industry and its supply chain resilience. 

Elizabeth and Nathaniel spoke with Aida Kaloci from Cresco, a Belgian-based business law firm, to learn more about how the EU version differs from the US version.  Aida explained how funds are mobilized, the impact on environmental reviews, and how state aid can be used for production facilities.  Aida also shared European IP strategies for protecting chip designs.