Papula-Nevinpat...Papula-Nevinpat • A globally recognized full-service patent, trademark and...

Papula-Nevinpat• A globally recognized full-service patent, trademark and design agency,

founded in Helsinki, Finland, in 1975 by Antti Papula• Head office in Helsinki, offices also in Tampere,

Lappeenranta and Munich (Germany)• Other offices in Russia, Ukraine, Belarus,

Uzbekistan and Kazakhstan• More than 170 IP experts to serve our clients

worldwide• Our net sales in 2019: 22,40 million euros

• One of the three largest IP agencies in Finland

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From your idea to your exclusive right

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IP evaluation, searches and strategic advice

IP applications and registrations

IP enforcement, use, and conflicts

Our team – Jukka Korhonen

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• European Patent Attorney• Over 15 years of experience• Team Leader; Mechanics and Physics team• 5 years of R&D experience with micro sensors

and optical measurements• Experienced in oppositions and appeals before

the EPO• Technical specialities:

• Diffractive optics• Light detectors• MEMS • Nanostructures• Optoelectronics• Photonics• Sensors• Solar cells

Our team – Jorma Selin• Patent Attorney• Over 3 years of experience• Technical specialities:

• Electrochemistry• Nanotechnology• Optics• Photonics• Renewable energy• Physics

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IPR (Patenting) in Photonics

Jukka KorhonenJorma Selin

Papula-Nevinpat

Outline

• Why do you patent or don’t? • What a patent gives you and what not• When to patent and when not

• What’s happening in patenting right now? • Big trends

• Photonics patenting – something special or business as usual? • What you need to know• Examples

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Why do you patent or don’t?

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• What is a patent?• “A patent is an exclusive right granted for an

invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new

technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else,

who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain; that is, anyone can commercially exploit the invention without infringing the patent.”- WIPO @

https://www.wipo.int/patents/en/faq_patents.html

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https://www.wipo.int/patents/en/faq_patents.html


• What is a patent?• “Except as otherwise provided in this title, whoever without

authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”- 35 U.S.C. 271 (US Patent Law)

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• What is a patent?• “The exclusive right conferred by a patent shall imply, with the

exceptions stated below, that no one might exploit an invention, without the proprietor's consent, by: (1) making, offering, putting on the market or using a product protected by the patent, or importing or possessing such product for these purposes; (2) using a process protected by the patent or offering such process for use in this country if he knows or if it is evident from the circumstances that the use of the process is

prohibited without the consent of the proprietor of the patent; (3) offering, putting on the market or using a product obtained by a process protected by the patent or importing or possessing such product for these purposes.”- Finnish Patent Act 3.1 §

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• What is a patent?• “Exclusive right”?

• Monopoly?• “without authority”; “without the proprietor’s consent”

→ A patent is a right to forbid the others from commercial utilization of the patented invention

• No positive right for the patentee itself to utilize it• Utilization may infringe some other’s patent

• No ex officio monitoring of unauthorized use or enforcing the right to forbid• The patentee itself is responsible for recognizing any unauthorized use• The patentee itself is responsible for enforcing in the end in court its right to forbid

The above to be kept in mind when considering patenting an invention

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• Right to forbid – “Why do we patent this”?• “To ensure we are able to sell/import/manufacture a product comprising the

patented solution”?• “To ensure we do not infringe the competitors’ patents”?• “To ensure that the competitors cannot utilize our invention”?

• Are you able to and willing to enforce your patent?

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• Right to forbid – “Why do we patent this”?• Competitive edge via superior technical performance and/or cost

effectiveness• Licensing; selling the patent• “Secondary” purposes

• Marketing, convincing inventors, improving negotiation position, etc.

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• Right to forbid – “Why do we patent this”?• Summary: When to patent and when not?

• Is it patentable – is there an “invention”: novelty, inventiveness, technical nature?• Can you recognize and verify an infringement taking place?

• E.g. internal operation of a device; manufacturing method used in competitor’s factory• Are you ready to use your right, even in court if needed?• Is anyone other interested in utilizing your invention or do the others use different

technologies?• Appropriate single infringing party foreseeable?

• Do not sue your client• Can you keep your invention, or at least part of it, secret instead?

• Often valuable protection achievable by combination of those both • Are your competitors active in patenting?

• Improving negotiation position; cross-licensing • Are there any “secondary” purposes for patenting?

