Semiconductor IP News and Trends Blog

Patent Myths and University Entanglements

During a panel hosted by the IEEE-RFIC IMS event, Mediatek’s Shanaa talked about patent myths and issues with university and the USPTO systems.

By John Blyler, Editorial Director, Semi-IP Systems

This is the continuing coverage of a joint IEEE-RFIC IMS Panel on the “Good, the Bad and the Ugly of Patents,” moderated by Oren Eliezer from Applied Research Center. In this part, Osama Shanaa, Senior Director of RF Design at Mediatek, shared his viewpoints from both industry and academia on innovation and the US Patent system. What follows is a slightly paraphrased version of his talk. – JB

Notable Quotes:

• USPTO activity is neither a test of whether an idea is working nor whether a patent is worthy or unworthy.
• You could end up educating your competition by filing a patent.
• Once the USPTO issues a patent, it protects the invention. Not so.
• Patents tend to address problems for which there are many ways solutions.
• Patents are stronger if they are grouped in larger numbers
• Should universities patent?
• What should we do with the US patent system?

There are many myths surrounding patents and misconceptions by people and innovators. The first myth is that a patent reflects a working invention. If it’s not working, then it isn’t patentable. This leads to the idea that any idea not patented is worthless. This is simply not true. The US Patent and Trademark Office (USPTO) activity is neither a test of whether an idea is working nor whether a patent is worthy or unworthy.

The second myth is that illustrations in a patent are protected. In reality, only the claims are protected, not the illustrations. But while the claims are protected, they are often written in language such that even their inventors wouldn’t understand their own claims. I remember the first time that I filed for a patent back in 1998. I worked with a patent lawyer. One month later I received my patent disclosure form for my approval. I called him back and said that I don’t understand my own invention. He said “good.”

The third myths is that once the US Patent and Trademark Office (USPTO) issues a patent, it will be protected by the government. This is also false. It is you’re responsibility as an inventor to protect your own invention. I wish you luck if you’re a small company in conflict with an industry giant as corporate lawyers can prolong things forever and drain your resources. If that happens, you’ll be forced to sell in the end. I have many examples of friends that started a small company but had to sell off to a larger one in the end.

This is the dilemma: Should I patent or not patent or file for a trading secret? I wonder why people don’t just look at the military to answer this question. The military is the most highly funded R&D entity in the world. And they invent all sorts of things for which I’ve not seen a patent, e.g., a patent describing the composition of the stealth bomber material. Instead, the military just labels that as classified. That approach might be viable for some inventors and should be considered.

Another challenge is that a patent can be a form of communication. You could actually end up teaching a competitor about what you are doing. I know that many foreign ventures have departments within their companies just overseeing what patents come out, e.g., from Apple. It allows them to get ahead of the game by seeing what other major competitors are doing.

Further, you could unintentionally trigger a lawsuit by filing a patent. If you file for a patent without knowing that someone else has another issued patent with a much larger scope and a must larger set of claims, they can actually prevent you from using your own invention.

So what is a patent worth? For you as an individual, it can be a way to impress your colleagues. Unfortunately, the majority of the patents out there are really junk. For one thing, they do not cover broad scopes but instead focus on a very narrow area. Further, it is hard to prove infringement over most patent.

Another negative with patents with that patents tend to address problems for which there are many solutions. The patent solution is not unique nor one of very few. Also, many claims are poorly written. Your invention could be great, but your patent lawyer could hurt you if he isn’t competent. It’s all about the language. This is why patent lawyers charge an arm and a leg per hour. Some lawyers are better than others, so be sure to shop around for a really good patent lawyer.

Patent Value

The value of the patent depends upon many aspects. For example, how many companies appear to be interested in the topic of this patent? Can the patent be licensed? Patents with existing license revenue streams are more valuable than others. Also, patents are stronger if they are grouped in larger numbers. In the old days, one patent might have been enough. Now is not the case. Most systems are so complex with hardware and software systems that one patent will not make it or break it. Larger groupings of patents make a bigger impact. That is why you see companies with more than 5,000 patents.

Should universities patent? This issue has a good and bad but not an ugly face. The Bayh-Dole Act of 1980 made it legal to use publically funded research to patent things. The result has been the formation of over 5,000 companies that have produced over a quarter of a million jobs and over $40B annual revenues. That’s the good side.

The negative side is that the act has made universities viewed as litigation adversaries and enemies rather than partners, thus reducing industry-university research collaboration due to IP rights issues. Universities tell me they have less and less contributions from companies sponsoring research because of this act. Interestingly, it’s not as much of an issue outside of the US.

This act also caused universities to fall shy of their original mission to improve the lives of industry, mankind and society, to fund research that others could take and build upon. Thanks to the patent act, many well-known professors went off for 8 to 10 years to form start-up companies thus depriving the university and students of their intellect and work. It would be really difficult to strike a balance, especially since professors are not well paid, especially compared to professors in other countries.

So what should be done with the US patent system? In my opinion, the USPTO needs a huge upgrade and reform. Consider these three points. First, examination for prior art and overlap in previous patents is not effective. Perhaps the examination process could be improved through the use of artificial intelligence and enhanced automation.

Secondly, existing laws need to change to stop bounty hunters (patent trolls) while truly helping genuine entrepreneurs and inventors.

Lastly, we need to create an “international” patent law. It is too resource-consuming to file for the same patent many times over in different countries. [Editor’s Note: For another perspective on international patent law, see, “Part II: Stop That Thief! – IP in Global Markets”]