Protect Your Intellectual Property

Even people in the electronics industry may not realize how much companies rely on IP. But a quick look at the number of patents issued by the US Patent and Trademark Office (USPTO)  (www.uspto.gov) in the areas of semiconductors and electronics shows rapid growth in the past decade (Fig. 1).

Engineers need to think more about how they can help protect IP by using one or more legal means—patents, copyrights, trademarks, or trade secrets. Each type of protection offers its own advantages and disadvantages. To start, you can think of the range of protection as forming a pyramid (Fig. 2).

Figure 2. The intellectual-property protection “pyramid” illustrates the levels of protection from the lowest—trade secrets—to the highest—patents.

At its base, the IP protection pyramid rests on trade-secret law. The Uniform Trade Secrets Act defines trade secrets as:

“. . . information including a formula, pattern, compilation, 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 . . .”

 Although trade secrets provide broad protection, they have severe limits. The information must in fact be secret and the owner must take action to preserve this secrecy. Although trade secrets have some use in the electronics industry, they offer weak protection, because most engineers move from job to job during their careers— and they take what they have learned with them.

Copyrights Don’t Protect Ideas
Moving up the IP pyramid leads to copyrights, which cover works of authorship in program listings, graphic designs, schematic diagrams, and so on. A copyright gives the copyright owner an exclusive right to:

•  reproduce the work,
  
•  prepare derivative work,
  
•  distribute copies of the work, and
  
•  display the work in public.
  

  You can obtain a copyright by filing an application and paying a $25 fee to the US Copyright Office at the Library of Congress (Washington, DC) (lcweb. loc.gov/copyright/). Although the rights to a copyright in a work start from the “fixation” of the work in a tangible medium, the copyright owner must hold an official copyright registration before he or she can sue someone who infringes on the copyright. For works created after January 1, 1978, copyrights generally run from creation for the life of the author plus 70 years; for anonymous works, pseuduononymous works , and works for hire, the copyright spans the earlier of 95 years from first publication or 120 years from the date of creation.

Unfortunately for the electronics industry, copyright protection does not cover any idea, procedure, process, or concept described or illustrated in the copyrighted work. Thus, while copyrights may protect actual PLD or FPGA source code, schematics, program listings, and so on, a copyright won’t protect the ideas in these documents.

Because copyright laws restrict the protection of ideas, for many years designers could not protect IC masks or layouts, because they were considered functional in nature. The Semiconductor Chip Protection Act of 1984 (SCPA) was an attempt by Congress to thwart what was then perceived as widespread duplication of US semiconductor mask designs by foreign semiconductor companies. Although some engineers may complain about the incomplete nature of protection under the SCPA because it doesn’t protect the actual circuit or design, they still consider it a useful IP-protection tool in the semiconductor arts.

Brand Your Property
If you can’t protect your ideas with a copyright, you might at least consider how to brand, or mark them, so people know they originate from your company. A copyright protects only direct copying of an original artistic work, whereas a trademark can protect names, symbols, or other indications of a product’s source or quality. By obtaining a trademark, the owner obtains the right to exclude others from using marks which might tend to confuse the public. The use of a similar, deceptive, or misleading mark may lead to legal action by the trademark owner.

Unfortunately, most engineers in the electronics industry fail to recognize that a trademark may provide the distinction that helps customers recognize a product and thus push it to the forefront in a market. The formalities involved with obtaining federal trademark registration are minimal.

The major requirement for filing a trademark application is that you actually use the mark in interstate commerce or that you have a bona fide intention to use the mark in interstate commerce. Beyond the $245 filing fee, trademark registration consists of filling out a simple form and providing samples of the mark as it is used in commerce. Because trademark rights exist by virtue of the mark’s use, in theory a trademark may last forever. There are some post-registration formalities that you must go through to keep a trademark, but in general, the protections that the courts afford a mark stem from use of the mark, whether or not you have officially registered it with the USPTO.

Patents Provide the Best Protection
For the ultimate in protection of IP, you’ll need to rely on a patent. Patents represent the top of the IP pyramid because they provide for the prohibition of the sale, manufacture, import, or use of a device that is covered by the patent. To provide as much coverage as possible, a well-written patent stakes out as broad an area of product coverage as possible. The key to a broad patent is a properly written technical description, or disclosure, of the invention.

The disclosure should include sufficient detail for a person skilled in the pertinent art to make and use the invention, but the disclosure does not have to include a complete set of blueprints or source code. Flowcharts, block diagrams, and functional data-flow diagrams, along with text describing each step of the process or how the invention works, suffice to “enable” the invention in the patenting sense. For most inventors, writing the disclosure proves somewhat difficult, since they know too much about their invention. Assume that someone with a basic technical background will read the disclosure and write your disclosure at that level.

