Protect Your Intellectual Property (Author's Original)
You need to know the types of protection available to protect your intellectual property.
Kevin Klughart, Ph.D, P.E., Contributing Technical Editor -- Test & Measurement World, 7/1/1999
Like it or not, the modern engineer is now responsible for much more of the commercial success of a product than in years past. This trend traditionally has taken the form of tighter production, manufacturing, and testing deadlines. However, the current trend in the electronics industry is to thrust the engineer into the uncharted waters of documenting and promoting the protection of intellectual property (IP) associated with a given product line. By ‘intellectual property’ we mean intangible legal rights which may be protected by patents, copyrights, trademarks, and trade secrets.
Unfortunately, while we all know that engineering schedules tend to slip based on factors with which the engineering and development community have no control, the deadlines associated with many forms of intellectual property protection are rigid and in some cases harsh if not properly observed. One need only look to the recent Supreme Court decision in Pfaff v. Wells Electronics in which upheld a 1997 Federal Circuit decision which invalidated the patent on a burnin socket because the inventor Wayne Pfaff waited too long to file his patent application. In this particular instance Pfaff hadn’t even built a working version of the socket prior to his offer to sell it, yet the Court stated that the mere fact that the socket was ready for patenting was sufficient to start a one-year window in which the inventor could pursue a patent. While this decision may seem harsh, it underscores the fact that the ability to adequately protect a given piece of intellectual property is more than ever dependent on rapid execution of the proper legal formalities.
Given these harsh time constraints, why is it important to expend energy to obtain IP protection for your products? This may be best answered by a statement from Bill Becker, IP counsel for 3Com, who stated recently that
"A couple of years ago the company started to realize the industry was maturing and IP was becoming very important in the hi-tech industries --- even in those areas of technology that were emerging. We started receiving a few patent claims coming in against us and realized that to be a player, to be successful, we needed to grow our IP assets, to harvest them properly and to utilize them properly. We believe that our IP assets will be a very key factor in our success."
Thus, the major players in the electronics industry realize that to be successful in this business requires that IP be cultivated and harvested in parallel with the technical advances generated by the research and development staff. What most people in the electronics industry do not realize is the rate at which this harvesting is occurring. As illustrated in Figure , the growth in semiconductor and electronics-related patents processed and issued by the United States Patent and Trademark Office (USPTO) has been nothing short of explosive in the past decade. This is in contrast to the generally linear growth trend in general patent applications illustrated in Figure .
Figure 1: Semiconductor/Electronics Related USPTO Patent Issue History
Figure 2: USPTO Composite Patent Application/Issue History []
As alluded to by Bill Becker’s quote above, IP protection is being sought both in traditional hi-tech industries but also in emerging markets. Nowhere is this more evident than in the area of software related and Internet-specific patents. Figure illustrates this growth trend. Like it or not, the USPTO has been given the mandate by the Supreme Court to permit software related patents, even if directed to methods of doing business. This dictates that engineers be conscious of this trend when identifying the IP which may be mined within a given product line. What is significant in this analysis for many engineers is the fact that growth trends in some industries (such as the Internet) may be linked to other technology areas that involve more traditional ‘hard’ engineering. Such a linkage is present in the growth trends in data compression patents as illustrated in Figure . Here the growth in multimedia and Internet related patents has a direct correlation to areas ancilliary to the focus of the applied technology.
Figure 3: Growth Trends in Internet/Multimedia U.S. Patent Issues
Figure 4: Growth Trends in Data Compression U.S. Patent Issues
The IP Food Chain
To this point we have spoken in general terms about IP protection. It is helpful to view IP protection in terms analogous to the ‘Food Pyramid’ that we were all taught in grade school. As illustrated in Figure , the typical food pyramid model involves at its base fruits and vegetables, followed at a higher level by dairy products, meat, and legumes, and at its peak by fats, oils, and sweets. As we escelate up the pyramid the quantity of the food should diminish as the energy content decreases correspondingly. The same is true for IP protection.
