Simon Borger, a physicist turned patent attorney, is interviewed by Yuval Boger. They discuss the evolving intellectual property landscape in quantum technologies. Simon shares insights on global patent trends, the role of startups versus large companies, and the challenges of filing patents for quantum innovations. They explore how to balance academic publishing with IP protection, the rising influence of European filings, and the surprising nuances of Chinese patent strategies, and much more.
Transcript
Yuval Boger: Hello Simon, and thank you for joining me today.
Simon Borger: Hi Yuval, thank you very much for having me on your podcast.
Yuval: Of course. So who are you and what do you do?
Simon: So my name is Simon Borger. I live in Germany and I studied physics some many years ago. And went on to do a PhD and a postdoc and then ended up in IP and becoming a patent attorney in Germany and working worldwide because patent law is so harmonized across the globe. Yeah, working on patents and recently for the last two or three years I’ve also been working a lot in quantum technologies and this is what I particularly like as a physicist. I like the deep tech portfolios, the deep tech inventions that blow your mind a little bit.
Yuval: What are you seeing in patents related to quantum? Do they come primarily from large companies or small companies? Do they focus on a particular geography? Do they focus on a particular area? What can you share about what you’re seeing in the IP landscape?
Simon: So regarding filers, applicants, one can see strong tendencies like that. Of course the US, they are ahead of everyone else. And the Chinese are filing in great numbers and then there are the Europeans, the Japanese and the Koreans also who file applications. The Chinese applications are sort of a little bit of an unknown because they seem to be filing a lot in China but not quite so much than abroad subsequently. And the US, they are filing very much sort of worldwide and they have been doing that for 20 years and the Europeans have been picking up only sort of in the last five to ten years and they are gathering speed.
Regarding technological areas, I mean everything is represented. We have quantum computing, we have quantum communication, we have algorithms and simulation. So basically it’s the whole field that you can find. Of course some, when it comes to hardware, some technological solutions might be fashionable at one moment and you see a lot of applications coming out, a lot of filings. We directed at a certain hardware solution but in general, yes, it’s fairly spread out and well distributed across the whole, across the technological, what do you call them, the technological platforms as well as in the vertical directions across the stack from hardware to algorithms.
Yuval: You mentioned algorithms and so I’m wondering, had it not been published publicly, could say Shor’s algorithm could have been patented? Would you, if you’re a professor at MIT and you’ve come up with this new algorithm, would your recommendation be to patent it before publication or do something else?
Simon: So Shor’s algorithm itself is a very, just purely mathematical method. So that as such cannot be patented or protected, neither in the US nor in Europe nor elsewhere because these kinds of discoveries are excluded from patent protection by law.
But what can be protected would be for instance, a certain implementation of Shor’s algorithm on a hardware platform, be it atomic quantum computing or photonic or whatever. If you really sort of adapt maybe your hardware platform to the algorithm, to Shor’s algorithm in this case, so that it works and that you’ve come up with an output, a solution, that will be possible. So we cannot, that’s always the case, we cannot protect something mathematical, something abstract and theoretical. There always has to be this application in the real world, something basically that, yeah, something in the physical world. There needs to be some physics involved, not only the mathematics.
Yuval: I wanted to ask you about geography. When I was running startup companies, we would file a provisional patent in the US and then when it came time to file the full utility application, there was always the challenge in what geographies we want to do it and of course how much money we want to spend doing that. Europe is one thing, do we file in China, do we file in Japan? What do you recommend to your clients?
Simon: Oh, really it depends on where the markets are for one. Second, where if the patent or the IP concerns devices, where they are produced and maybe also where competitors are. So those are probably the three main aspects one should keep in mind. But of course it’s costs as well. A little startup might mainly be concerned with just protecting itself against others, so keeping, maintaining its own freedom to operate, to work on its own solution. And a big company like IBM might want to patent something worldwide and scold anyone who might want to use a little idea they have patented. So yeah, it really depends on the size of the company, it depends on some strategic questions that need to be answered first before you make a decision.
