Wearable Tech: Intellectual Property Opportunities, Risks

In wearable technology, product development converges with information and communication technology, presenting new opportunities for patents, as well as new risks, according to legal experts.

In a recent webinar, Hogan Lovells, an international law firm with expertise in intellectual property for emerging technology, shared insights on IP for wearable technology. Leading the webinar were Sahira Khwaja, Jason Lohr and Katie McConnell of Hogan Lovells.

Wearables are not only smart watches, but they include a multitude of new products ranging from health monitoring devices to self-lacing sneakers. According to the webinar, wearables constitute a convergence of product development and service provision, blurring the boundary between physical products and services.

“There is a lot of convergence in this sector between different aspects of technology: computing and mobile device technology, wireless technology and the internet, GPS technology, health aspects in a number of wearable devices, genomics, health informatics, data analytics, but also brand and fashion-related aspects, because these are things that we are wearing,” McConnell said in the webinar.

Significant growth is anticipated in the wearable technology sector over the next five years, as new wearable devices enter the market. According to the International Data Corporation, 124.9 million shipping units of wearable tech products will be sold this year. By 2022, this is projected to increase to 200 million shipping units.

While the growth implications for the wearable technology market are clear, the patenting environment is less so.

Strategy Considerations

In the webinar, Lohr described wearables as “part health, part hardware, part software,” and explains that there are different patent implications for these different domains. Lohr provides examples of some common challenges, and describes how pitfalls can be avoided.

Lohr explains that in the United States, certain health-related wearables require approval from the Food and Drug Administration (FDA). When FDA submissions are published, however, this constitutes public disclosure. If patentable aspects of a product are publicly disclosed, this could prevent the patentability of those aspects, and could limit the scope of patent protection on the product.

Additionally, it is important to ensure that information provided in the FDA submission is consistent with that of the patent application. If information used to make a case for FDA approval, such as similarity with other devices, is not cited in the patent application, this could impact the validity of the patent filing. It is therefore important to carefully review the information to ensure that the FDA submission and the patent application line up.

Lohr went on to explain that when developing an IP strategy for a wearable tech product, it is important to consider the different technical fields encompassed by the product. Wearables are not only physical products, they are also communication devices. When developing an IP strategy for a wearable product, it is important to map out which aspects of the product will be developed and patentable, and which aspects will be licensed or purchased.

Branding Considerations

From a branding perspective, the most important IP elements are trademarks and designs. While trademarks are strong and last a long time, designs are easier and cheaper to get, explained Khwaja.

Infringement can occur when an identical trademark or design is used on an identical good, or when a similar one is used on a similar good. Khwaja said that for wearables, common understandings of similarity do not apply.

For instance, if a product developer produces a smart watch, the product developer may only look at other watches to avoid patent infringement. Smart watches, however, are more similar to smart phones than they are to watches. When exploring the possibility of infringement, Khwaja emphasised that all fields of design must be considered.

Standard Essential Patents

“Standard” technologies “enable products made by different companies to interoperate with each other,” explained McConnell. For example, a wearable may need to connect to or sync with a mobile device. “In the vast majority of cases, it doesn’t make sense to develop proprietary technology to do that,” said McConnell. This is where standard technologies come into play.

The companies that develop the various aspects of an essential technology come together and agree to make it a standard. These standard technologies are then protected by standard essential patents (SEPs). McConnell explains that once the SEPs are in place, licenses to use the technology can be purchased, or the technology can be provided as a service.

While this seems straightforward, McConnell said that in some cases it may be more cost-effective to infringe on the SEP. Many SEPs may not even be valid and it is possible that infringement can take place without ever being challenged. Additionally, the cost of litigation could be less than paying for the licence.

Therefore, when approaching SEPs, McConnell made it clear that this is a contested territory, and that a measured strategy could likely involve taking the risk.

David Branigan is a contributing writer at Intellectual Property Watch and Health Policy Watch. He graduated in May 2018 from the Studley Graduate Program in International Affairs at The New School. His research is focused at the intersection of technology, public policy and human rights.

 

Image Credits: Hogan Lovells