Figure 5: Comparison of Food Pyramid and IP Protection Pyramid
Trade Secrets
At its base, the IP protection pyramid would comprise trade secret law. Trade secrets are defined by state law and generally include any
"information including a formula, pattern, cimpilation, program, device, method, technique or process that derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy." []
While trade secrets provide broad protection, they are also severely limited in that the information must in fact be secret and there must be some active means taken by the owner to preserve this secrecy. While this has some application in the electronics industry, it is inherently weak protection given the migratory employment patterns of most engineers throughout their careers.
Copyrights
A copyright owner has the exclusive right with respect to the copyrighted work of (a) reproduction, (b) preparation of derivative works, (c) distribution of copies, (d) performance of the work publically, and (e) public display of the work. The rights given to a copyright owner attach on creation or ‘fixation’ of the work in a tangible medium. While the rights to a copyright in a work attach from the creation of the work, the right to sue requires that the copyright be registered first. []
The major flaw in copyright protection as applied to the electronics industry is the prohibition provided in the copyright statute that provides
"In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, metho of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." []
Unfortunately, this exclusion removes from consideration most of the functional aspects of electrical devices which are most susceptable to replication or theft. Thus, while copyright protection may be appropriate for the expression of ideas such as PLD/FPGA source code, schematics, program listings, etc., it is inappropriate to protect the ideas that these entities embody.
Mask Works
Given the restriction on protection of the ideas embodied in a work by the copyright statutes, the protection of integrated circuit layout was (in the absence of patent protection) not protectable under the copyright statute. The Semiconductor Chip Protection Act of 1984 (SCPA) [] codified at 17 U.S.C. §§ 901-914 (1988) was an attempt by Congress to thwart what was then perceived as widespread duplication of U.S. semiconductor mask designs [] by foreign semiconductor companies. [] These foreign manufacturers had manufacturing capacity and process technology comparable to U.S. semiconductor firms, but at the time lacked much of the IC design talent and ancillary CAD/CAE software tools to compete effectively with U.S. firms. [] The gist of the legislation is a mechanism whereby protection is afforded to the actual photolithographic mask layout of a semiconductor IC, much akin to copyright protection which may be afforded a PCB layout artwork.
While the SCPA form of intellectual property protection for the semiconductor industry has been widely panned by engineers as ineffective, [] there are definite areas in which this legislation can have dramatic positive benefits to the overall protection afforded an IC, especially considering the relatively low cost of registration. [] As evidenced by the graph in Figure 6, registration of mask works has been relatively constant since the SCPA inception in 1985. This fact gives credence to the theory that while engineers may grouse about the incomplete nature of the SCPA's protection, they nonetheless consider it a viable IP protection tool in the semiconductor arts.
Again, one must consider the IP protection afforded an IC as a 'mesh' of individual components which together provide a framework of protection greater than each individual protective element alone. Given the SCPA's track record inside and outside the courts, one must conclude that there is still life in this legislation and it does indeed have real application in everyday semiconductor IP practice. []
Figure 6: USPTO Mask Work Registration History []
Trademarks
Trademarks are used within our economy to protect consumers from confusion regarding the source, quality, or origin of goods or services. The right given a trademark owner to exclude others who might use marks which tend to confuse the public is a right which is acquired by use of the mark to which protection is sought. Within the context of the electronics industry this exclusionary right occupies an important commercial marketing position as compared to the use of copyrights or trade secrets. Here, as compared to copyright protection, a similar deceptive or misleading use of a mark may be actionable. Copyrights protect only direct copying of an original artistic work, wereas trademark protection can extend to names, symbols, or other indicia of source or quality.
Unfortunately, most engineers in the electronics industry fail to recognize that the exclusionary rights given a trademark may be just the distinction necessary to push a product to the forefront of the marketplace. Furthermore, in comparison to other forms of intellectual property protection, the formalities of obtaining federal trademark registration are quite minimal.