Yuval: I’m curious about market dynamics for patents since quantum computing has been around for a while but certainly in the last few years much more activity and much more money going into it. Do you see substantial growth in the number of filings, do you see sort of a tapering off as the industry matures, do you see patent trolls that are trying to do stuff with quantum patents?
Simon: So what we see in the numbers is an explosion, it’s exponential and it’s going up and up and up and so far there is no flattening off, there is no decline. So no, it’s really just, it’s booming at the moment in this area. And as I said, it’s the US who’s leading the field.
So far we have not seen any trolls or so, it’s really, I believe there are too few use cases at the moment or too few technologies that are really used in a broad way so that any troll could come and say, okay, let’s buy those patents and ask for some license fees. So no, probably the technology is not mature enough and old enough for patent trolls to be around.
Yuval: And similarly, have there been cases of quantum-related patent litigation, anything of substance or is it too early for that?
Simon: I would also say it’s too early for that because I don’t know of any case. Patents have been granted, so of course there are patents around already. But litigating a patent portfolio also requires a lot of money. And so far, I would say the field is dominated by startups that have investment capital and they don’t have such deep coffers so that they would go and start litigating their rights. So I think it’s really simply not old enough yet, mature enough, so we will have to wait a little to see these kinds of things happening.
Yuval: I had a teacher many years ago that told me that to teach geometry, you don’t need to be a triangle. And so the question is, do you need to have a PhD in physics to be a patent attorney for quantum?
Simon: So this is a really good question because let me say to begin with, in my professional life, I tend to get confronted with anything. But of course, it is difficult for me to do something in the pharmaceutical area. So in law firms, then there are specializations, of course. The chemist will do more chemistry-oriented things and the physicist will do more physics-oriented things. So, and it is demanding also in the respect that even if I do physics related stuff, in many cases, what I know from my studies is not detailed enough for me to understand everything. So I always have to do a little bit of my own research to get a grasp of the invention that is to be protected. So yes, it does help if you want to do quantum technologies that you’ve studied physics, it does definitely help. But of course, anyone could, I mean, if you sit down as a biologist and if you sit down and do your study, then of course you could also do that if you acquire all the knowledge that is necessary.
But I mean, the challenge in this professional area is that you need to know both the legal stuff and the technological stuff. And you sort of have to keep on top of both domains during your professional life, which is quite demanding, but at the same time also exciting. And yes, so the more knowledge you have about something, of course, the easier it is to have the foundations to have the knowledge necessary to do the work.
Yuval: I want to focus for a second on smaller companies, let’s say companies with fewer than 100 people. And I want to ask you, how should they set up the process of identifying innovation and deciding what patents to file? Is it that they get together once a year and say anyone had any invention in the past year? Or is it, do they need a chief patent officer? How would you recommend setting up the process of identifying and filing IP on quantum?
Simon: Oh, that is a difficult question. Obviously, companies develop their own cultures in this respect. And it always depends also on, I mean, we’re talking about startups now. Then of course, the people who give the money, they want to see patents in order to have a better feeling about where they put their money. So at the beginning, startups might want to acquire IP rights for the sake of protecting their core technology, but also for getting some money and some funds. Then, of course, these young companies, they will know their market and they will know their competitors and they will know what their core technology is. And they will, of course, I would recommend at least, they will of course try to really protect the core technology, what is their USP, their unique selling point, and then build a portfolio around that to keep competitors off their protected technology.
Whether it’s now once a year or whether it’s an ongoing process, that probably depends on the startup. I would recommend probably something more continuous than once a year. And if the company is large enough with 100 people, probably they should have someone who is responsible for IP so that they have someone who’s continuously working and talking to the researchers in the startup.
Yuval: A lot of quantum companies have roots in academia and maybe sort of an instinctive desire to publish their developments. What should they do regarding IP and publication?
Simon: So, I think, now speaking from a European standpoint of view, the Europeans definitely have to do their homework compared to the Americans, to the North Americans, because people tend not to think about patents and IP so much as in America.