• Marketing, convincing inventors, etc. 12/9/2020 15

What’s happening in patenting right now?

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What’s happening in patenting right now? • Overall patenting activity seems to continue growing

• Source: WIPO Statistics Database, March 2020 (PCT Yearly Review 2020 –Executive Summary)

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What’s happening in patenting right now? • China’s role as a growing economic power in the world is

reflected also in patenting


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What’s happening in patenting right now? • China’s role as a growing economic power in the world is

reflected also in patenting


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What’s happening in patenting right now? • Distribution of growth between various technical fields

• Source: EPO, Annual reports and statistics, Expert analysis: The key patenting trends

• Digital communication: e.g. 5G technologies• Also photonics plays an important role

• Computer technology: e.g. AI, machine learning, image data processing and pattern recognition, quantum computing12/9/2020 20

What’s happening in patenting right now? • Summary: Patenting activity seems to reflect and follow:

• The economical growth• However, patenting activity continues high over (short-term) economical

downturns; patenting is long-term activity by nature • The technological activities

• In new technical fields patenting important• Pioneer inventions; key patents with broad scope of protection• Patenting seen important even if it is not clear which technologies and inventions

will turn out to be the most valuable ones (patent term is 20 years)

• Naturally, when some technology gets matured or becomes outdated, also patenting activity decreases

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What’s happening in patenting right now? • Some practical observations from a patent attorney point of

view• Traditional division between chemistry, mechanics, and ICT/software

tends to blur• “Intelligence” becomes more and more part of mechanical, physical, and

even chemical inventions also• Sensing; data processing; “smart machines”; control algorithms; machine vision;

AI; machine learning

• Interdisciplinary inventions• E.g. OLED; renewable packages; etc.

• More and more patents and applications relate to software or “computer implemented” inventions• “Six Years After Alice: 61.8% of U.S. Patents Issued in 2019 Were

‘Software-Related’—up 21.6% from 2018”• https://www.ipwatchdog.com/2020/02/17/six-years-alice-61-8-u-s-patents-issued-

2019-software-related-21-6-2018/id=118986/

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https://www.ipwatchdog.com/2020/02/17/six-years-alice-61-8-u-s-patents-issued-2019-software-related-21-6-2018/id=118986/

Photonics patenting – something special or business as usual?

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Photonics patenting – something special or business as usual?• What is photonics?

• Wikipedia: • “Photonics is the physical science of light (photon) generation, detection,

and manipulation through emission, transmission, modulation, signal processing, switching, amplification, and sensing.”

• PREIN: “Photonics and light-based technologies play a central role in all areas of modern life, including in telecommunications, biomedicine, health care, energy and environment, manufacturing, and consumer products.”

→ Very broad term; covers a broad range of different types of devices in a great variety of different applications

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• Not any single specific technical field but an important enabling technology in numerous technical fields → Can we say anything at all about “patenting in photonics”?• For example, what about the trends and statistics? • For example, what to patent and how?

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Photonics patenting – something special or business as usual?• Patenting activity follows economical and technical activity?

• Example: CPC* patent class G02B2027/0178: Optical systems… - Head-up displays - Head mounted - Eyeglass type, eyeglass details• 6043 patent families, 17 of which litigated, 100 opposed

• Source: Questel Orbit Intelligence*: Cooperative Patent Classification system, created by the EPO and the USPTO

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• Example: CPC patent class G02B2027/0178: : Optical systems… - Head-up displays - Head mounted - Eyeglass type, eyeglass details• 6043 patent families having 3146 US cases, 2315 CN cases, 1261 EP cases

• Source: Questel Orbit Intelligence

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• Example: “black silicon AND solar” in full text search• 1142 patent families, 3 of which litigated, 13 opposed


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WO2020/130972


• Example: “black silicon AND solar” in full text search• 1142 patent families, top 3 applicants: Daicel, Jinko Solar Holding, Jinko Solar


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WO2020/130972


• Example: CPC patent class G02B2006/12061: Light guides - of the optical waveguide type - of the integrated circuit kind - Materials – Silicon• 730 patent families (6649 without limitation to Si as material), 3 of which litigated,

4 opposed


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US10823912

Photonics patenting – something special or business as usual?• Patenting activity follows economical and technical activity

• Example: CPC patent class G02B2006/12061: Light guides - of the optical waveguide type - of the integrated circuit kind - Materials – Silicon• 730 patent families (6649 without limitation to Si as material) having three times

as many US cases as CN cases


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US10823912


• Not any single specific technical field but an important enabling technology in numerous technical fields → Can we say anything at all about “patenting in photonics”?• For example, what about the trends and statistics? • For example, what to patent and how?