Patents
Patent represent the top of the IP food pyramid, in that they provide for a right of exclusion to prohibit the sale, offer for sale, manufacture, import, or use of a device which is covered by the patent without the permission of the patent holder. While this exclusionary right may be narrowly tailored by the claims in the patent, the goal in any properly written patent is to stake out as broad an area of product coverage as possible. Key to this is a properly written technical description (disclosure) of the invention.
While the role of traditional ‘inventions’ has continued to grow at an unprecedented rate in the electronics industry in the last decade, it must be stated here that to a large extent this growth has been fueled by explosive increases in software-related patents. The allowance of patents in the software field in combination with the high penetration of software in the electronics industry has resulted in a far greater emphasis on this form of IP protection for strategic engineering assets in a given product line. For example, the myriad of special test functions, test methodologies, and failure analysis systems on which all of the electronics industry depends are driven by software. In many cases these systems are crucial to the economic viability of a product line. As such, these resources should be protected by patents, as the use of trade secrets and copyrights are ineffective and/or inappropriate in these areas. Unfortunately, one must assume that there are no ‘secrets’ in the electronics industry. Therefore, patent protection should be a key feature of any engineering product development program.
Many people complain about the cost of the patenting process. While these arguments in many cases are valid, it is important to remember with patents as with test equipment, you generally get what you pay for. Carefully written technical disclosures and well drafted claims require both technical and legal competence. Unfortunately, this combination is lacking in most patent practitioners. In general it is easier to provide a technically competent engineer the skills to draft his own patent applications than it is to being a patent attorney up to speed on the technology being patented. Unfortunately, most members of the patent bar do not see this as a problem. Therefore, it behooves engineers to become familiar with the patenting process and educate themselves on the requirements for a well written technical disclosure.
Application to the Electronics Industry
While the Food Pyramid analogy is useful in understanding the relationship between the various types of IP protection available to the electrical engineer, it doesn’t answer the question as to what forms apply to a given situation or product. While there are some texts that have been written to target individual inventors [] or engineers [] in their pursuit of patents and other forms of IP protection, there is very little available to tell the average engineer where he/she should be looking to protect potentially valuable IP resources. Figure 7 illustrates some of the various areas in which IP protection may be applied to the protection of a system comprising an integrated circuit.
As can be seen from this diagram, the range of protections runs the gamit from the actual circuit design to the manufacturing process used to generate the IC die, to the methods used to test the IC on the test floor. What is clear from this diagram is that moreso than in most industries, the electronics industry requires an integrated approach to IP protection. Gone are the days in which a product or market segment could be protected using a single patent, copyright, trademark, or trade secret. Today’s markets require that a mesh of protection be afforded to a given product to provide it with meaningful protection in a competitive marketplace.
Figure 7: Intellectual Property Framework Surrounding IC Development []
An example may be in order here. Note that in Figure 7 there is a specific mention of patenting both the circuit design and the target application. Consider the case in which the circuit design is protected by a strong patent but there is no broader application patent covering the intended use of the IC. Here, it is possible for third parties to subsequently patent the applications in which the IC may be useful, thus limiting the effective market for the IC by demanding royalties from customers of the IC foundry. While this scenario seems somewhat far fetched, I have personally seen this exact chain of events significantly constrict the market for some IC products in which the IC was protected, but the target applications were not.
Given the importance of protecting the IP in a given product line using a mesh of protection methodologies, it is useful to generate IP checklists for each stage of product development. While the nature of the electronics industry is such that these lists cannot be considered exhaustive, they do provide a basis on which to start the IP analysis. For example a typical IP checklist for IC testing and reliability is listed in Table 1. While testing and reliability issues are typically the last ones to be addressed by both design and manufacturing, they are in many cases so critical that failure to properly execute them can mean the death of an entire product line. This statement can be especially true in integrated sensor markets, where the test apparatus to ensure proper functioning of the fabricated IC can be quite elaborate and expensive, and quickly gobble up the profit margin in a device because of excessive test time and cost of developing custom test apparatus.
