Semiconductor equipment companies face a demanding IP management challenge: the functions that create competitive advantage can change while patent applications are still under examination. New equipment generations, tighter process requirements and alternative technical solutions can give earlier inventions a different commercial significance. Keeping a portfolio relevant requires an ongoing exchange between product development, market observation and patent prosecution.

The practical difficulty is access to evidence. A competing machine may deliver a visible improvement in precision, throughput or process stability while revealing very little about how that improvement is achieved. High acquisition costs, restrictions on sales to competitors and the complexity of the equipment can make detailed analysis impractical. A protection strategy therefore needs to consider both the commercial importance of a technical function and the realistic possibility of identifying its use.

Practice-based questions give students in CEIPI’s IP management programmes an opportunity to examine these decisions in a concrete business setting. This case asks them to connect portfolio development with the realities of competition in specialized industrial technology markets. It also invites them to consider how confidentiality and technical measures that hinder reverse engineering can complement patent protection.

We are pleased to present this practical question with Marlo Sedlmair, Manager Intellectual Property at SUSS. Marlo reviewed the case and confirmed its high practical relevance. His comments highlight a central issue: when the internal workings of competitor equipment are difficult to assess, the ability to demonstrate infringement can become a decisive constraint on the value of a patent strategy. The following case uses an abstracted company scenario to explore that challenge.

Mini Case Study

A European technology company develops highly specialized equipment and process solutions for semiconductor manufacturing. Its systems combine precision mechanics, optics, sensors, actuators, process technology and increasingly sophisticated software-based control functions.

The company operates in technology markets with long development cycles and high customer requirements. At the same time, demand for new semiconductor architectures is accelerating the development of new equipment generations. Customers increasingly require higher precision, throughput, process stability and automation, while competing equipment suppliers continuously introduce alternative technical solutions addressing similar production challenges.

Over many years, the company has built a substantial patent portfolio around its equipment and processes. At any given point in time, this portfolio includes both granted patents and applications that are still progressing through examination. Some of these applications were drafted several years earlier, when the relevant products, customer requirements and competing solutions looked different from those visible in the market today.

This creates an important strategic opportunity as well as a challenge. Current competitor products may reveal which technical functions have become particularly valuable to customers. Similar process results can often be achieved through different combinations of sensors, control logic, positioning mechanisms, software functions and physical process steps. In many cases, the internal workings of competing equipment are extremely difficult to assess from the outside. Acquiring a competitor’s machine for analysis may be impractical because of its high cost, restrictions on sales to competitors and the complexity of the equipment. These limitations make it difficult to establish how a competing solution works and to demonstrate potential patent infringement.

The company therefore needs to decide how its patent portfolio and ongoing prosecution activities should respond to a rapidly evolving competitive environment. The objective is to create patent positions that remain technically meaningful and commercially relevant across future equipment generations and alternative implementations.

Practical Question

How should an established semiconductor equipment company develop its patent strategy when new product generations and competing technical solutions continuously change which functions are commercially most relevant?

In particular, consider:

How should the company identify the technical functions for which patent protection could have the greatest competitive and economic value?

How should existing patent families and pending applications be reassessed when later market developments reveal new implementations or alternative technical solutions for previously disclosed concepts?

Which claim features are strategically preferable when the practical value of a patent also depends on whether the relevant technical implementation can be identified and demonstrated in competing equipment?

How should broad platform-oriented protection and more specific patent positions around commercially important process, control and automation functions be combined?

Which practical protective measures, including confidentiality and technical complexity that hinders reverse engineering, should complement patents when difficulties in proving infringement limit their practical enforceability?

Why This Question Matters in Practice

Semiconductor equipment markets combine rapid technological development with patent procedures that may extend over several years. The competitive relevance of a technical function can therefore change substantially between the initial filing of an application and the later stages of examination.

This becomes particularly relevant when several specialized suppliers compete to solve the same demanding manufacturing problem. New competitor products can reveal which technical functions customers value and which alternative implementations have become commercially successful. Existing patent applications may contain technical disclosure that remains highly relevant to these later developments.

The practical value of patent protection also depends on how a claim relates to products in the market. Certain technical features may be observable through product documentation, testing or analysis, while others may concern internal process details that are difficult to establish externally. These differences can influence the economic usefulness of alternative claim strategies.

For IP managers, portfolio development therefore requires a continuous connection between R&D, prosecution strategy, product development and competitive observation. Patent portfolios should evolve with the market so that available technical disclosure is translated into protection around functions that remain relevant to future products, alternative implementations and competitive positioning.

These constraints also make practical protection measures part of the strategic assessment. Confidential handling of process knowledge and technical measures that make reverse engineering more difficult may help preserve advantages that cannot readily be defended through observable patent features. Students should assess how these measures can work alongside patents while remaining compatible with equipment operation, maintenance and customer requirements.

Here you can find the lecture “Competitive Patent Strategy in Semiconductor Equipment” accompanying this practical question:

CEIPI Lecture

Marlo Sedlmair

Marlo Sedlmair is Manager Intellectual Property at SUSS, a supplier of equipment and process solutions for semiconductor manufacturing. His responsibilities include aligning IP strategy with business objectives, developing the patent portfolio and supporting research and development teams in identifying protectable innovations. His work also encompasses the assessment of third-party rights and the organization of IP processes and resources.

Marlo holds a Master of Science from the Technical University of Munich and an LL.M. His professional development combines technical training with intellectual property law and management. He worked as a patent engineer at SUSS before moving into IP management in 2023. His experience connects the technical details of semiconductor equipment with decisions about protection priorities, portfolio development and the commercial relevance of intellectual property.