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Photonics patenting – something special or business as usual?• What to patent and how; practical (claim-level) issues?

• Is it (photonics) patentable at all by nature?• Yes: real, physical structures and devices solving technical problems

• “Very broad term” - any common characteristics relevant for patenting aspects?• Based on complex physical phenomena defined/controllable by means of

(often microscopic or nano-scale) structures, material properties, and material interfaces

• Often a single design target or optical function attainable using multiple structurally different solutions• How to define the invention to make it patentable (novelty, inventiveness, clarity,

sufficient disclosure, etc.)?• How to make circumventing the patent difficult?

• Terminology and definitions not always unambiguous and fixed→ To be taken into account when specifying the invention in patent claims and disclosing the invention in the description

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Photonics-related practical issues

What you need to know – Key takeaways

1.Functional definitions may be trickyStructural claim language preferable?

2. Sometimes patenting is not the only option• Novel fabrication methods for conventional

products• Indistinguishable structural features

3.Terminology in photonics evolves rapidlyDefinitions of terms and phrases into the

specification

Light-reflection means configured to reflect light...?

Functional claim language covers all structural alternatives Best to use functional claim language?

A fictitious exampleA smoke detector,

A fictitious exampleA smoke detector, comprising:- a sample reservoir in fluidcommunication with the ambient;

A fictitious exampleA smoke detector, comprising:- a sample reservoir in fluidcommunication with the ambient;- a substrate comprising ameasurement surface bordering thesample reservoir,

A fictitious exampleA smoke detector, comprising:- a sample reservoir in fluidcommunication with the ambient;- a substrate comprising ameasurement surface bordering thesample reservoir, the measurementsurface comprising a first region anda second region having an α-terpineolsurface concentration higher than theα-terpineol surface concentration ofthe first region;

Structural claim language

A fictitious exampleA smoke detector, comprising:- a sample reservoir in fluidcommunication with the ambient;- a substrate comprising ameasurement surface bordering thesample reservoir, the measurementsurface comprising a first region anda second region having an α-terpineolsurface concentration higher than theα-terpineol surface concentration ofthe first region; and- means for inducing a plasmonresonance at the measurementsurface;

Functional claim language

”Means for inducing a plasmonresonance…”• Functional claim language is allowed...

• Only if a photonics engineer would have no difficulty in providing some means of performing this function

• However…• if the application teaches that a function is to be carried

out in a particular way, without suggesting to any alternative means, and

• if a claim embraces other means or all means of performing the function…• then an objection may arise (insufficient disclosure).

A fictitious exampleA smoke detector, comprising:- a sample reservoir in fluidcommunication with the ambient;- a substrate comprising ameasurement surface bordering thesample reservoir, the measurementsurface comprising a first region anda second region having an α-terpineolsurface concentration higher than theα-terpineol surface concentration ofthe first region; and- means for inducing a plasmonresonance at the measurementsurface;

In surface plasmon sensors,optical means are used.

But how about electronbombardment?

A convenient solutionA smoke detector, comprising:- a sample reservoir in fluidcommunication with the ambient;- a substrate comprising ameasurement surface bordering thesample reservoir, the measurementsurface comprising a first region anda second region having an α-terpineolsurface concentration higher than theα-terpineol surface concentration ofthe first region; and- optical means for inducing aplasmon resonance at themeasurement surface;

Amendments to the claims

• As a rule, a patent or patent application cannot beamended to contain subject-matter extending beyond the content of the application as filed.• Support for all amendments in the application as filed

required• Varying support requirements in different jurisdictionsAmendments with literal basis often preferable

• Functional claim language may necessitate resorting to unexpected amendmentsInoptimal scope of protection?

A fictitious exampleA smoke detector, comprising:- a sample reservoir in fluidcommunication with the ambient;- a substrate comprising a measurementsurface bordering the sample reservoir,the measurement surface comprising afirst region and a second region having anα-terpineol surface concentration higherthan the α-terpineol surface concentrationof the first region; and- optical means for inducing a plasmonresonance at the measurement surface;wherein the measurement surface isconfigured to confine the plasmonresonance to the second region.

How are plasmon resonancesconfined?

