Patenting an invention is a complex undertaking across all sectors – but there are particular issues that organizations operating in the tech and engineering fields need to contemplate as part of their global patent strategy. In our fourth installment of our "Lifecycle of a Smart Idea" series, which is dedicated to helping you maximize opportunities and minimize risk when taking your innovative ideas to the global market, members of Gowling WLG's global intellectual property team examined key patent considerations for tech and engineering businesses, such as:
Examining the scope of patent protection across jurisdictions, specific disclosure and industrial design requirements, the impact on FRAND (fair, reasonable and non-discriminatory) licensing, and patentability concerns for tech – including software, AI and blockchain.
Standards and pools
Exploring the complexities and risks associated with pooling patents and providing standard licenses.
Taking a look at what's next – from new technology and the Internet of Things to other developments on the horizon.
What we learned
Acknowledging that tech is everywhere in the modern world and connectivity has your household appliances talking to each other and your wrist watch providing you with medical diagnostics, we opened by looking at the patentability of software around the world.
What emerged was a picture of a very harmonised approach; software can be patentable pretty much anywhere as long as it is causing a beneficial technical effect. Our global panel from our offices around the world confirmed that position in each of Canada, the USA, the UK, the EU and China. Jason Yang in our Beijing office emphasised the availability of both patents and utility models in China which can be very useful in this area.
Our panel considered why there are so many patents in the tech world, and how this creates options in the context of the standards bodies and patent pools which are common in this field of technology. Alex Brodie from our London office pointed out that subject to compliance with standards and consequent essentiality, you can choose to put some but not all of your patents into a patent pool, whether run by a Standards body like ETSI, or just a pool assembled by cooperating market players.
We learned from Kevin O'Neill in our Ottawa office that, because the wording of Standards is often not set when patents are first applied for, using continuations or divisionals can allow you to sculpt your patent into a form which is compliant with the standard as things progress.
The panel looked at recent developments in the field of FRAND licences and how case law is developing around the world. Jonathan Konietz in our Munich office updated everyone on some key recent decisions in Germany, and Alex Brodie pointed out that the UK has gone further than anyone else in offering to set global FRAND rates in court proceedings.
We looked at the Internet of Things and Jonathan from Munich talked about the impact of connectivity on previously engineering focused industries like the automotive sector, and the "fourth industrial revolution" arising from smart devices and wider connectivity.
Summing up with one key point each, Kevin emphasised the merits of starting with a wide range of patents in Tech developments, which might be thinned down over time. Alex talked about the creativity of remedies in the UK courts, while Jonathan re-emphasised the importance of finding a technical effect when converting software into patents. Jason cautioned that costs of maintaining a wide portfolio can be substantial over time and that it should be "pruned" regularly to avoid paying fees for redundant patents.
To conclude, our panelists each left us with one thought for the road:
Kevin O'Neill, Canada
"In Canada and the US with careful consideration and drafting at the outset, it is possible to protect software, whether it's AI, block chain, cyber security, IoT, 5G or any other buzzword. Unless you are buying them, your patents are going to be dictated by what you develop, so if you are developing new products or technology, have some process in place for evaluating whether those new ideas are worth patenting. Not all ideas will be worthy of an application, not all applications will become patents and not all patents will be monetized, so you want to ensure your funnel opening is large enough to consider all possible ideas – good and bad. You want to ensure you capture the good idea that ends of being the money making patent."
Alex Brodie, United Kingdom
"The UK is creative with its relief. It will take a pragmatic and commercial approach to justice and is flexible. It is also blessed with a truly expert and neutral set of patent judges. The venue works well whether you are claimant or defendant.
BUT the best strategy is multi-faceted."
Jonathan Konietz, Germany
"In Germany, there have been a lot of highly interesting and important developments with respect to FRAND licensing, including a first judgment by the highest court which might harmonise the interpretation of the Huawei/ZTE decision in Germany, at least to some extent. So if you're involved in SEP litigation in Germany or are considering Germany as a forum, keep that in mind make sure to stay in the loop."
Jason Yang - China
In China, almost all hi-tech patent applications are patentable if they are drafted correctly, and in general, the patent office welcomes newer technologies. China is a market very different from Europe or North America, so the filing strategy and patent portfolio in China need to be examined differently as well. In addition, unlike most other countries, Chinese patents need to be maintained annually – the fees will increase with time and it can be substantial for the last few years. Therefore: Evaluate your patent portfolio in China frequently.
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This is the fourth installment in our "Lifecycle of a Smart Idea" series, dedicated to helping you maximise opportunity and minimise risk when taking innovative ideas to the global market. Watch more from the series »