Invention Protection: Patently Obvious or Patently Absurd?

The long-established trade association EDA Consortium (EDAC) has started several new initiatives to extend its membership to IP suppliers and to offer more value to its members through new programs. New EDAC Director Bob Smith has a bunch of innovative ideas and I have little doubt that they will breathe new life into the organization. I had the pleasure of working with Bob when he did some consulting for Breker several years ago, and he’s a true professional.

Last week I attended the first in a series of legal-themed events sponsored by EDAC. I expected that the title “Patents and Patent Litigation: Develop, Strengthen, and Protect Your Intellectual Property” would draw well, and indeed the conference room at SEMI Global Headquarters in San Jose was packed. I won’t attempt to cover the wide range of topics addressed, but I would like to hit a few highlights from the panel discussion and the excellent questions from the moderator and the audience.

The evening opened with a welcome from San Jose Mayor Sam Liccardo, who talked about the critical partnership between the city and its high-tech businesses. He was followed by John Cabeca, Director of the Silicon Valley United States Patent and Trademark Office that opened a few weeks ago in San Jose’s City Hall. He praised Silicon Valley for its high rate of innovation and invention, stressing that patent protection is a key for receiving value from these investments.

Most of the time was spent with a panel of three IP attorneys–Karna Nisewaner from Cadence, Robert Sachs from Fenwick & West, and John Vandenberg of Klarquist Sparkman–moderated by another IP attorney, Salumeh Loesch (also from Klarquist Sparkman). John Cabeca also joined the panel when some questions related to the Patent and Trademark office arose. All the panelists were clearly experts in their field but managed to be entertaining as well as enlightening.

So what did we learn? Here are a few of the key points I scribbled down on my agenda:

• Understand that a patent is rarely a “pot of gold”
  • The main value of patents is defensive
• Don’t litigate unless you have to
  • The process is slow and expensive
  • You run the risk of negative PR
  • You run the risk of countersuits
• File as early as possible
• Be aggressive with claims
• File internationally only when necessary
  • There are no reciprocity agreements between countries
  • Each filing is expensive

One topic that surfaced several times was whether engineers should look at existing patents. We heard several somewhat contradictory opinions from the panel, but my take-away was that it’s OK for engineers to review patents along with publications when learning about a new area. However, Ms. Nisewaner argued strongly that engineers should not waste time looking for existing patents when working on their own disclosures; they should leave that to the attorneys.

Perhaps it was obvious to the other attendees, but the most interesting discussion for me was on the multiple levels of innovation driven by the patent process. Of course, the ability to obtain a patent is a motivation to invest in IP and inventions. For other companies in similar fields, the existence of the patent drives them to innovate in different directions, possibly coming up with entirely new solutions to the same problems. Alternatively, they could develop extensions that build on the patent, opening the possibility of cross-licensing with the original patent holder.

The most entertaining discussions surrounded patent issues specific to EDA. The irrepressible  journalist Peggy Aycinena drew some chuckles when her questions revealed that Mr. Sachs and his firm have represented Synopsys and that Mr. Vandenberg represents Mentor Graphics, two points not mentioned in their introductions. No one else in EDA writes quite like Peggy, and you can  read her version of the evening elsewhere on EDACafe.

I think that Peggy’s report blurs together multiple categories of patent holders. A company  manufacturing a product protected by a patent and filing or threatening a lawsuit against another company infringing on its patent is not a “patent troll” but is using the system as it was intended. Of course, there are examples of patent suits within EDA and elsewhere not nearly so clear-cut. Our industry was dubbed “very litigious” by the panelists, no surprise for anyone who’s followed our history.

I found the evening both fun and informative. The audience was highly engaged, asking questions that could easily have continued for another hour or more. I congratulate Bob and EDAC for this successful event and look forward to more in the future.

Tom A.

The truth is out there … sometimes it’s in a blog.

Tags: Accellera, Breker, Cadence, EDA, EDAC, Liccardo, mentor, patents, San Jose, standards, Synopsys, Trek, TrekApp, TrekSoC, USPTO

This entry was posted on Tuesday, November 3rd, 2015 at 5:08 pm. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.