Is this formulation OK?

How are plasmon resonances confined?

• “A localized surface plasmon (LSP) is the result of the confinement of a surface plasmon in a nanoparticle of size comparable to or smaller than the wavelength of light used to excite the plasmon.” (Wikipedia)• Localized surface plasmons are non-propagating

• Other possibilities?• Depends on the degree of “confinement” required

• In photonics, typically multiple ways of achieving any given effect existAgain, possibly insufficient disclosure?

Necessary degree of “confinement”?

• Can a propagating surface plasmon be confined?• Are plasmons confined by a continuous, rough metal

surface at the ends of pointy bits, e.g., spikes and edges?• Potential clarity issues

• Can you recognize and verify an infringement taking place?• Standardized experimental procedures?Enforceability?

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Functional definitions may be tricky

• Functional claim language• The positive: covers all structural alternatives• Potential issues

• Wish-type claims (result to be achieved)• Insufficient disclosure• Unclear phrases• EnforceabilityStructural claim language preferable?

• Maybe. However, there’s no cure-all.

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specification

Novel fabrication methods for conventional products

• You produce conventional lenses for sunglasses using a novel method

• One conventionally fabricated lens and another formed using your novel approach

• Indistinguishable lensesProtection of the

fabrication method as a trade secret?

Indistinguishable structural featuresAnother fictitious exampleA semiconductor structure,comprising:- a gallium nitride, GaN, substrate

Indistinguishable structural featuresAnother fictitious exampleA semiconductor structure,comprising:- a gallium nitride, GaN, substratecomprising a top surface

Indistinguishable structural featuresAnother fictitious exampleA semiconductor structure,comprising:- a gallium nitride, GaN, substratecomprising a top surface and anupper portion extending along thetop surface

Indistinguishable structural featuresAnother fictitious exampleA semiconductor structure,comprising:- a gallium nitride, GaN, substratecomprising a top surface and anupper portion extending along thetop surface, and- an epitaxial layer of indiumgallium nitride, InGaN, on the topsurface, the epitaxial layerextending from the upper portion;wherein the upper portion has athallium content, nTh, in a rangefrom 1 x 1013 cm-3 to 1 x 1014 cm-3.

Structural claim language

Is this formulation OK?

Indistinguishable structural featuresAnother fictitious example• Sufficient thickness of upper portion Th barely detectable

• Dynamic Secondary Ion Mass Spectrometry (SIMS)• In the product, max. thickness of upper portion 5 nmTh content too low to detect?

• In general, consider whether a competitor could and would reverse engineer your product• You must know the competition






specification

Terminology in photonics evolves rapidly• What is the difference between…

• Virtual reality (VR),• Augmented reality (AR),• Augmented virtuality (AV),

• Hybrid reality (HR),• Extended reality (XR), and• Mixed reality (MR)?

https://en.wikipedia.org/wiki/Reality–virtuality_continuum

Extended reality (XR)

Hybrid reality (HR)

Virtual reality (VR)

Basically, nowadays, these terms most often refer to different parts of the ”reality-virtuality continuum” of Paul Milgram in 1994.

Terminology in photonics evolves rapidly

• Terminology of fast-evolving technology areas is constantly evolving• Photonics is no exeption

• ”Mixed reality” defined with at least six differentdefinitions by experts still in 2019*• definition based on the reality–virtuality continuum• ”marketing/buzzword” & ” marketing mumbo-jumbo”

• In patenting, words are given their normal meaning in the relevant field at the time of filing, unless the words are defined otherwise in the description

*Speicher, Maximilian & Hall, Brian & Nebeling, Michael. (2019). What is Mixed Reality?.

A real-life example – US 9818228 B2 (Microsoft)• Claim 8 relates to a

“mixed reality display device”.• What is it?

• Definition of MR crucial for scope of protection

A real-life example – US 9818228 B2 (Microsoft)

A device including a see-through screen via which a physical, real-world scene augmented with computer-generated graphics may be viewed

• No explicit definition given inthe description for “mixed realitydisplay device”

• However, an implicit definition may be inferred:“[A] mixed reality environment can augment a physical, real-world scene and/or a physical, real-world person with computer-generated graphics in the physical, real-world scene viewed via a mixed reality display device.”

