real life IP, technology and patent reviews
Discussions around the innovation economy and Intellectual Property (IP) are trending and ongoing. In Canada the discussion usually touches on a shift to intangible assets; to an economy based on what is in our minds, rather than what is in the ground.
Some talk about “innovative IP strategy”; some want to fund “IP-rich” companies and others want the government to buy patents as some sort of national asset. Many talk about the need for more government policy. Economists, bankers, advocacy groups, politicians and journalists all seem to be involved and have the mic. Unfortunately, much of the discussion strikes as theoretical or philosophical. It seems removed from real-life IP.
I want to shine light on one aspect of real-life IP; the patent review.
Large semiconductor companies own some of the biggest patent portfolios. Integrated circuits a.k.a chips are ripe with IP. There are patents around the circuits, the structures, the processes used to fabricate these structures, and the packages encasing the chips. It goes on and on, at many different “levels”of the industry. One of these corporations may have 10’s of thousands of enforceable or “live” patents.
Within these live patents there may be 50 or so that are actively licensed. This number will vary over time as patents die and technology evolves. How do these companies determine if a given patent has value? Can a given patent become part of the licensing portfolio? There are both legal and technology considerations to the answer. I will focus on the technology.
start with technology
A patent provides legal protection for an aspect of technology as defined by the Claims. A patent becomes of interest as a possible addition to the licensing portfolio when the Claimed technology is used, or might be used in the future, in industry. On the other side, it is of less interest, or may even be allowed to lapse, if industry has moved in a different direction than what is taught and Claimed by the patent. Thus, it all starts with the technology.
patent reviews – what, who and how?
I will venture to call the semiconductor companies “big players” in the patent world. They have large portfolios, experienced in-house counsel and plenty of resources. They know what they are doing.
the scenario – One of these big players wants to review 500 patents. They are looking for patents that were missed or overlooked, and might be “gems”, and patents that might be abandoned, to cut maintenance costs.
what – Reviews focus on the technology outlined in the patent and how one might find it. Is the technology being used today? Might it be used in the future? Are there other ways of solving the problem? How old is the technology? Have you seen the technology in chips? Then there is the question of support or Evidence of Use (EoU). Can the technology be detected? What tools or techniques are needed?
an example – Since I have process experience I will present a fictitious example from this side of the semiconductor world. A key part of all chips is the gate dielectric. It provides insulation between two conductive parts of a transistor, assuring the desired current flow. The patent in question presents an oxide dielectric in a planar geometry, which are both older structures. The inventor found that implanting hydrogen in a sub-2 nm thick layer of oxide would improve its properties. The Claims refer to both a maximum thickness of 2 nm and the presence of hydrogen. One Claim also refers to the location of hydrogen within the oxide crystal structure, even though this layer will almost certainly be amorphous.
Can one find EoU? Can the patent be supported? A 2 nm oxide is easily visible with Transmission Electron Microscopy (TEM). However, it becomes a bit fuzzy when defining the layer boundaries and measuring thickness. There will be uncertainty at this scale, but I would say one could make this measurement.
On the other hand, the hydrogen will be difficult. Standard element detection techniques within a TEM such as EDX and EELS can not detect hydrogen. There may be very specific chemical analysis techniques out there, but they would have difficulty with a 2 nm layer of a specific structure. In the end, this part of the EoU becomes difficult.
If I knew many talked about this technology or approach for gate dielectrics in the literature, I might suggest indirect literature support. But, direct support would “likely prove difficult”.
who – The big players turn to technology people for this work. A team of Ph.D’s, M.Eng, or experienced B.Eng or B.Sci are tasked here. The reviewers have patent experience and have the background and technical experience to go in and assess the technology. Remember, a patent presents and protects an aspect of technology, so it seems natural that such technical people are tasked with assessing the value of a patent.
how – Team members are given a spreadsheet with the patents for review. For each review they summarize the technology in a few sentences, discuss how it might be supported and rate the patent. The kicker; they have ONE hour for each review. There are tricks to the trade, so to speak, but time is tight. Full speed is anywhere up to eight patents per day. With each one being different, it is important to clear your mind before the next review.
The voices in the IP discussion are diverse, and yes there are many aspects to patent practice and policy. Here, I wanted to shine light on one aspect of patent work that is a key element of portfolio maintenance for big players. Canada seems to forget the role of technology and those that possess this knowledge. There are many that call themselves or are identified as patent experts. Oddly, the technical people doing this work never make the list of experts. Time will tell if Canada can step up its game and recognize the role technology plays in patents.