Lisa: Look, there’s a cybercafe opening here in Springfield. Will you take me, Dad, please? I’ll show you how to order pizza over the internet.
Homer: The internet? Is that thing still around?
While Homer Simpson may not need the internet to run the Springfield nuclear power plant, technology and the internet are alive and well and provide intellectual property attorneys with an increasingly complex and uncertain work environment. In fiscal year 1997, the United States Patent and Trademark Office (USPTO) received 251,856 trademark applications, renewals and maintenance affidavits. In FY 2017, the total applications, renewals and maintenance affidavits had increased to 765,802. The patent side of the USPTO experienced similar growth as the number of patent applications (utility, design, plant and reissue) expanded from 237,045 in 1997 to 647,348 in 2017. By comparison, the GDP for the US from 1997 to 2016 little more than doubled.
For in-house IP departments that have not grown at the same pace, they face an increased workload from this aspect alone. However, it is not just the volume of filings that is a challenge for today’s IP attorney. The internet and related mobile technology is a key driver of a second trend in IP management and protection—increasing, driving and accelerating the already rapidly expanding area and challenges faced by counsel.
The Internet of Things
Patent challenges abound in the “internet of things,” or IoT, a global infrastructure for the information society, enabling advanced services by interconnecting (physical and virtual) things based on existing and evolving interoperable information and communication technologies. While the location of any one in the chain of the worldwide web of connected devices can be located anywhere in the world, patent protection and enforcement respects geographic borders under country/regional-specific frameworks.
Corporate legal departments already navigate thorny and often arcane patent issues (obtaining, enforcing and avoiding infringement) related to today’s products and services, but this pales in comparison to what is coming with the IoT—at least three levels of patent clearance and enforcement issues that might have nothing to do with the company’s products and services, and will occur in markets far and distinct from corporate locations or sourcing centers.
The chain of issues includes:
(1) the network of physical devices (from smartphones to vehicles to home appliances),
(2) the embedded electronics, software, sensors and actuators making the devices controllable over networks, and
(3) the concepts of network connectivity that enable the devices to connect and exchange data. Each interconnected step of products or services having patent related issues separate from one another.
In a Dec. 10, 2017, Forbes article, “2017 Roundup of Internet of Things Forecasts,” the global IoT market is projected to grow at a 19.92 percent compound annual growth rate reaching $8.9 trillion in 2020. Thus, demands on counsel to navigate patent issues with the IoT will only rise.
Social Medial and Internet Challenges
Just as the pace and volume of trademark and patent filings has greatly increased, the challenges posed by the internet and social media have compounded IP department challenges in other arenas. In 2016, the World Intellectual Property Organization reported over 3,000 domain name infringement cases, an increase of more than 10 percent from the previous year.
Protecting brands from false and unapproved online postings has also become a part of the IP attorney’s daily regimen. Anyone can copy a trademark from the internet, making it increasingly difficult for consumers to distinguish between a genuine post from an authentic company or one that is an unapproved use of a trademark.
Social media platforms such as Twitter, Facebook and Instagram have allowed companies to interact easily with mass audiences at a low cost. However, this easy interaction is a double-edged sword because the public utilizes the same social media as a vehicle to criticize companies quickly and inexpensively. Viewing social media as “free” misses both the significance of the platform and the expectations of consumers in an increasingly connected world.
In addition to other areas of IP law influenced and accelerated by technology, counterfeiting, which was an issue limited to flea markets and shady discount retailers 10 years ago, is now noteworthy for all businesses and in-house legal departments. Counterfeit products can easily be found by consumers around the world with a couple of simple searches on a mobile device or computer, then vanish when legal actions are pursued.
Tips for Managing Increased Workload and Technology
With the further saturation of internet-enabled technologies, counsel increasingly will depend upon an array of patent specialists to implement new best practices for filing patents (on any one or more of the three levels of innovative technologies in the IoT) and for enforcement of IP rights and avoiding IP infringement in this similarly vast scope of technologies. This will undoubtedly include evermore complex licensing and business-partnering relationships, a need to stay abreast of worldwide patent trends like subject matter eligibility, theories of divided infringement, patent standards and the rather slow pace of the worldwide IP laws struggling to keep up with the exponential speed of technology it seeks to cover.
Also, in-house IP departments will not keep pace with the demands of clearance, prosecution and protection unless a clear and well-reasoned strategic vision and tactical decision-tree govern that analysis. What trademarks and patents need to be filed, and which have a relatively short-life span or limited importance and merely need to be cleared? Going after every social media or domain name misuse likewise will quickly overwhelm any IP department. Rather, confirming with business units what uses and registrations deserve attention and legal challenge, and which ones should continue to be monitored.
For good or bad, the internet is obviously not going away, and the IP departments that align their trademark and patent strategies in collaboration with their business units to manage the wave of increasing demands and issues will stand the best chances of success.
Ryan A. Schneider is a partner at Troutman Sanders in Atlanta, where he is the firmwide chair of the Intellectual Property practice group. An engineer and member of the patent bar, Ryan’s practice centers on providing clients with strategic counseling and guidance regarding intellectual property matters.
Michael D. Hobbs Jr. is a partner at Troutman Sanders in Atlanta and a past president of the Intellectual Property Section of the State Bar of Georgia. Mike’s practice focuses on intellectual property registration, licensing and litigation throughout the United States and internationally.