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48 EE|Times EUROPE

OPINION | THE INDUSTRY
regional patent offices, after which it gets an
EU Chips Act: Key officially recognized filing date. Ultimately,
this information is made public, providing a
clear record of what a company has developed
Intellectual Property and when the development occurred.
Second, new developments may be kept
as confidential know-how, often referred to
Considerations as trade secrets. Trade secrets may be more
appropriate for ideas that can’t be
reverse-engineered, such as certain
semiconductor-manufacturing processes.
By Andrew Thompson and Mark Lubbock, EIP The problem with trade secrets is that many
companies do not adequately document them,
making it difficult to demonstrate what was
The European Chips Act is the EU’s developed and when. This can cause problems
response to the global chip shortages when an SME is fundraising or being sold;
we’ve seen since the onset of the registered rights like patents are generally
Covid-19 pandemic. The legislation easier to assess than undocumented know-
proposes a series of initiatives to support how. It is therefore good practice to keep an
semiconductor R&D and manufacturing internal record of important trade secrets,
in the EU, as well as a package of public similarly to the record-keeping done for filed
and private investment worth up to patents.
€43 billion. It is also good practice to keep records of
The act is currently making its way through the EU’s legislative process. It was first put to other relevant IP rights, such as copyrights
paper by the EU Commission in February 2022 and will shortly be debated in the EU Parliament. on embedded software code or design rights
The act is expected to become law in the first half of 2023. covering circuit topography.
Semiconductor companies operating in the EU need to start thinking about what the Chips Act If there is a likelihood that your company
means for them. While most companies will find parts of the legislation that will support their will engage in collaborative R&D under
businesses, they will need to consider various legal issues, not least with respect to intellectual the Chips Act, it would be good practice to
property. begin reviewing your IP documentation now.
This article highlights some of the key areas that semiconductor companies should be think- Be clear about which technologies in your
ing about ahead of the act’s coming into force. portfolio are or should be patented and which
are being kept as trade secrets, as well as any
DOCUMENT YOUR IP technologies that may be protected by other
A main theme of the Chips Act is collaborative R&D. The EU is keen for companies around rights. Ensure that any technology you wish
Europe to pool their expertise to develop semiconductor technologies that can compete on the to patent is filed before you undertake any
global stage. Under Pillar 1 of the act, collaboration might occur through a proposed virtual collaboration activities, and confirm that
design platform or through new pilot lines. Companies will need to consider what happens to your register or trade secrets are up to date.
their intellectual property when they take part in this sort of collaborative R&D. In addition, it is important to ensure that any
Collaboration agreements typically define background and foreground IP. Background IP is disclosures made before or during a collabora-
the IP owned by each company prior to entering the agreement, and foreground IP is the IP tion are subject to enforceable nondisclosure
developed as part of the collaboration. It is important for companies to be clear about the extent agreements.
of their IP and the scope of the collaboration. Preferably, this should be recorded as part of the
collaboration agreement, to reduce the chances of disagreements between the parties. OWNERSHIP OF COLLABORATION-
New technical developments are typically protected in one of two ways. The first is a patent DERIVED IP
filing. Patents are an inherently effective way of documenting ideas, as the idea must be ade- Who owns IP developed as part of a collabora-
quately described in a patent application. That application is then filed at one of the national or tion? Ownership of foreground IP is typically
defined by the collaboration agreement. This
ensures that ownership is dictated by the
intentions of the collaborators, rather than
being determined by applicable national laws.
Typically, each party would own particular
parts of the IP, depending on the technology,
with licenses back to the other parties. The
Chips Act doesn’t include provisions related
to IP ownership; however, in its Staff Working
Document, the EU Commission has set out
some principles it expects to apply. In short,
1
strong IP protection for individual compa-
nies will likely be watered down. Companies
that wish to obtain funding or other bene- IMAGE: SHUTTERSTOCK
fits may be expected to share IP with other
participants and may be required to enter
joint-ownership arrangements.

MARCH 2023 | www.eetimes.eu