To a large extent, the increase in the number of software patents represents most of the growth in patents in the electronics industry. Like it or not, the US Supreme Court has given the USPTO the mandate to permit software-related patents. Many test functions, test methods, and failure-analysis systems all depend on software, so manufacturers will use patents to protect their investments in software development. Therefore, any engineering product-development program should include steps to obtain patents to protect software.

The patenting process begins with the preparation and filing of a patent application, which includes drawings and a written description of the invention as well as claims that distinctly point out what the invention includes. After you file this application and a $760 filing fee at the USPTO, you’ll receive a foreign filing license that permits you to file foreign patent applications if you so desire. The USPTO then examines the application and issues an office action that typically includes objections to the application form and rejections of various claims.

This first office action can occur anywhere from six months to three years from when you file the original application. You can argue the merits of the claims that were rejected. If all goes well, the USPTO then issues a notice of allowance that indicates the patent is ready to be issued. You must pay a $1210 fee to the USPTO to have the patent issued. The patent rights terminate 20 years after the filing of the patent application. After issuance, the USPTO requires payment of maintenance fees at regular intervals to keep the patent in force.

Probably the most confusing aspect of patent protection centers around the rights that a patentee has and when these rights exist. Generally, a patent application provides no protection—the rights to sue accrue once the USPTO issues a patent. Once the USPTO issues a patent, you can obtain an injunction to prevent infringement of the patent, and you can seek damages with a lawsuit.

The names on a patent, or the person or company assigned the patent, determine who has the rights to exclude others from infringing the patent. Without any agreement to the contrary, joint owners of a patent may make, use, or sell the patented invention without the consent of and without accounting to the other owners. Therefore, you should have a written agreement between individual inventors who collaborate on a patent to ensure that proceeds get equitably distributed to all the inventors.

Many people complain about the cost of the patenting process—in terms of time, effort, and expense. Remember, though, that the higher-cost patent generally provides more protection than the other methods. Carefully written technical disclosures and well-drafted claims require both technical and legal competence. Unfortunately, most patent practitioners lack this combination of skills.

In general, it is easier to teach a competent engineer how to draft his or her own patent applications than it is to teach a patent attorney about the technology being patented. Therefore, it behooves you to become familiar with the patenting process and educate yourself on the requirements of a well-written technical disclosure. Reference books can offer assistance and will provide more information about the forms of IP protection and how to apply them. (See “For Further Reading”.)

The IP pyramid diagram helps you understand the relationship between the various types of IP protection, but it doesn’t tell you which type of protection to use in a given situation. Unfortunately, few guidelines exists to help you determine which parts of a product or design you should consider protecting as valuable IP resources. Figure 3 illustrates some of the areas in which you could suggest your company seek IP protection for an integrated circuit.

Figure 3. Protection for an integrated circuit can include everything from trade secrets to patents. Note that this IC’s protection also includes protection on the application of the device.

Gone are the days when a company could protect a product or market by using a single patent, copyright, trademark, or trade secret. Today’s markets require a “net” of protection to shield a product in a competitive market. The extent of that protection may surprise you. Note that Figure 3 includes a target-application patent. Consider the case in which a company has a strong patent that protects its IC design, but it has no broad application patent that would cover intended uses of the IC. A third party could patent the applications for the IC, thus limiting the market for it. In fact, the holder of the application patent could demand royalties from IC buyers! This example may seem far-fetched, but I have seen this situation constrict the market for an IC.

To properly apply protection to a product or technology, you should create IP checklists for each stage of product development. Table 1 shows a typical IP checklist for IC testing and reliability. The electronics industry is so varied that your lists won’t include every possible type of protection, but they provide a basis on which to start an IP analysis.

While the issues shown in Table 1 are typically the last ones addressed in both design and manufacturing, they are so critical that failure to properly execute them can kill a product. As you work to help develop a new product, look at all aspects of possible IP protection, from the initial design right through to final-test processes.

An astute IP attorney, for example, will ask the test engineers involved with an IC to help determine which special tests the final test process depends on most. By protecting these special tests, perhaps with a patent, a manufacturer can fend off competition. The competitors cannot legally use the patented proprietary tests required to manufacture the IC.

Engineers today have more responsibility than ever for the protection of their intellectual efforts. It’s up to you to actively promote the protection of IP in a product so it receives adequate protection from competitors. This added responsibility presents you with both a challenge and an opportunity.      T&MW

FOR FURTHER READING
You can find a copy of the author’s original paper, “An Overview of Intellectual Property for the Electronics Industry,” at Test & Measurement World Online.

Lechter, Michael A., editor, et al., Successful Patents and Patenting for Engineers and Scientists, IEEE Press, Piscataway, NJ. 1995.

Kevin Mark Klughart is a patent agent registered to practice before the US Patent and Trademark Office and a Registered Professional Engineer licensed in four states. He received a B.S.E.E. from MIT and an M.S.E.E. and Ph.D. from Texas A&M University, and joint J.D./Masters in Intellectual Property Law degrees from Franklin Pierce Law Center.