Protecting Wearable Technology As Intellectual Property - JMBM IP Lawyers Rod Berman & Brennan Swain

Published on Nov 19, 2015

Jeffer Mangels Butler & Mitchell LLP intellectual property attorneys, Rod Berman and Brennan Swain, discuss the emerging market for wearable technology, the likelihood of growth in the market, and the issues companies face while protecting this new intellectual property.

Brennan Swain: My name is Brennan Swain. I'm here with Rod Berman–we're both attorneys at JMBM. We're going to be speaking today about wearable technology. Rod, we've all heard about wearables–but what is it?

Rod Berman: Wearable technology normally would be considered to be anything that's wearable, that has technology.

Years, and years, and years ago that would simply be a watch. Today, it's iWatches, Samsung watches, monitors for baby breathing, sports devices–any type of device that is wearable which typically involves some aspect of fashion and technology.

Brennan Swain: So we've heard a lot about it in the press recently–why is that?

Rod Berman: I think it's just gotten very, very popular. Apple had developed a technology which allows the incorporation of lots of functionality on chips. They were able to make very, very small chips which allowed the making of the iWatch; the iWatch, together with a Google Lens and Fitbit, have just caught on to athletes in the public, and even in medical device manufactures, police–lots of people.

Brennan Swain: What type of lawyer is needed to protect wearable technology?

Rod Berman: I think a very seasoned intellectual property lawyer. Today, there are lawyers who specialize in patents, some lawyers specialize in copyright, and some in trademarks. I think that the best lawyer to have is somebody who appreciates patents, trademarks, copyrights, trade dress, packaging–maybe even knows a little bit about privacy laws–because a wearable embodies all of those areas in intellectual property.

Brennan Swain: What in particular gives you qualifications in this area?

Rod Berman: Well, I've been a patent lawyer for 30 some-odd years. I work with you–a mechanical engineer. I work with others and other technology including software, I spent years dealing with trademarks and trade dress, represent lots of clients in a variety of industries throughout the world, and I think it's that, overall. Not just on my part, but on the part of those in our department, and the lawyers in our firm that help make the wearable technology practice at the very high end of first-rate.

Brennan Swain: What does a company have to do to protect its investment and wearable technology?

Rod Berman: I think the first thing that company has to do is recognize that the only practical way of protecting that technology is through intellectual property. And at the conceptual stage they should either deal internally within in-house counsel or contact lawyers, such as us, to evaluate the possibilities of intellectual property protection. It could involve patenting the technology; it could involve branding the name; it could involve the packaging and how the packaging looks; it could involve copyrighting the instructions–there might be aspects of it that are best protected by contract. If you take a look at Fitbit, for example, you can see that the packaging has language that's copyright. Obviously, Fitbit is a trademark, it’s a name. The Fitbit device itself is covered by patents, whether it's on the band or the actual computer software inside the device.

So, it involves all those aspects of intellectual property, and because there are certain time frames in which to protect that intellectual property, it's important that a company recognizes it and contacts someone who is knowledgeable the area.

Brennan Swain: Speaking of time frames, what are some of the things that someone would know about how quickly they need to seek protection?

Rod Berman: Well, probably the most important time frame is patent time frame. In most foreign countries, and we assume that the wearable technology will be sold outside of the United States, patent applications have to be filed before there is any public disclosure or commercialization. In the United States, under certain circumstances you have a 1-year grace period. But, in general, you have to promptly file patent applications.

Trademark applications are similar in some extent. You can file a trademark application any time, but the date of filing of a trademark application gives you potentially worldwide priority, so it's important to file trademark application quickly–and if you're going to file applications outside the United States, to file within 6 months of your U.S. filing.

Copyright applications are also important to file right away because once a copyright is registered, the copyright owner gets additional rights that don’t accrue if the copyright is not registered.

Brennan Swain: All right, so for a filing patents and trademarks, those are offensive filings. What can a company do to protect themselves from being sued if they start selling wearable technology?

Rod Berman: There's a variety of things they can do. For the most part the focus is on trademarks and patents. So, they should conduct a trademark search through lawyers such as us to make sure that the mark is available, at least in the United States, and potentially conduct searches in foreign countries as well. Fitbit is a perfect example of a company that launched its product, and shortly after was sued by another company who had a similar name and connection with a similar product. The case got resolved, but searching wasn't undertaken as thoroughly as it could have been.

Patent searches are important from two ends. One end, to make sure that you have the freedom to operate so that you're not infringing anybody else's technology. And, also to determine whether or not your technology might be patentable. You can be certain that companies like Apple and Samsung are incredibly active in filing patent applications. In wearable technology it's not simply the electronic components of the device itself; it might be the material used for the band or the particular shape of the device. It could be the appearance because patents, as you know, cover both utility and features of devices, as well as their design features: what they look like. If you conduct a search of the U.S. Patent office and what Apple has filed for, for the iGlass you'll see a plethora of patent applications. Every single aspect of the device is sought to be protected.

Brennan Swain: Lastly, what do you think the future holds for wearables?

Rod Berman: Well, it's kind of iffy right now. We're at the beginning part of the growth of wearables. From a technical standpoint, I think wearables will be more lightweight, more functional, more user-friendly. The issues that are going to arise are whether there's a real market for wearables. Apple had once predicted selling two million dollars' worth of Apple phones a month, and I'm not too sure whether they've met their predictions. Although most pundits believe that it's ultimately a 30 or 40 billion dollar industry.

The other issue that we have to look for to the future is privacy, because the concept of wearables is not just the functionality, but interactivity with other devices. That brings to mind the privacy issues in collecting personal data. Which goes back to one of your first questions: why is our practice particularly focused on wearable? We have the intellectual property aspect of it and we have attorneys who handle the privacy aspects of it too, when packaged.

Brennan Swain: Well, thanks for that great information. Anybody watching–this if you're interested in learning more about wearable technology, you can contact either Rod or me through our information that's right on the screen. Thank you.

Rod Berman: Thank you very much.