January 2012
Reflecting on 2011 and Poised for Growth in 2012

2011 was an exciting year for GIS. Our business grew faster than we anticipated. The growth was fuelled by the recovery of the IP industry from the 2009/10 downturn. We continue to grow business in North America which remains our main market for IP consulting services.

In 2011 we announced the appointment of Starpatents LLP as the exclusive representative of GIS in Japan. We established a presence in South Korea with Unipix Electronics as our sales partner where we support electronics industry clients with reverse engineering and IP consulting services. Our partnership with ML Business Development in Europe led to a number of patent portfolio management consulting engagements with telecom and semiconductor companies.

We continue to diversify our services to software, telecom and consumer/media industries and we are expanding our pool of experts to address these technology areas.

With this growth and diversification, GIS remains focused on responsiveness and quality of our services, which blend technical and patent expertise essential to support our client’s IP business strategies. We have established R&D partnerships with Carleton University and enterprises in Ottawa to develop novel techniques for reverse engineering, testing and patent data analysis.

We are excited about the prospects for 2012. Our clients expect us to strengthen our reverse engineering and testing capability in new technology areas and we are putting plans in place to meet these needs. We will continue to build a solid reputation as a strategic IP partner and grow business in new markets, in particular, Japan and South Korea.

We expect to continue growing our team by attracting people who want to work for a company where every day brings a challenge and opportunity to learn new skills. We pride ourselves on providing a unique and stimulating work environment – and we are committed to career development.

Please check out our current opportunities here.

Read All About It!

The December 2011/January 2012 issue of Intellectual Property Magazine featured an article written by Pierrette Breton, Founder of GIS. In this article, Pierrette explains reverse engineering, why it is used and its impact on trade secrets.

To read more click here.

Face-to-Face With Packaging

A new semiconductor packaging technology has been developed and is referred to CoC (Chip-on-Chip) packaging or Face-to-Face packaging. This technology utilizes flip-chip technology to form Face-to-Face connections between the memory die and non-memory die. This structure substantially reduces levels of capacitance associated within bond wires and the package lead frame. It also reduces the amount of power required to run circuitry within the memory and non-memory chips. Toshiba has been developing an SCS (Stacked Chip SoC) packaging technology which is similar to CoC packaging technology. Two exemplary chips having this structure are shown in Figure 1.


Figure 1

Source: Development of Low Power and High Performance Application Processor (T6G) for Multimedia Mobile Applications, Toshiba Corporation Semiconductor Company Jan. 28, 2011

Global Intellectual Strategies has recently investigated a Sony Multi-chip package Graphic Processor CXD2986A1GG. As shown in Figure 2, this device is a multi-stacked die package having a CoC structure.


Figure 2

Source: Global Intellectual Strategies

With reference to Figure 2, die # 2 is a memory die stacked in a Face-to-Face relationship with a non-memory die labeled as die # 1. Further details of the memory die and the non-memory die are shown in Figure 3.


Figure 3

Source: Global Intellectual Strategies

For more information, please contact GIS at www.gistrategies.com

Patent Corner: IP (Intellectual Property) Strategy – Part IV: Infrastructure for Developing IP

This article is Part IV of a series of newsletter articles dedicated to the development and implementation of an IP strategy for businesses.

In Parts I to III of this series, the focus was on the design of an IP strategy, the creation of an IP culture within a company, and establishing a basic defensive strategy.

The purpose of the present article is to provide insight into how to develop an infrastructure for development of an IP portfolio that is well-suited for a business.

In developing a process for identifying IP for purposes of patenting the following items should be addressed:

  1. Development of an Invention Disclosure policy;
  2. Development of a patent award policy for inventors;
  3. Implementation of a software tool for tracking/organization of IP;
  4. Establishment of a process of identifying and selecting patentable ideas; and
  5. Establishing an IP budget.

i. Development of an Invention Disclosure Policy

A number of considerations need to be addressed when preparing an invention disclosure policy. Some major considerations are listed below:

  • Establish criteria to be used in identifying IP for patent protection;
  • Recommend content and format of Invention Disclosures, together with a discussion of the relevance of each item in the Invention Disclosure;
  • Establish a format that is simple to use for ease in assessing technology for purposes of patenting.

