chipworks
24 May 2016Patents

Chipworks: finding a needle in a haystack

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.

New focus

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.

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