14/09/2020
The Internet of Things (IoT) is the idea that any object might be connected to the internet. Such objects could be elementary devices such sensors or actuators. Or they might be ‘smart‘ versions of everyday devices, e.g. home appliances, electricity meters, or ‘wearables’. The internet connectivity allows all of these objects to interact either with each other or with servers. In some cases it provides improved functionality for the smart object. In other cases, benefits arise through the use of vast numbers of smart devices, feeding data to and from servers and other devices. Some commentators believe the IoT will totally revolutionise our lives, to the extent that it has been described as the 4th Industrial Revolution.
In many cases an internet-connected object is not itself patentable because it is a straightforward combination of existing technologies, such as network connectivity, sensors, actuators and processors. The rise of the IoT has come about through improvements in the individual technologies that have led to internet connectivity being available on a large scale and at low cost. An improvement in any of these individual technologies might itself be patentable, but the patentability of such a technology is probably independent of any specific use within an IoT device.
At least in Europe, applicants have better success obtaining patents for IoT inventions when the patent specifies how the IoT device operates within the context of its ecosystem. This could be by specifying interactions with other IoT devices or with some kind of server or hub device.
For example, patent claims along these lines are more readily patentable:
- “A system comprising a server and a plurality of internet-connected devices, wherein the server is configured to … and the plurality of internet-connected devices are configured to …”
- “A method for a server and one or more internet-connected devices, the method comprising: performing first operations by the server; and performing second operations by the one or more internet-connected devices“
While these sorts of patent claims are more frequently granted by patent offices, they can have a disadvantage if they are enforced post grant. When the IoT server and the internet-connected devices are operated by different parties, none of the parties are by themselves carrying out the whole of the invention. This means none of the parties directly infringes the patent. All is not lost because, under English law, one of the parties may be liable for ‘indirect infringement’ of a patent if it is shown they have supplied a ‘means relating to an essential element of the invention’. In some cases the different parties can be established as ‘joint tortfeasors’ and therefore separately liable for patent infringement. But it is an extra hurdle to show indirect infringement or joint tortfeasorship in any patent litigation compared with patents infringed by a single party.
For this reason we often try to obtain patents with separate patent claims directed to the separate elements of the IoT system, the claims describing interactions with other non-claimed elements of the IoT system. For example:
- “A server for interacting with an internet-connected device, the server configured to: receive sensor data from an internet-connected device; process the sensor data; and send a control signal to the internet-connected device based on a result of the processing of the sensor data.”
- “An internet-connected device configured to: collect sensor data; send the sensor data to a server; receive a control signal from the server; and collect sensor data in a different manner based on the control signal.”
This example is very simple but it shows how we can often divide the IoT system into the separate elements to protect each element separately.
But sometimes we can’t protect every part of the system separately. In the example above, perhaps the invention really only exists in the processing of the data, and so the claimed internet-connected device is no different to an existing internet-connected device that communicates with any other server. In that case only the server claim would be patentable. But the patent owner still has a patent that is easier to enforce than one that specifies a system comprising both the server and the internet-connected device.
Sometimes it is not possible to divide the IoT system into separate elements and obtain a patent at all. For example, data processing is often considered to be subject-matter that is excluded from patentability. If a patent claim doesn’t specify the features needed to bring about any real-world physical effects resulting from the data processing, then examiners in Europe will often discount the data processing feature from any assessment of inventive step. The only way to overcome such objections might be to include all of the separate elements of the system in a single patent claim.
What this means is that there is no single best strategy for patenting IoT inventions and the form of any granted patent claims is often a case-specific compromise. We amend the patent application during examination based on whatever arises in prosecution.
Since it is not possible to add new subject-matter to a patent application after it has filed, it is helpful if any new patent application for an IoT invention describes the invention: i) from the perspective of a system as a whole, and ii) separately from the perspective of each element of the system. This means the application can be amended during prosecution to get the best possible patent coverage.
At Reddie & Grose we are not just focused on obtaining patents for our clients. We also take into account how the patents might be used post grant: who might the potential infringers be and how might the patent be enforced against them, avoiding the need for indirect infringement and joint tortfeasorship where possible. If you are thinking of patenting an IoT invention and would like smart advice that takes into account the realities of post grant enforcement, come and speak to us at Reddie & Grose.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
