European IP Law Firms’ Patenting Activities in Semiconductors

Published On: 2021-08-01|7.6 min read|

Semiconductors are at the heart of modern cutting-edge technologies starting from 5G and advanced computing to consumer electronics. They are currently on the R&D agenda of many firms across the globe. On the surface, innovators are always trying to turn their inventions into IP assets which highly accelerates patenting activities in the industry. According to USPTO, EPO, CNIPA, the number of semiconductor-related filings was on a stable rise during the last few years. Given the increasing demand for this technology, the probability is high that the number of applications in the area will continue to grow in the future.

The intensification of patenting activities can potentially represent a scalable business development venue for many IP law firms. Following the trend, IP Pilot decided to dive deeply into the topic. We specifically took the perspective of European law firms to give you a rough overview of the “state of the IP art” in this technological field and to help evaluate the potentials and opportunities that semiconductors can bring to your patent firm.

Our report, thus, covers the following questions:

  • What are the most recent worldwide and European filing trends in semiconductors?
  • Which European IP law firms took over most local and foreign semiconductors-related filings in the last years?
  • Which international law firms sent work in semiconductors to the European representatives? And who are the key decision-makers when it comes to international case exchange in this area?
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What are the worldwide and European trends in semiconductors?

Unsurprisingly, most of the applications in semiconductors originated from Japan, Korea, China, Taiwan, and the US (see Figure 1).
As for the country-wide trends, the share of patent publications coming from Japanese and American investors decreased by 12% and 6% in 2020. The number of relevant filings from China, Korea, and Taiwan separately grew by 8% and made up for the drop.

European applicants also proved to be active innovators in semiconductors last year. Figure 2 shows the breakdown of European patent applications by country of origin and reveals that EPO countries filed together around 28% of patent filings.

If to compare the recent figure to the one dated back to 2015 (see Figure 3), it is apparent that European firms somewhat lost their positions.

Interestingly, the volume of relevant filings from local applicants displayed an average 3% annual increase between 2015 and 2020 (calculation is based on the number of patent applications first published between 2015 and 2020 by the top 100 applicants at EPO).

The share shrinkage that happened despite stable growth can potentially be explained by an ever-accelerated increase in the number of patent publications from other countries such as the US, Korea, or Japan.

At the same time, Europe remained one of the most attractive markets for international applicants. Semiconductor-related companies such as Samsung, Intel, BOE technology, LG, and Philips were prominently present among EPO’s most significant applicants. Additionally, Figure 2 demonstrates that 62% of EP filings in semiconductors were from the most active countries in the field, including Japan, Korea, and the US.

Which European IP law firms took over most local and foreign semiconductors-related filings in the last years?

According to Table 1, European most prominent IP law firms such as German BOEHMERT & BOEHMERT, HOFFMANN EITLE, GRÜNECKER PARTG MBB, WUESTHOFF & WUESTHOFF, and British MARKS & CLERK were also the top representatives of semiconductors-related patent applications in the region. Unsurprisingly, the agents received a high volume of relevant filings from international applicants. For instance, BOEHMERT & BOEHMERT prosecuted patent applications for TSMC and Intel; HOFFMANN EITLE for Disco Corporation and LG; and MARKS & CLERK for Samsung and Lam Research.

German EPPING HERMANN FISCHER PATENTANWALTSGESELLSCHAFT MBH, French CABINET BEAUMONT, and BREVALEX also were among the top 10 between 2015 and 2020. They differ from the other leading IP law firms in the sense that they actively represented filings for local clients. Osram, Infineon, CEA (the French Alternative Energies and Atomic Energy Commission), STMicroelectronics, and Aledia were among their main applicants.

Who were the key decision-makers when it comes to international case exchange in semiconductors?

With respect to international case exchange, the prominent applicants in semiconductors were also the key decision-makers. Even though the decision-maker information is not present anywhere in the raw patent data, Patent-Pilot developed a unique algorithm that predicts it with a high level of certainty. For example, we can infer that Mitsubishi instructed the number of local Japanese firms to send cases to a single European representative, namely HOEFER & PARTNER; or that TSMC directed several Taiwanese agents to forward work to BOEHMERT & BOEHMERT.

Further, the two tables below demonstrate the top European IP law firms receiving the semiconductors-related cases from international agents. The only difference is the decision-maker. Table 2 shows the volumes for which sending representatives were free to select partners in Europe. Conversely, Table 3 reveals instances for which the applicants were the decision-makers behind the international case exchange. If to compare the two tables, it is pretty evident that the number of cases significantly differs. Corporations, therefore, proved to have the leverage to select foreign IP law firms to represent the original applications internationally.

Also, please note that in Patent-Pilot’s definition, cases are different from filings. One case includes all the filings within the same patent family represented by the single agent.

Further, in Table 4, we present the international IP law firms and the associated number of semiconductor-related cases sent to the European agents between 2015 and 2020. This data includes patent filings for which the sending representatives could select the partner firm abroad independently. It is the accurate volumes that a European IP law firm interested in stepping into the semiconductor business can get from the international representatives.

On the surface, in terms of the number of filings, semiconductors have not yet reached the scale of such technological fields as medical technology or digital communication (check out the report related to European IP  law firms’ patenting activities in medical technology to see the relevant volumes and trends).

To sum up, semiconductors are a vital technological area in the IP industry. According to the data presented in the current report, Asian countries, including Korea, Taiwan, and China, were at the forefront of the growth. As for Europe, it remains the hot spot for international applicants in semiconductors. At the same time, the share of patent filings from local applicants decreased over the last five years. European firms could not keep up with the speed of Asia and America, implying that the international inventors are potentially the better source of prosecution work in the area.
Prominent applicants guided the international case exchange in semiconductors. Therefore, to take over the work in the technical field, the IP law firms should potentially prioritize networking with the corporates (rather than with the agents representing original filings). Further, semiconductors are not yet as scalable as other technological fields in terms of volume of work. However, it can still represent a decent business growth potential given the increasing importance of and interest in the technology.

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