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 [small cities? Something no semi-related?]. 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.

Patent Assertion Entities (PAEs), or patent trolls, seem to be lurking everywhere.  The semiconductor industry is not immune from their threats.  Yet the semiconductor industry also helps fuel their threat through patent transfers.  Patents from companies both big and small end up in the hands of PAES, which perpetuates the problem across industries.  Enter LOT Network, a group that helps its members gain immunity from PAE threats when a PAE acquires a patent from a member.  In this episode, Elizabeth and Nathaniel learned about how LOT Network is growing in the semiconductor space from Lew Zaretzki at LOT Network and Sam Wiley at Ocean Tomo.  Elizabeth also shared her perspective as a member of LOT Network.

There have been countless articles about how trade secrets can lose protection if they are used to train artificial intelligence.  But what about some of the other impacts that AI may have on trade secrets as AI becomes more prevalent.  For example, what happens to the value of your trade secret if AI can approximate it?  Trade secrets must derive value from their secrecy, so this means a trade secret may be less valuable, right?  The value of a trade secret can be affected by other particulars like marketing, but can that save your IP protection?  Nathaniel Lucek and Elizabeth Morris were joined by Steven Balcof to explore these and other impacts on trade secrets (with some delicious baking examples).

Thanks to the CHIPS Act and other global pressures, there is a surge of new semiconductor fabrication plants popping up across the United States. While that’s encouraging news for the industry, it also presents some challenges for human resources departments. Aside from simply filling the available jobs, teams are also faced with numerous other challenges once the hiring bonanza at a new facility begins. Nathaniel and Elizabeth are joined by Andy Drilling, a senior associate at Hodgson Russ LLP who focuses on labor and employment law. Andy outlines some of the obstacles human resources teams face when filling positions at new fabs, including relocation concerns, non-solicit and non-compete clauses, and familiarity with local and state laws and regulations.

Regardless of the type of business or industry, employers understand that employees may encounter confidential information that should be handled carefully. That is especially true when trade secrets are involved, in which case, protecting sensitive and confidential information is of paramount importance.   It’s easy to label something as confidential, but in order to successfully uphold that designation, employers must have a strong policy in place. Nathaniel and Elizabeth are joined by Luisa Bostick, a labor and employment attorney and partner at Hodgson Russ LLP. She discusses some of the best practices toward implementing a strong confidentiality policy, takes a look at the role human resources plays in implementation and enforcement, and looks at the impact a lack of policy could have on potential partners or buyers of the business.

We’ve made great strides increasing diversity in innovation. This is essential to a company’s success.  Yet, some groups as still underrepresented in the intellectual property process. That’s where the Diversity Pledge comes in. The Diversity Pledge helps companies better understand their strengths and weaknesses as they try to improve their statistics through best practices. The companies also share their progress, which helps refine the best practices. For example, experience shows changing terminology from “inventor” to “innovator” will net more participation from groups that may not consider themselves as inventors or that don’t usually participate in the process. In another example, making invention disclosure submission more accessible (preferably with feedback) has a strong impact to the number of invention disclosures that are submitted. Nathaniel and Elizabeth were joined by Suzanne Harrison, Chair of the Patent Public Advisory Committee at the USPTO, and Frances Winkler, Manager of IP Operations & Innovation Programs at Pure Storage, to explore some of the findings and learn how the Diversity Pledge was implemented at Pure Storage.

Australia is a big country (a continent, in fact), but it’s position in the global semiconductor market is not nearly as large.  Even though the Australian semiconductor industry is small, nestled in the country’s unique patent examination system is a pathway to accelerate examination of your global patent portfolio.  Expedited examination in Australia is free and can be requested in many situations.  It also can result in a granted patent in less than one year from the request.  Elizabeth and Nathaniel are joined on this episode by Paul Davis and Fraser Smith from Davis IP to discuss how a positive result down under can then be used to accelerate patent examination in other jurisdictions.  They also talked about how navigate Australia’s acceptance window during patent examination and some upcoming changes to the fee structure for Australian patent applications.

While the knockoff concerns and “packaging” are a little different, the underlying legal problems are surprisingly similar between the semiconductor and toy industries. Both have extremely complex supply chains. Knockoffs in either space can lead to costly reliability and quality problems. For both, IP is one of the most valuable assets and represents thousands of hours of development and market research.    Nathaniel and Elizabeth were joined by Jordan Walbesser, Director of Legal & Business Affairs at Mattel, Inc., to learn more about how the toy industry approaches these issues. They talked about a more friendly approach to licensing, working upstream in the supply chain, RFPs, and how to protect products when patent protection isn’t appropriate (or isn’t possible). On the last point, Jordan explained that product quality and customer service can protect you when patent protection is limited – whether that cost-sensitive customer is a parent shopping for an upcoming birthday or a massive multinational company.