Table 1: Test/Reliability IP Checklist
| Item/Contact to be Checked | Patent Classification | Specialty Area | Registration Type | ||||||
| Design Patent | Utility Patent | Process Patent | Chemical Materials | Electrical Software Math | Mech. | | | | |
| Special test mode software | ü | ü | ü | ü | ü | ||||
| Special test mode circuitry | ü | ü | |||||||
| User mode test interface | ü | ü | ü | ü | ü | ||||
| Special handler | ü | ü | ü | ü | |||||
| Sensor stimulation | ü | ü | ü | ü | |||||
| Supervoltages/undervoltages | ü | ü | |||||||
| Test mode protocols | ü | ü | ü | ||||||
| Self-test features | ü | ü | ü | ||||||
| Self-calibration | ü | ü | ü | ||||||
| Calibration procedures | ü | ü | ü | ||||||
| Burnin exercise modes/circuitry | ü | ü | ü | ü | |||||
| Radiation hardening | ü | ü | ü | ü | |||||
| ESD protection | ü | ü | ü | ||||||
| EEPROM reliability/lifetime testing | ü | ü | |||||||
| Oxide pinhole degradation | ü | ü | ü | ||||||
| Custom test instrumentation | ü | ü | ü | ||||||
While Table 1 is intended to provide only a flavor of the types of issues that may become important in the test and reliability areas, the astute IP engineer will ferret out the test engineer for an IC being designed to determine what special test modes are being incorporated to aid the final test process. In many cases these test modes have the very practical aspect of making the part economically viable from a test time perspective. Individuals outside the semiconductor industry often forget that millions of dollars are often invested to provide for the test equipment necessary to properly test an IC after it has been manufactured and packaged. Unless the test time on a given die is reduced to an acceptable level, the IC cannot be economically sold to the customer, no matter how small the die is or how easy it is to manufacture. If the test time is excessive, all the profit margin may be consumed on the test floor. Finding test modes that reduce test time can enable some ICs to withstand attacks by competitors since they will be unable to use the proprietary testing methodology required to economically manufacture the IC.
Bridging the IP Technology Gap
This article has concentrated on providing information to the practicing engineer to enable him/her to address the IP issues within a product development cycle. Unfortunately, this integration of IP issues into the engineering task list is in part due to the fact that most patent practitioners are woefully inadequate technically to address these issues. It is a sad fact that most of the patent attorneys/agents and in fact many of the lawyers performing IP work have little or no engineering experience and a technical foundation which is inadequate to work with today’s emerging technologies. For this reason, as engineers it is important to ensure that you partner with a patent practitioner that is technically competent. Most clients do not realize that they will never know a patent was well written until it is challanged, which occurs only in a small percentage of cases. So, the best way to hedge your bets and ensure that your patent is in fact worth more than the paper it is written on is to check the technical and legal credentials of your IP legal counsel. A good rule of thumb is that if the person you are dealing with has credentials which are insufficient to permit you to hire him as an engineer, he/she probably is not the best person to address your IP protection needs.
Conclusion
In summary, the engineer of today is in the enviable position of being at the forefront of technology and simultaneously being more responsibility for the IP protection of the products which are the product of his/her intellectual efforts. While in the past engineers have shunned much of the sales/marketing areas connected with the product development cycle, the area of promoting the IP protection of a product line is one in which engineers can directly contribute to the bottom line by ensuring that once a product is developed it is adequately protected from copying by competitors. This additional responsibility represents both a challenge and an opportunity to expand the intellectual frontiers of engineers.
The Author
Kevin Mark Klughart
is a Patent Agent registered to practice before the United State Patent and Trademark Office and a Registered Professional Engineer licensed in four states. He received his BSEE from MIT and MSEE/PhD from Texas A&M University. He currently splits his time between mixed signal design duties as an independent consultant and writing patent applications as The Patent EngineerÔ . Prior to this Dr. Klughart was a staff mixed signal IC design engineer at Dallas Semiconductor where he worked in the Precision Circuits group on realtime clock products and is a named inventor on three patents. He may be reached via e-mail at PatentEngineer@mediaone.net or via telephone at (800) 353-1211.
