Robotics is everywhere these days, and plays an increasing role in both the global economy and our daily lives. Current complex robotics systems have been designed for application in nearly every industry, including manufacturing, medical, services, defense, and consumer products. Opportunities abound for growth in the robotics sector, particularly in countries with labor-intensive industries, such as China. As proof, the International Federation of Robotics forecasts that the demand for robots in China that assemble cars and electronics and package food will accelerate in the coming years and reach 400,000 units of industrial robots working in factories in 2017.
The multi-disciplinary nature of robotics imposes unique challenges on implementing a successful IP program for robotics companies.
Robotic devices frequently incorporate or combine technologies across multiple platforms, including mechanical, electronics, software and medical. This blend of technologies demands that IP practitioners carefully consider different forms of IP protection to best protect the individual components of the robot. For example, depending on the application, software may be more easily protected as a trade secret rather than by a patent. Additionally, while the patentable utility features of a robotics product are protectable with a utility patent, the ornamental features of the robot can best be protected with design patents. Thus, developing a strong IP portfolio will require Chinese robotics companies to strategically consider all available forms of IP protection, and carefully select the best form(s) of protection for their robots. Below, we briefly discuss the mostly commonly used forms of IP protection.
Patents are used offensively to defend a particular market space by restricting competitor access to that space. A robotics company should therefore protect its core technical concepts and physical designs using patents, to insure against encroachment by competitors attempting to knock-off your robotics products, and to aggressively protect hard-earned market share. A strong and strategic patent portfolio can force potential competitors to stay out of the market, and competitors to seek a license if one is available or invest in an expensive design-around to avoid infringing the patents. A strong and well-developed patent portfolio can also serve as a strong deterrent and/or source of leverage in the industry. A competitor is less likely to sue for patent infringement if the target company owns patents that cover the competitor’s products.. When facing a strong patent portfolio, sometimes even significantly stronger competitors will consider cross-licensing rather than litigation.
A strategically well-designed patent portfolio should target the primary technological components and include claims that capture and protect the most commercially viable embodiments. Exemplary core components of the robotics technology include intelligent control systems utilizing machine learning and other artificial intelligence techniques, neuro-prosthetic devices and intelligent sensors, cloud-based applications, semiconductors, nanotechnology, precision devices for manufacturing, wireless communications and mobile networking, computer vision and digital imaging, remote-controlled and unmanned vehicles, and man-machine interfaces. Because these technologies often evolve quickly, robotics companies should file patent applications early and often to get the earliest priority date and the best overall coverage. This requires the legal team to work closely with the R&D team to identify and protect those inventions that are most valuable to the company and with an eye towards future competitors.
While certain features, like the functions a robot performs, may determine a product’s value to the consumer, the physical characteristics of the product can strongly influence brand recognition and consumer appeal. In these circumstances, robotics companies should protect the ornamental and aesthetic designs of their products with design patents. A robot’s ornamental design encompasses various aspects of its look and feel: aspects discernible up close (e.g., facial features and facial expressions) and aspects discernible from afar (e.g., shape and color scheme). A design patent may cover the entire robot or only a novel, innovative part such as the robot’s “face” or other features. A carefully-crafted design patent can protect a company against a competitor’s counterfeit “knock-off” products and after-market replacement or spare parts. An excellent example of a robotics company using design patents is iRobot, who successfully protected the unique form of Roomba™ through a series of design patents.
Finally, it is not enough to merely develop a strong patent portfolio and rest on your laurels. Rather, it is critical to continuously monitor competitor’s patents in the relevant technology area while continuously evaluating and, where necessary, expanding your own patent portfolio. In the robotics space, this can be particularly challenging because of the need to have a complete understanding of the patent landscape across the multiple disciplines embodied by a particular robot. Again, the legal and R&D teams must work closely together to identify and study all patents and any published patent applications of relevance to the technologies used in the robot.
As argued above, patents can provide strong protection for robotics products, especially consumer robots. This should not be at the expense, however, of foregoing trade secret protection for your innovations.
For robots that interact with few humans, live behind closed doors on factory floors, or serve only in top-secret military missions, trade secrets can be the more effective, viable, and economic protection for innovation.
Even if trade secret protection cannot protect the entire robot, certain components or the process of manufacture might be best protected as trade secrets. Consider protecting by trade secret aspects of your inventions that cannot be reversed engineered by the competition or which may be difficult to protect via the patent process. The intelligent control algorithm for a robot, for example, is usually implemented by software, which has become increasingly hard to patent after the recent Supreme Court decision in Alice Corp. v. CLS Bank Int’l, No. 13-298 (U.S. Mar. 20, 2012). By comparison, trade secrets that do not ship with the product, such as software source code kept with the manufacturer, may be good candidates for trade secret protection. In this circumstance, a trade secret may be the strongest and most durable source of IP protection.
For most robotics inventions, a hybrid IP approach can be adopted, where an invention may be maintained as a trade secret initially until a decision is made to file a patent application. Protecting the invention as a trade secret during its early stage buys the company time to develop and prove its technology before having to decide whether to file a patent application that eventually will be published and hopefully patented. This practice can be further refined by first filing a provisional application. Specifically, a provisional patent application secures an early priority date if a non-provisional application is later filed, but maintains the secrecy of the invention if the company decides not to pursue the non-provisional application—the provisional application is never published.
A major distinction between trade secrets and patents, however, is that unlike a patent that gives the patent owner the right to exclude competitors from practicing the claimed invention, a trade secret only protects against misappropriation by third parties. If your competitor independently develops the same technology or learns it through lawful reverse-engineering, your competitor’s use of that technology would not constitute an infringement or violation of a trade secret. Under these circumstances, filing a patent application as soon as possible remains the better option.
Trademarks and Copyrights
Other forms of IP protection, such as trademarks and copyrights, should also be considered. Unlike a more conventional machine, a robot can have its own distinct character and persona. Design features, such as its name, voice, color, shape, etc., may be protected using trademarks and/or copyrights. For example, a particular design of a robot or a component may qualify for copyright protection as a non-utilitarian sculpture, or for trademark or trade dress protection based on its shape or overall appearance. A robot’s unique voice may qualify for a sound trademark, while a soundtrack used by the robot can be protected under a copyright. Source code used to operate the robot can also be copyrighted.
As explained above, there are many forms of IP protection available to Chinese robotics companies to help them build a strong, diversified IP portfolio that will help them compete in the newly emerging robotics market. Because every robotics company is different—from the technical area of focus to the type of robots offered, the type and quantity of IP pursued will vary widely. Regardless, IP should not be ignored or you might find yourself sitting on the sidelines watching. Therefore, it is critical to consider early on what types of IP your company will pursue, prepare a plan to implement that strategy, and then re-evaluate that strategy as often as needed to determine whether changes to your technology or the competitive market require changing your IP strategy. Good luck!