Patents in the microelectronic industry have two main goals: to claim the key inventive concept clearly, and to claim it broadly enough to cover use of the invention out to the boundaries of the prior art. Identifying and disclosing the key inventive concept in a precise form in the patent application avoids unnecessary rejections during prosecution due to Examiner confusion, and can be essential to winning during licensing and litigation. The patent owner’s rights to exclude infringers are strongly demarcated by how well the patent establishes the breadth of the invention. Broad claims must be well supported by detailed specifications. Consequently, terms used to disclose the invention must be defined accurately to rule out erroneous assertion of the prior art.
Attaining these goals requires discussing several topics with the inventor. Patent practitioners should recognize that most inventions in the microelectronic industry fall into two categories. The first, and largest, category is inventions to solve a specific challenge encountered by the inventor in the course of his job. These inventions tend to be detailed and narrowly focused on the solution, and little thought has been given to how broadly it may be applied. Once the challenge has been sufficiently solved to allow the inventor to get “back to work”, not much effort is put into applying the invention to other situations. The second category is populated by cases of inventors having inspirations for novel ideas that could be applied to a very wide landscape of human activities. These inventions tend to inspire overly broad visions of implementations.
Inventors in microelectronics tend to be acutely familiar with industry processes and designs for their products, including their own organizations as well as their competitors. However, experience in prosecuting applications has demonstrated that few inventors are aware of prior art references that the Examiner will find, such as patents for inventions that have not seen widespread use in the industry. A patentability search has become a sine qua non in the last ten to twenty years, given the rising cost of obtaining patents and the importance of perfecting the patent owner’s rights.

PREPARATION FOR THE DISCUSSION

The patent practitioner has several tasks to prepare for the inventor discussion. Each is time-consuming, but will pay dividends all through the application preparation process.
First, the problem being solved and the key inventive concept must be identified clearly, in patentable terms. A common situation is that the solving the problem gets a device into production or generates significant revenue. In such a case, enthusiasm for these benefits may obscure the patentable aspect of the invention. In other cases, the solution may be wrapped up with good engineering practices that are tangential to patentability. It is the practitioner’s job to extract the patentable feature from the solution. The inventor’s disclosure materials should provide the basis for this, and the patent practitioner’s experience is needed to complete the articulation of the problem solved and inventive concept.
Next, the patentability search is run to discover 102 and close 103 references. The search should include keyword searches, a natural language search, and a non-patent literature (NPL) search. Patent search services commonly do a good job of accessing issued patents and published applications, both domestic and foreign. The NPL search demands more ingenuity and resourcefulness from the practitioner. Many circuit design inventions, in particular, are disclosed in journal publications and conference proceeding, rather than in patents documents. The particular search medium depends on the specific field of the invention.
Any material references should be saved, of course, and the relevant figures and text highlighted for the inventor discussion. The highlighting will enable the inventor to avoid wading through an obtuse patent, and more quickly grasp the conflict with the prior art.
At this point, it is a good idea to list any missing details for making or using the invention, to be resolved during the discussion. These missing details should rise above the level of knowledge of a PHOSITA, and should be should be critical to meeting the enable requirement.
A list of proposed embodiments will help delineate the application. For starters, the embodiments expressly disclosed by the inventor should top the list. After these, the practitioner’s experience can guide the conception of other, proposed, embodiments, which apply the invention more broadly, taking cognizance of the prior art just uncovered. The proposed embodiments include alternate structures of components, alternate processes, and alternate materials. Examples of alternate structures include buried oxide layers in place of doped buried layers, sinkers in place of deep trenches, damascene copper interconnects in place of etched aluminum interconnects, shallow trench isolation (STI) field oxide in place of local oxidation of silicon (LOCOS) field oxide, or bump bond pads in place of wire bond pads. Examples of alternate processes include deposited silicon dioxide in place of thermal oxide, atomic layer deposition (ALD) in place of sputtering, chemical mechanical polish (CMP) in place of plasma etch back, additive processes (ink jetting, etc.) in place of photolithographically defined layers, single damascene in place of dual damascene, or atomic layer etching (ALE) in place of wet cleans or sputter cleans. Examples of alternate materials are numerous. Dielectric materials in the interconnect layer stack can include silicon dioxide-based materials ranging from stoichiometric silicon dioxide to low-k material such as organosilicate glass. Etch stop layers can include silicon nitride to silicon carbide, with optionally some oxide. Protective barrier layers can include polyimide to silicon oxynitride to aluminum oxide. Embodiments with alternatives are important for establishing possession of the invention, and for eliminating grounds for restricting the scope of the claims to the one or two original embodiments.
Lastly, the independent claims are outlined, consistent with the prior art and the embodiments. The claims should be presented in plain English, rather than “Patentese”.

SETTING UP THE DISCUSSION

The product of all the preparation work is sent to the inventor well ahead of the discussion, to give the inventor time to absorb the prior art findings and consider the questions to be resolved. A clear agenda will motivate the inventor to have answers prepared in time for the discussion. Another benefit of laying out the plan to the inventor is minimizing surprises during the discussion.
The agenda includes:
Agreeing on the problem being solved and the key inventive concept.
Reviewing the relevant aspects of the material prior art.
Discussing the embodiments, and deciding which embodiment, options, and details fall within the scope of the invention.

TIPS FOR A SUCCESSFUL INVENTOR DISCUSSION

Discuss the problem being solved and the key inventive concept. Reach a consensus on why the key inventive concept is patentable. If there are other aspects of the solution to the problem that are technically impressive, but do not contribute to patentability, explain why they are not part of the independent claims. Note that these aspects may be manifested in dependent claims.
Go through the prior art in as much detail as needed to make clear the limits imposed on the scope of the patent application. The highlighted figures and text will concentrate the inventor’s attention on the overlap between the reference and the invention. In most cases, the reference will not be section 102 prior art, and the inventor may question its applicability. It is often necessary, with new inventors, to explain the concept of obviousness and how the USPTO applies more than one reference under section 103.
Explain the importance of filling in missing details or steps in the invention. Many inventors are not fully up to speed on the enablement and written description requirements. The necessity of a complete disclosure may be couched in terms of potential loss of the patent during litigation, which may be found compelling.
Review the proposed embodiments and obtain inventor feedback. In particular, have the inventor comment on the alternate embodiments. Some inventors are hesitant to endorse embodiments that use alternate structures, materials or processes beyond their original disclosures. The patent practitioner can point out that the patent holder is entitled to coverage that is more comprehensive than originally projected, but the inventor may not be sufficiently persuaded. One way of bringing home the importance of extensive scope is to ask: If a competitor copied your invention using the alternate structure, material, or process, would you consider your patent to be infringed? Viewed in this light, most inventors will understand the value of broader embodiments.
Re-summarize the scope of the independent claims, and outline the dependent claims. This may entail additional discussion, as the inventor’s concept of the scope may have changed after thinking about the specific embodiments.
Lastly, give the inventor a rough schedule for filing the application. Note any delays that are part of the process, such as obtaining drawings, review by the client’s patent department, etc. The goal is to leave the inventor with a good grasp of what to expect between the discussion and filing the application.