So, first of all, I would do work on the mindset of people in Europe, and probably that requires some teaching and so on. But I think that in the end, one could achieve a state in which people’s mindsets, in which people know that publishing results is not so different from filing a patent application. If you know the core concepts and sort of draft your publication in a way, that is then easy to convert into a patent application. That, of course, mostly is not the case. And when I get a manuscript, it makes it really, really difficult to convert that often into a patent application.
So, sorry, I think I’ve lost the thread. What was your question again, it was about?
Yuval: My question was about people coming from academia have a desire and tendency, and sometimes that’s how they get measured in publishing, and how should they think about publishing in the context of not revealing IP before it’s filed or things related to it.
Simon: So, as I said, very much in Europe, it’s a matter of mindset. Of course, some people do research that is so far off any kind of application and they don’t really need to think about it.
But if we talk about researchers in quantum technologies with sort of real potential applications, then they should really have this in mind and they can make their life and the patent attorney’s life a lot easier by drafting their manuscript in certain manners, by maybe talking with patent attorneys or with the IP department of the university, of the research institution, early enough. It requires sort of a management. And if it’s done well, I guess, I believe it’s not too difficult to achieve good results. So, yeah, I would recommend that people really have this in mind and know what patents are about so that they can streamline the process.
Yuval: You’ve been doing this for a while, and so I’m curious if there’s something that you’ve learned that’s new over the last, say, six to 12 months about the IP landscape in quantum or things related to it.
Simon: About the IP landscape itself, not so much, except that there are positive signs regarding European applications. They are going up, and they are going up more so in a stronger proportion than, for instance, the US applications or Chinese applications. They are still going very strong than the US applications, but the Europeans have sort of, they are increasing their share of the cake. That’s something one can see in the numbers, at least the most recent numbers. Otherwise, I’d say my learnings have been mainly really in the technological area. I learn every day about very basic quantum physics, about the different hardware platforms, about algorithms. It’s an ongoing process, and I think it’ll never come to an end, but that’s also the nice thing about it. I sometimes feel as though I’m back at university having to sit down and look at a Hamiltonian and how you solve it and so on in order to understand what we’re talking about. So the most learnings are really at the moment when I work in quantum technologies, they are really in the physics, in quantum information, quantum algorithms, but also all the technologies that are around it, like material science, semiconductors and so on. It’s a vast field, and yes, you really have to learn every day in order to work in this field.
Yuval: Earlier you mentioned that many Chinese patents are filed only in China. What’s your explanation for that? I mean, if the patent is valuable, wouldn’t you want to file it at least in the US or certainly in the EU?
Simon: Let me state ahead that I do not know too much about that, or I do not have a complete picture of the Chinese IP landscape. What I have heard is that in China there are certain incentives set by the government that if they file patents, they get some kind of tax reductions or so, or funds. So there is a motivation to file patents in China, as far as I know, but I do not know whether this then extends to international applications beyond China.
That is for one, though, the first thing that I’ve heard about China.
The second thing is, whenever I’ve had a Chinese patent or patent application cited in the examination of some other patent application, the Chinese patents tend to be very, very short. I mean, it’s something like two A4 pages and with a very basic, very reduced description of the invention, so that you can hardly, you don’t really know what is going on and how this document that has been cited, how it really contributes to the field. Those are the two things I can say, but I must say I’m not an expert on Chinese patent applications.
Yuval: As we come to the end of our conversation, I wanted to ask you a hypothetical. If you can have dinner with one of the quantum greats, dead or alive, who would that be?
Simon: You know, recently I’ve been studying a little bit about Bell States and I also did a little bit about reading about John Bell’s life and I think I would really like to have a dinner with him and discuss a few topics with him. He seems to be a really very interesting person. His work on Bell States and correlations and comparing quantum physics to classical physics is very interesting, I find. What people also don’t know is that he didn’t only work in quantum physics, also in high energy physics. He’s written a few very interesting things also on special relativity, so I think he would be a very interesting person to have a discussion with.
Yuval: Wonderful, Simon, thank you so much for being with me today.
Simon: Thank you, Yuval.