A real-life example: “Waveguide” (1/2)

• Claim term interpretation: “waveguide”, Example 1• USPTO Patent Trial and Appeal Board in Crayola LLC,

Petitioner, v. University of Cincinnati, Patent Owner.• Inter partes review of US 7,430,355

• Waveguide 184• Photol. feature 182

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• Claim term interpretation: “waveguide”, Example 1• Petitioner proposed:

• “one piece or multiple separate pieces of optically transparent material capable of propagating ultra-violet, violet, or blue light and having a refractive index higher than the surrounding environment.”

• Patentee disagreed and considered multiple pieces incorrect, and proposed that the meaning should be limited to• “single segmented waveguide”

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• Claim term interpretation: “waveguide”, Example 1• No definition given in the specification• Board referred to Fig 19A embodiment with waveguide 204

divided into two segments by a partition 207, e.g. an air gap• Also Merriam-Webster definition for “segment” was cited: “a

separate piece of something” • Board concluded the correct interpretation being the “one piece

or multiple separate pieces of optically transparent material…” proposed by the petitioner

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• Could have been avoided by having a proper definition included in the description!• And by omitting the air gap?


• Claim term interpretation: “waveguide”, Example 2• USPTO Patent Trial and Appeal Board in Arris Group, INC and

Source Photonics, INC. v. Cirrex System LLC• Inter partes review of US 6,208,783

• Filter 301• 1st waveguide section 302• 2nd waveguide section 303

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• Claim term interpretation: “waveguide”, Example 2• Petitioner referred to the specification of the patent itself

specifying:• “The term “waveguide” is used herein to refer to an optical structure

having the ability to transmit light in a bound propagation mode along a path parallel to its axis, and to contain the energy within or adjacent to its surface.”

• Patentee did not provide any alternative interpretation• The Board determined the interpretation being the one above

• Highlights the importance of definitions given in the specification (also when the patentee might want to use another interpretation…)

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Photonics patenting – something special or business as usual?• Summary

• Photonic solutions typically well patentable by nature• Typically no question of technical nature (cf e.g. software and AI)

• Careful consideration on what and when to patent• What is the purpose of the patent?• Whether or not you patent, the others most likely do• Enforcability?• Infringing party?• Possibility to keep at least part of the invention secret?

• How to patent• Method or device?• Functional or structural features?• Defining the invention not by the outcome but by the means to achieve it • Definitions of terms and parameters of particular importance

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Thank you for your interest!

[email protected]@papula-nevinpat.com

mailto:[email protected]:[email protected]

Slide Number 1Papula-NevinpatFrom your idea to your exclusive rightOur team – Jukka KorhonenOur team – Jorma Selin�� IPR (Patenting) in Photonics�OutlineWhy do you patent or don’t?Why do you patent or don’t? Why do you patent or don’t? Why do you patent or don’t? Why do you patent or don’t? Why do you patent or don’t? Why do you patent or don’t? Why do you patent or don’t? What’s happening in patenting right now? What’s happening in patenting right now? What’s happening in patenting right now? What’s happening in patenting right now? What’s happening in patenting right now? What’s happening in patenting right now? What’s happening in patenting right now? Photonics patenting – something special or business as usual? Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics patenting – something special or business as usual?Photonics-related practical issuesWhat you need to know – Key takeawaysWhat you need to know – Key takeawaysLight-reflection means configured to reflect light...?A fictitious exampleA fictitious exampleA fictitious exampleA fictitious exampleA fictitious example”Means for inducing a plasmon resonance…”A fictitious exampleA convenient solutionAmendments to the claimsA fictitious exampleHow are plasmon resonances confined?Necessary degree of “confinement”?Functional definitions may be trickyWhat you need to know – Key takeawaysNovel fabrication methods for conventional productsIndistinguishable structural features�Another fictitious exampleIndistinguishable structural features�Another fictitious exampleIndistinguishable structural features�Another fictitious exampleIndistinguishable structural features�Another fictitious exampleIndistinguishable structural features�Another fictitious exampleWhat you need to know – Key takeawaysTerminology in photonics evolves rapidlyTerminology in photonics evolves rapidlyA real-life example – US 9818228 B2 (Microsoft)A real-life example – US 9818228 B2 (Microsoft)A real-life example: “Waveguide” (1/2)A real-life example: “Waveguide” (1/2)A real-life example: “Waveguide” (1/2)A real-life example: “Waveguide” (2/2)A real-life example: “Waveguide” (2/2)Photonics patenting – something special or business as usual?Thank you for your interest!

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