On August 4th, 2010, Global Intellectual Strategies will celebrate its 10 year anniversary, marking a decade of success as one of North America’s most respected patent services firms.

“We have kept to our core value, which is our commitment to quality service to our clients. I’d like to take this opportunity to express my appreciation to the many companies and individuals we’ve had the pleasure of building strong business relationships with. We look forward to developing our existing relationships further, as well as building new business partnerships,” said President & CEO, Pierrette Breton.

There are many reverse engineering labs offering their services. However, GIS is unique as a Patent Agent* firm that combines expert patent analysis and reverse engineering services to our clients.  Why is this important?  It is because it is the claim that defines the scope of the patent and its value.  It is the words of the claim that determines if a product infringes the patent, and determines if a document can be considered to be “prior art”.  The claim must be interpreted and its limitations understood first, before you start any other analysis. 

It takes special training to analyze a patent and its claims to identify and understand claim limitations. Often, one word in the claim can, and will make the difference between a valuable patent and a worthless patent, or determine infringement or the validity of a patent.  

*GIS is a registered Patent Agent firm with CIPO (Canadian Intellectual Property Office)

In the course of our work at GIS, we are often called on to do “black box” or “functional” testing of a product to show patent infringement. This type of testing involves measuring input and output signals of a system to determine what it is doing internally. Often this is trivial, as the signals of interest are readily available on the surface or vias of a PCB, or the pins of a chip. At other times though, no easy access is available. One such case is when an IC is connected to the PCB via BGA (ball grid array) solder balls. Traces, as well as any connections may be hidden in an inner PCB layer.

When signal access is not physically available to us, one approach is to probe directly on a working die of a chip. In order to have access to this die, we must first jet etch the IC, preferably with the chip still attached to the PCB (for more information, please refer to an earlier GIS article regarding our jet etching capabilities). Jet etching removes a part of the package, leaving the die and its bond wires exposed.

The photo below illustrates a jet-etched IC, where we can now probe directly on the exposed bonding wire pads.

As you will note, the use of micro-probe arms are needed, since the feature sizes we are working with are quite small. The probe is controlled by an actuator arm that can be positioned in 3 axes with geared manual controls.

IP (Intellectual Property) Strategy
Part II: Education and Creation of an IP culture within a Company

This article is Part II of a series of newsletter articles dedicated to the development and implementation of an IP strategy for businesses and focuses on education and the creation of an IP culture within a company.

The creation of an IP culture in a company is important in the development of a successful IP strategy. In the last thirty years the business of IP has become common place. However, there are still many negative connotations and misconceptions associated with IP, particularly with enforcement of patents. Through education personnel within a company can learn and understand the concept of patents and the processes involved in an IP strategy. This can be used to de-mystify any misconceptions of IP and promote the benefits that a strong strategy can bring to a company. Education should be directed to all personnel involved in the company, and begins with upper management responsible for making important business decisions and researchers who are responsible for developing inventions. We have developed a program, which includes workshops designed for: 1) management; 2) inventors; and 3) IP managers and administrators.

Workshops for upper management focus on the basics of IP, the process of developing a proper IP strategy, and the value it brings to a company. For example the major topics include:

1. Development of an IP culture within a company;
2. Brief introduction to the patenting process;
3. Development of an IP strategy;
4. IP strategy considerations: Defensive/Offensive;
5. Revenue generation from an IP portfolio; and
6. Establishing an IP infrastructure for long term success.

A basic understanding of the patenting process and IP strategies is useful for making good business decisions. IP strategies can be very flexible, and can be tailored to suit a particular company’s business model. Particularly, an IP portfolio can be a means for generating revenue though licensing and/or patent divestiture for example. Generating revenue through divestiture and licensing can be a very complex, and an understanding the processes and risk is extremely valuable. As such, information on different available IP strategies is of utmost importance for in enabling management to make the right decisions on a particular strategy to develop and implement. Finally, an appropriate infrastructure needs to be implemented and maintained in order to create an IP program that will bring long term benefits.
Turning to the inventors, they are generally very busy with their work and may not have time available for additional tasks that may not seem important. For example, while engineers and scientist may be well engrossed into their research and solving difficult problems the thought of getting involved in the patenting process may not be appealing. However, building an IP portfolio can be exciting and can create opportunities for career advancement. In creating an IP culture within a company it is important to convey this message properly and provide the proper knowledge and incentives for inventors to get involved in the process.

For example, with a proper IP strategy the benefits to inventors in participating in the building of a patent portfolio can include the following:

1. Recognition and visibility from being an inventor on patents;
2. An increase in the number of scientific publications and presentations;
3. An increase in revenue from incentive programs;
4. Potential for improved solutions to problems; and
5. An appreciation for the process.

Being an inventor on a number of patents has certainly its benefits in term of career opportunities, especially if the patents relate to important inventions.

Furthermore, the value of a patent portfolio depends on a number of factors including whether the inventions that are patented are in use in the industry. For increasing use in the industry it is important to make an invention known and therefore a proper IP strategy should support a program where inventions are made public through scientific articles or presentations after filing of patent applications. Again, this is beneficial to inventors and to the company in that it creates more visibility.
The process of drafting patent applications is complex but can be a very exciting exercise. It is important to provide inventors with a basic understanding of the process and the requirements in a patent document. This helps inventors understand the perspective of the patent agent who will be drafting the patent application.

Inventors play a key role in building an IP portfolio, and the above shows the need to create a positive IP culture for building a strong IP portfolio.

As such, workshops for the inventors have been developed to focus on the patent document, the requirements for patenting an invention, and the benefits of patenting. The major topics include:

6. Importance and benefits to a company and inventors in developing an IP strategy;
7. Proper documenting procedure of development of invention to show invention date;
8. Preparation of Invention Disclosures;
9. Identification of relevant technology for patenting (considerations such as ingenuity of invention, applicability to markets, relevancy to current IP strategy);
10. Definition of an invention;
11. Structure of patent document and requirements to obtain a patent;
12. How to work with the Patent Agent to obtain high quality patents; and
13. Process of obtaining a patent.

Finally, IP managers and administrators will be responsible for managing and administrating the IP department and developing and maintaining an IP strategy. The workshops focus on providing the basic knowledge required for this purpose, and the major topics include:

1. Developing an IP strategy;
2. Proper documenting procedure of development of invention to show invention date;
3. Preparation of invention disclosures;
4. Identification of relevant technology for patenting (considerations such as ingenuity of invention, applicability to markets, relevancy to current IP strategy);
5. Definition of an invention;
6. Structure of patent document and requirements to obtain a patent;
7. How to work with Patent Agents to obtain high quality patents;
8. Process of obtaining a patent;
9. Approaches to developing a patent portfolio;
10. Defensive IP strategies;
11. Offensive IP strategies;
12. Patent divestiture;
13. Internal Infrastructure for managing portfolio;
14. Costs for developing patent portfolio; and
15. Establishing and maintaining a patent portfolio.

The above program is directed towards the creation of an IP culture through education and involves upper management, inventors, and IP managers and administrators. This global approach at creating an IP culture through knowledge transfer provides a first step at creating as successful IP program. Look for further details on developing and implementing an IP strategy as part of this series in future issues of this Newsletter.

Are you developing an IP strategy? Let GIS help you design and implement your IP strategy.