Strategies for Intellectual Property Protection in Systems Design Rudolph P. Darken Dennis S. Fernandez Nelson T. Rivera LaRiviere, Grubman PC

Protecting Ideas What is Intellectual Property? What is “patentable subject matter”? How does this inform a strategy for your business or organization?

Specific to this meeting … Not only the products you build, But also the tools you use to build them, – We’ll focus on simulation, design, automation, and verification And the processes that you employ. Software critical industry Innovation can be anywhere!

IP in Systems Design Several systems design companies listed in the top 20 of IEEE survey on impact of IP portfolio. Your industry is IP-rich. Examples: – Novel assemblies and reconfigurable components – New simulation methods, timing models, effect models. – New verification methods at all levels of design

An IP Primer in 5 Minutes or Less Patents Copyrights Mask Works Trademarks Trade Secrets

Patents Protects the idea Must be patentable subject matter, have utility, novelty, and be non-obvious Must also have enablement In return for a limited monopoly on your idea (that is enforceable), you disclose to the world what the idea is.

Copyright Protects the expression of the idea, not the idea itself. Can complement a patent in some cases Applies to “writings”, widely interpreted as a tangible medium. – Written words, music, recordings, architectural design, software source code, movies.

Mask Works Similar to copyright or a design patent The original image of the circuit design is protected, but not the process by which it was made.

Trademarks Protect the brand – So consumers know what they are buying and have confidence in the source. Specific to use in a channel of trade – Can be reused as long as not overlapping within one channel. – Meant to avoid confusing the customer.

Trade Secrets Protect anything – But you have to keep it a secret. – Governed by State law Effective use of confidential disclosure agreements (aka non-disclosure agreements) No requirement to ever protect via patent

What is “Patentable Subject Matter”? Any process, machine, manufacture, or composition of matter, or improvement thereof. Must have an inventive concept!

What is not “Patentable Subject Matter”? Laws of nature, physical phenomena, and abstract ideas. What’s an abstract idea? – Algorithms – Computer implementation of an idea Why aren’t they patentable? – Give the patent owner a monopoly on an entire market segment – we want innovation

A Strategy for IP Protection 1.Are you developing products based on new IP? – Protect your idea, block others 2.How will the product be marketed? – Standalone, part of a family, add-on? 3.Who are your competitors? – Does your invention obsolesce other products? – Does it change the work flow?

A Strategy for IP Protection (cont’d) 4.How would a competitor work around you? – Reverse engineer, redesign, etc. 5.How will the invention be monetized? – Service? Product? Add-on? Lock-in? – Does IP from multiple parts of a patent family fit together or is it separate? 6.What’s the timing? – When will your product be ready for market?

Writing Effective Patents and Claims To avoid a § 101 rejection for unpatentable subject matter: 1.Always highlight the “inventive concept” that solves a problem 2.Show how invention is more than just a computer implementation of an idea Making it faster or more convenient is not enough 3.Look for transformation from one state or thing to another

Hypothetical Case Design simulation and verification as a service – New business model (subscription) – Changes work flow – Copyright the API? (Oracle v. Google, 2014) – Patent the simulation itself (improvements due to new model) – Patent the data transmission mechanism (client/service)

Conclusions 1.Critical industry, rich in IP that must be properly protected 2.Software intensive, runs into the “abstract idea” problem a lot. 3.Solvable if you focus on the inventive step and how the computer is integral to the idea. 4.Watch for changes in how the law is interpreted 5.Have legal assistance that is knowledgeable about what you do and why you are doing it.

Strategies for Intellectual Property Protection in Systems Design Rudolph P. Darken LaRiviere, Grubman PC Monterey, CA 93940