The Semi Interesting Podcast with Nathaniel Lucek and Elizabeth Morris

Increasing Diversity in Innovation with The Diversity Pledge

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.

Using Australian Expedited Examination to Accelerate Your Global Patent Portfolio

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.

What Legal Teams in the Semiconductor Industry Can Learn from Barbie

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.

AI Trends: A (non-GPT) Chat with OpenAI

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: A Threat to Your Company’s Trade Secrets

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.

Litigation Finance: Impact to the Semiconductor Space

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.

Patent Trolls in the World of Semiconductors

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.

Changes to Filing US Patent Applications: The USPTO’s DOCX Program

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.

IMEC: How Did Belgium End Up as a Semiconductor Research Powerhouse?

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.

Another Option to Protect Spares: Design Patents for Consumable Parts

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.