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Patent intelligence provider Chipworks provides a range of services including matching patents with products, as WIPR found out by speaking to Julie Elvidge.
Companies at the cutting edge of their industries have realised the immense value of their patent portfolios and are not afraid to make the most of that value.
This is where Chipworks can leverage its expertise. For more than 20 years, the Canadian company has supported businesses across the semiconductor, technology and electronics industries in identifying their valuable patents and making the best use of them.
Chipworks, which describes itself as a ‘patent intelligence provider’, essentially helps large companies move forward in business: it finds the valuable patents, matches the patents to products and provides credible evidence of use.
Julia Elvidge, president of Chipworks, explains: “Typically, a semiconductor company can have tens of thousands of patents; finding the patents that are the most valuable is one of its biggest problems.
“These patents are needed for cross-licensing, patents sales and assertions, and without them the company is basically stuck and can’t move forward.”
Specialising in the high-tech arena, Chipworks has recently focused on consumer electronics and the ‘internet of things’ industry spaces. These include smartphones, wearables and smart home components.
Discussing how firms can make the most of their patents, Elvidge outlines the idea of patent landscaping. This is one of the processes that the company performs on a regular basis, allowing it to view clients’ patent groups by their technology grouping in a matter of hours.
The process can be shown graphically: every dot on the paper is a patent. Where there’s a cluster of dots it means the technology area of each patent is very similar, and where there are no relevant patents, there is white space.
“Having such a visual means we can start strategising about how these patents can be used,” says Elvidge.
Traditionally, the standard way of initiating the patent process is using invention disclosures. Someone has an idea, writes out an invention disclosure and hands it to the intellectual property group. The group then decides on whether to patent this idea or use it as a trade secret.
But now, Elvidge is seeing different processes, such as strengthening of patents and divesture of patents, becoming more and more popular.
In the case of strengthening, patent applications are being reviewed more often, typically after they are published (or laid open) right up until just after their notice of allowance. The reason behind this is that companies may want to see whether the patents read on the products of companies with which they might negotiate in the future. The patent application will have been in the patent office for two to three years at this point and the industry will have developed new products during this time. It is worth the effort to see if this invention is now being used by others.
At this point, patent applications are being matched to a product rather than a patent. What that might produce is an indication of use (IoU), says Elvidge.
“Rather than solid evidence of use, it is typically indication of use. This IoU analysis can then be fed back into a patent prosecution group. If they have enough to work with within the patent specification, they can change and adapt the claim language to better match the product that’s already in the market and file continuation.”
This is not a new process. Around ten years ago Chipworks worked with one customer on it, but then the area went quiet again.
Elvidge adds: “Over the past three to four years it has become much more common practice as people are focusing on improving the quality and effectiveness of their patents, in particular for future cross-licensing.”
Many companies are also trying to find ways to develop and strengthen their patents in strategic areas that are currently seen as white space in the patent landscape.
There are two potential options for this: tasking your design team with thinking about how to broaden the patent portfolio more effectively, or acquiring patents.
“To put it very simply, a patent isn’t considered valuable unless you are able to use it to help protect your freedom to operate or you find a way to monetise it.
“Patent acquisition gets you faster results but this is weighed against higher costs. This is becoming an increasingly popular option but hopefully companies are also thinking about the longer term,” warns Elvidge.
The other trend is that of patent divesture. Given that maintenance fees are very expensive and because of the sheer number of patents owned by large companies, it comes as no surprise that retaining all the patents can be unsustainable in the long term.
Chipworks is frequently asked how it can help to identify patents that might be considered for divesture, whether that means abandoning them or putting them up for sale.
Detectability is one of the most interesting criteria used and one of the biggest ways to help clients, according to Elvidge.
“To put it very simply, a patent isn’t considered valuable unless you are able to use it to help protect your freedom to operate or you find a way to monetise it (typically this means licensing or selling the patent). If you can’t prove that someone else is using your patented invention, then is it valuable?” questions Elvidge.
In addition to looking at this criterion, which helps to find those patents that are either too expensive to prove use of, or impossible to prove use of because the methodology is just not available, Chipworks also looks at the market size—is this invention in a large enough market sector to be valuable?
The best defence
“One of the most common things I tell our clients in a cross-licensing situation is that the best defence is a good offence.”
According to Elvidge, this means being prepared. Clients need to come to a negotiation with solid claim charts which show indication or evidence of use.
This is Chipworks’ most regular type of work: helping to develop a strong claim chart which demonstrates all the key elements of a patent claim.
However, Elvidge adds: “One of the biggest trends is that a claim chart is no longer really a claim chart. We work with clients in different ways and some of them are very proactive in their defence. This means making sure they have ammunition on the shelf for potential future negotiations.”
Chipworks helps here by creating less expensive claim charts that show IoU, but don’t necessarily have a fully documented piece of evidence.
For example, this means that that only four out of five claim elements are well documented. The fifth element may be much more expensive to document so companies leave it on the shelf until it may be required and finish the analysis just in advance of the licensing negotiation.
The company also deals with ‘litigation-ready’ claim charts, although these are its least frequent area of work.
Mining for data
How does Chipworks produce the charts? It begins with a mining approach which filters or prioritises which patents to read first.
“We’ve previously developed a range of methodologies and are continuously improving them to make sure Chipworks can do its work in the most cost-effective and time-efficient manner for its customers,” says Elvidge.
She uses the example of trying to map patents to a particular company which has a high revenue in digital signal processing. Chipworks will figure out which patents in the client’s portfolio would most likely match that technology area, using a number of filtering techniques.
Once the company has a group of patents to work with, the next step is to look at that group of patents against different markets, companies and products, and find which is the best match and what strategy to move forward with.
Companies must also think about their own customer space, cautions Elvidge, as they typically don’t want to sue their own customers.
“If you were a provider of communications network equipment but you had a number of patents that were in a space that might read on cloud companies, then that might be a very good play. This is because the company would then be working outside of its customer space.”
“Matching patents to products is really working with two big haystacks. Overall, it’s a lot of patents and then a lot of products to match to them,” explains Elvidge when asked about the biggest challenge the company faces.
“Bringing those two together for one particular group of patents and identifying the group of products they match with is a significant task. We’ve very good at what we do, but we’re only so good because we do it so often.”
In order to offer the best service available, Chipworks also has to keep up with the constantly changing world of technology.
Elvidge states that Chipworks has developed specific processes in the past to keep up with the changes in technology. Currently, the company has a development group that’s specifically focused on making sure it is still able to view the size of transistors.
Unfortunately, as transistors continue to develop and become more vertical and smaller, rather than just flat, the challenge becomes more difficult and expensive.
“We need to see transistors to do the work we do. The semiconductor industry keeps making them smaller, so we need to develop new techniques to allow us to continue to do our work,” says Elvidge.
“Chipworks is a leader in our industry, and in order to maintain this leadership we continually invest in our capabilities and ensure that we have the ability to see and analyse the smallest feature sizes.”
Julie Elvidge, Chipworks, patent, internet of things, portfolio,