Companies can’t escape AI.  It’s in the news.  It’s being added to existing software products we use.  It’s being pitched to solve all sorts of problems.  AI seems like it will play a big role in R&D, legal, HR, and other fields, but how will it be implemented?  What should companies be doing during adoption and testing?  What are the risks?  Rather than ask ChatGPT, Elizabeth Morris and Nathaniel Lucek spoke with Ashley Pantuliano, Deputy General Counsel at OpenAI.  Ashley admitted that are still legal grey areas with AI usage, but these grey areas keep changing.  Tech fluency and updated policies can help avoid pitfalls in this ever-evolving area of law.

Board members and consultants receive lots of high-value information from your company to do their job.  They also can work with more than one company, so that amount of high-value information is multiplied.  Not surprisingly, that makes them very attractive as a target for hackers and criminals.  But you must carefully balance cybersecurity protection against making large changes to their software environment because these people are difficult to find.  You certainly don’t want to turn them off, but you also don’t want them receiving trade secrets at their personal email address.  Elizabeth and Nathaniel are joined by Charlotte Edwards from Cyberwolf in this episode to discuss this balance and security options for board members and consultants.

Cost can be a limiting factor (or even THE limiting factor) when considering a patent infringement lawsuit. Staying under a million dollars in legal spending can be considered a victory of sorts for complex matters. That is a huge impediment to small companies and entrepreneurs. On this episode, we explore an alternative that may help level the playing field across high-tech industries: litigation funding. Nathaniel Lucek and Elizabeth Morris are joined by Justin Maleson from Longford Capital to discuss how litigation funding works and what makes an interesting case for a litigation funder.

Business executives and patent practitioners tend to have similar negative feelings around patent trolls and their letters offering to license sometimes dubious IP. These patent troll entities tend to file a large volume of nuisance lawsuits, which increases legal costs for companies. No industry is immune and these lawsuits impact companies at all levels of semiconductor manufacturing. But besides their ultimate goal of making money using their collection of patents, how do these patent trolls operate? Where do they find their targets? And, most importantly, what should you do when you receive a letter from a patent troll? Nathaniel and Elizabeth are joined on this episode by Pat Muffo, who is a patent attorney and IP litigator. Pat shares his insights and experiences gained from studying, writing about, and battling with patent trolls.

The process to file US patent applications online has been almost the same for the past 10-15 years. That filing process finally changed in January 2024 when the USPTO started requiring new U.S. nonprovisional patent applications be uploaded as DOCX files to avoid a surcharge. The DOCX requirement, which was postponed repeatedly, caused an uproar in certain corners of the U.S. IP world. But what does the DOCX requirement cover and what will the impact be? Nathaniel and Elizabeth are joined by John DiMaio, a patent attorney at Hodgson Russ, to figure out if this new requirement harms applicant rights or if the risks are exaggerated.

Belgium is known for many products: chocolate, beer, waffles, and many others.  Folks in the semiconductor industry also recognize that it is a leader in semiconductor research.  But why is that?  How did such a small country position itself to have an outsized role in this industry?  To answer these questions, Nathaniel Lucek and Elizabeth Morris were joined by John Baekelmans, a former VP at IMEC and currently Science and Technology Counselor at Flanders Investment and Trade.  John shared the history of IMEC, including the bold decision by the government to build IMEC. We also explored how IMEC fits into the local research ecosystem and some of its current research focuses.

The spares business is an essential revenue stream for semiconductor capital equipment manufacturers. While these components typically are not easy to protect with a utility patent application, many of them are ideal for design patent protection. Nathaniel Lucek and Elizabeth Morris were joined by Charles Rauch, head of the design patent practice at Hodgson Russ LLP, to talk about the benefits of design patent protection. Charlie explained how design patents can be used to protect components like graphite shields or end effector components. Charlie also explained how design patents are enforced against third party manufacturers.

Applications for artificial intelligence at work seem boundless. AI could even write this episode summary (it didn’t, but maybe it should have). However, using AI carries risks to intellectual property protection, confidentiality, and bias. Look no further than the chip manufacturer that shared confidential information with ChatGPT to find a fix. On this episode, Nathaniel Lucek and Elizabeth Morris spoke with Hodgson Russ LLP attorney Rosellen Marohn about these risks and policies that companies can use to avoid problems. It’s probably no surprise that a single AI policy can’t be used for all parts of a business. Companies need to determine how AI will be used across the company and then develop specific policies with employee training about acceptable use. Here are links to various articles or topics mentioned in the podcast: What is AI? Samsung Barbie Spot the AI Generated Image Quiz

Project management and team building are vital when running an in-house legal team. Sadly, those are not skills that are tested on the bar exam. In this episode, Nathaniel and Elizabeth are joined by Sean Blixseth, Managing Senior Counsel at Panasonic to learn about best practices when inserting legal into a product team. They discussed the importance of living in the business, embracing project management, and borrowing engineering tools to optimize your legal function – including the idea of hack-a-thons for streamlined legal procedures.