The Semi Interesting Podcast with Nathaniel Lucek and Elizabeth Morris

Fighting the Slowdown at the USPTO

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.

Everything You Wanted to Know on Opinions for IP Litigation

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.

Protecting Consumables with Design Protection in Europe

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.

The “Other” CHIPS Act: Exploring the European Chips Act

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.

Standing Together Against Patent Assertion Entities: LOT Network

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.

AI’s Impact on Trade Secrets

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).

Hiring Challenges for New Semiconductor Fabs

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.

Implementing a Trade Secret Policy

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.

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.