ii. Development of a Patent Award policy for Inventors

A patent portfolio can provide an important source of revenue for a business, a competitive edge over competitors, and a strong defensive position against attacks of infringement.  However, scientists and engineers are often too busy to be pre-occupied with patents and patenting inventions, and would rather be working developing new products and ideas.  Being an inventor on a number of patents can be valuable for a professional’s career path, but sometimes this is not sufficient to raise interest in patenting.  Some businesses provide additional incentives to inventors for participating in the patenting process in order to promote an IP culture.  The incentives may be in the form of monetary rewards for patents when they become granted or recognition for the most active inventors, for example.

iii. Implementation of a Software Tool for Tracking/Organization of IP

When developing a patent portfolio it is imperative that a proper tool for tracking patents be in place. The life of a patent is typically 20 years from the filing date and for each patent there is a considerable amount of information to maintain.  For example, a docketing system is necessary to make sure that due dates for responses to requests from patent offices and for payment of maintenance fees, for example, are respected.  Furthermore, the tool should also maintain information on the valuation of patents.  For example, a patent that is tagged as being valuable may be key in a defensive strategy and/or licensing program.  In addition, a patent may be tagged for divestiture for providing revenues through sale or tagged for abandonment to save on costs of maintenance fees.

iv. Establishment of a Process of Identifying and Selecting Patentable Ideas

Having a proper Invention Disclosure policy in place enables a business to effectively mine patentable ideas and recommend ideas for patenting, which fall within the scope of the business’ IP strategy.  For example, the IP strategy may define selection criteria that are based on the need to mitigate risk for exposed technologies and on potential for future revenue through licensing efforts.  These selection criteria might be applied in a review process of Invention Disclosures submitted by engineers/scientists. The process might also include interviews with engineers/inventors to discuss their research and solutions to problems, and recommendations of ideas for patenting based on those discussions.  

v. Establishing an IP budget

Establishing a proper budget of IP is imperative in implementing a successful IP strategy.  The amount to be allocated to a budget can vary depending on the level of complexity of the IP strategy and the size of the patent portfolio that is sought.  Given below is list of items that should be considered in preparing a budget for developing and maintaining a patent portfolio.

  1. Costs for establishing and maintaining the infrastructure described in items i) to iv) above;
  2. Costs for preparing and filing patent applications;
  3. Costs for prosecution (Examination Process) of patent applications;
  4. Maintenance fees and other government fees associated with the patent applications; and
  5. Costs for acquisition of patents and patent portfolios, if applicable.

The above costs only cover expenditures for developing and maintaining a patent portfolio.  Additional funds should also be allocated for the development of the IP strategy discussed in previous parts of this series of articles, and maintaining a licensing program and/or patent divesture program, if applicable.  These costs will also depend largely on the type and level of complexity of the IP strategy being implemented.

Did You Know?

GIS continues to build upon areas of expertise. Over the last few months we added technical expertise in the areas of Wireless/mobile systems as well as Speech/Audio and User Interfaces. Our areas of technical capabilities includes, but not limited to: Semiconductors, Semiconductor Processes, Video and Imaging Systems, Software, Mobile/Wireless, Consumer Electronics, etc.

Contact us at sales@gistrategies.com for more information.

What Our Clients Are Saying...

"As intellectual property plays an increasing role in driving profitability for companies today, GIS’ knowledge of the IP Licensing industry has enabled us to start commercializing the value of our intellectual property. GIS is a wise investment for any technology start-up, and the people are great to work with. We continue to work with them on the various stages of our IP strategy."

Rob MacKenzie
VP-Business Innovation
Techlink Entertainment

"Working with GIS’ technical experts and their registered Patent Agents has been essential to our programs and we applaud their technical competency, responsiveness and client focus."

Mitch Evander
Chief Intellectual Property Counsel
Harris Corporation

“When determining usage of technologies described in patents, there is an art to determining the meaning of the patent and matching that to what is found in products.  GIS is particularly adept at doing this.  Their experience and their ability to use sound judgment keeps them on the safe side of construing claims and gives clients confidence in using material they produce.”

Charles R. Neuenschwander
Principal
International Patent Licensing Co.

What We Can Do For You...

Patent Portfolio Mining
Patent Reviews
Patent Product Mapping
Product Procurement
Patent Infringement Analysis
Prior Art Searches
Technical Rebuttal
Trial Witness
Patent Valuation
Patent Portfolio Appraisal
Patent Landscape
Patent Divestiture
Patent Acquisition

Contact GIS

120 Iber Road Unit 101
Stittsville, Ontario
K2S 1E9
Canada
P: +1(613) 592-2693
F: +1(613) 592-0784

www.gistrategies.com

sales@gistrategies.com

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