IP Protection for New and Emerging Technologies

July 16th, 2015
3D Printing, IoT, Patents/IP

by Ben Warlick, IP Litigation Attorney at Morris, Manning & Martin, LLP

My colleague Bryan Stewart and I recently hosted a Lunch & Learn at Atlanta Tech Village.  We discussed the need for an intellectual property strategy that broadly considers copyright, trademark, patent, and trade secret. The Lunch & Learn focused on examples of IP issues in 3D printing, the Internet of Things (IoT), and cloud-computing.

IP Protection Strategies Should Be Considered Early In Business Development
A company’s overall business strategy should include an intellectual property strategy, even if the strategy is not to seek formal IP protection.  For companies leveraging emerging technologies, IP protection should be considered to protect ideas and inventions from competitors and provide important value to investors.

There are several areas of intellectual property protection.  Briefly, copyright protects original works of authorship, such as books, movies, paintings, software, sculptural works (such as 3D models), website content, and graphical user interfaces.  Trademark protects brands or product names.  Patents protect the inventions behind a product.  Design patents protect the non-functional elements of a product, particularly the “look and feel.”  Trade secret protects information that has economic value because it is not generally known.

Although whopping utility patent damages awards are often in the news, the other forms of IP protection are also important.  This year, an appellate court upheld most of a $1 billion jury award finding that Samsung’s Android phones infringed Apple’s patents, including design patents for Apple’s graphical user interface.  Trademarks are critical to protect new and valuable brands, such as Facebook.

Asserting IP Rights Can Be Powerful
Simply sending a cease and desist letter can be a simple and effective means of asserting IP rights.  Earlier this year, the dancing “Left Shark” from Katy Perry’s Super Bowl halftime show became an Internet sensation.  A designer uploaded a 3D printable Left Shark to Shapeways, a 3D printing marketplace.  Soon after, an attorney for Katy Perry sent a cease & desist letter to Shapeways, asserting that the singer held a protectable copyright interest in the image.  Shapeways initially took down the design, but later allowed it back up in response to a letter from the designer’s attorney, explaining that costumes are generally not copyrightable unless they include separable artistic elements.  This example shows that a cease and desist letter asserting IP rights can shut down unfair competition, but only if the idea is properly protected.

Patent Filings In Emerging Technologies Have Increased Substantially
Several key 3D printing patents assigned to Stratasys and 3D Systems have expired in the last few years, opening the market to new innovations.  3D printing start-ups have filed many patents recently to protect new and incremental innovations.  Startups in these emerging technologies are using patents to protect their ideas and carve out a protected space.

Recent Court Decisions Have Shifted The Rules For IP Protection
Companies that are working on new and emerging technologies need an IP strategy that considers recent changes to the rules for IP protection.

An appellate court recently held that Java APIs are copyrightable, and Google may be liable for Android’s infringing use of these APIs.  This decision is a concern for any software, but particularly IoT devices that are designed for compatibility with APIs such as Google’s Nest.  Developers should review and follow the terms of service on any API.

This year the Supreme Court held that Limelight Networks was not liable for patent infringement because it did not perform every claimed step of a patented method for delivery of electronic data using a content delivery network.  Limelight carried out several claimed steps but its customers performed a step of “tagging” content.  Inventors seeking patents on cloud-computing technology should keep in mind this “single entity” rule and should seek claims that include only the steps a possible competitor may perform.

In sum, to ensure best protection, it is important to think broadly about IP early in business development, considering copyright, trademark, patent, and trade secret.