Patenting & the Semiconductor Sector

By Nitin Nair Brain League IP Services

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Patents Semiconductors
- Market advantage - Protection - Valuation - Licensing

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Patents Semiconductors

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Patents Semiconductors

Source: Hall & Zeidonis, 2001 (c) Brain League IP Services, 2013

Survey Results - India

Source: Technical edge for competitive advantage by patenting: A study of Indian semiconductor industry Surabhi Jain, Prof. A.K. Saini, Prof. R.K. Verma - International Journal of Advanced Computer Research (ISSN (print): 2249-7277ISSN (online):2277-7970)Volume-2 Number-4 Issue-6 December-2012

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Patents Patentable Subject Matter (India)

- Product/Process

Exceptions: - Mere arrangement of known devices working independently of each other - A mathematical or business method - Computer programs, per se - Algorithms

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Patents - India
- Computer programs, per se (Section 3(k))
- Claims must not be directed to software per se. - There must exist machine (or hardware) limitation to the claims directed to a method enabled by a software - There must exist "technical effect".

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Patents India Sample Claim 1

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Patents India Sample Claim 2

A mobile phone is to be incorporated with a provision for a plurality of current simcards and / or modified simcards, a plurality of current simsockets and / or modified simsockets for accepting a plurality of current simcards and / or modified simcards, a plurality of headphone/earphone jacks for accepting a plurality of headphone/earphone plugs and / or a plurality of bluetooth devices in order to operate simultaneously the said mobile phone in said different communication networks is presented, and a plurality of incoming and / or outgoing calls can be communicated simultaneously with the said respective simcards.

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Patents - USA
- any person who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore (S. 101)

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Provisional Filing in India

First Filing in India 6 weeks

Request for a foreign filing permit

12 months* Filing in US**

21 days

Provisional

Was the filing a complete or a provisional? Complete

File the complete specification (12 months)

Publishing (18 months)

Examination Report

Examiner decision (grant/refusal)

US Patent Process

*Complete filing can also be done in India **Has to be a complete specification, if an Indian provisional has been filed

Patents - USA
- A concrete, useful and tangible result
- Business Method Exception

- Machine or Transformation test

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Patents USA Sample Claim 1

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Patents USA Sample Claim 2

A method of determining branch metric values for branches of a trellis for a Viterbi-like detector, comprising: selecting a branch metric function for each of the branches at a certain time index from a set of signal-dependent branch metric functions; and applying each of said selected functions to a plurality of signal samples to determine the metric value corresponding to the branch for which the applied branch metric function was selected, wherein each sample corresponds to a different sampling time instant

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Patents - Europe
Article 52 of the EPC, which reads: (1) European patents shall be granted for any inventions which are susceptible of industrial applications, which are new and which involve an inventive step.

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Patents - Europe
Article 52 of the EPC, which reads: (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: - a. discoveries, scientific theories and mathematical methods; - b. aesthetic creations; - c. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; - d. presentations of information. (3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
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Provisional Filing in India

First Filing in India

Request for a foreign filing permit

6 weeks 12 months* Filing in EPO** 21 days

Provisional

File the complete specification (12 months)

Was the filing a complete or a provisional ? Complete

Publishing (18 months)

Examination Report

Examiner decision (grant/refusal)

*Complete filing can also be done in India **Has to be a complete specification, if an Indian provisional has been filed

Validate in the target countries

Enter target countries

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Patents EPO Sample Claim

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Sample Claim - comparison

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Provisional Filing in India

First Filing in India 6 weeks

Request for a foreign filing permit

12 months* PCT filing

21 days

Chapter 1

Search Report** (16 months)

Publishing (18 months)

No

Do you want to respond to search report? Yes Do you want to proceed to examination stage? Yes File a demand + response*** (19 months)

File an informal response

No

PCT Patent Process

Chapter 2

*Complete filing can also be done in India ** From the elected search authority

Examiner Opinion Chapter 2 (Contd)

Examiner decision (grant/refusal)

A Enter into National Phase (20/30/31 months)

Due process in each of the National phase countries PCT Patent Process (Contd)

Patent Search
- Performed to uncover patent/patent applications - Free databases: USPTO, Espacenet, Google Patents

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Types of searches
- Landscape Analysis

- Freedom to Operate Analysis

- Patentability Analysis - Infringement Analysis

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Remedies
- Design Around

- Invalidation
- Licensing

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Thank You Nitin nitin@brainleague.com

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