Date: 1 June 2020
The impact that the internet of things (IoT) will have on our lives and our businesses, from domestic applications to manufacturing and healthcare and so many applications yet to be imagined has been much discussed, together with the technical challenges it presents and the challenges to intellectual property practitioners.
Among IP challenges, the application of the Supreme Court of the US’ Alice/Mayo analysis has been discussed. Here, we explore in a little more depth some of the challenges beyond the US.
From the point of view of implementing the communications platforms needed to make the IoT happen, extensive work has already been done and is in deployment around the world. There are said to be 30bn IoT devices deployed worldwide as we enter 2020. This is expected to double in four years. Predictions say we will reach 1trn mark by 2035.
The standards group specifying 5G and other wireless networking standards, the Third-Generation Partnership Project (3GPP), has progressed standards for LTE-M (LTE-Machine-Type-Communication) and Narrowband IoT (NB-IoT) to support 5G Low- Power Wide Area (LPWA) use cases.
The 3GPP group and the International Mobile Telephony (IMT) emphasise that 5G is not merely about increased throughput over limited radio resources (spectral efficiency). There are said to be four key “Cs” necessary for IoT connectivity:
5G promises to provide a range of benefits relevant to the IoT. For example, it will provide a tenfold increase in connectivity density to 1m devices per square kilometre, an increase in area traffic capacity to 10Mbit/s/m2 and a tenfold reduction in latency.
With the “Four Cs”, internet-connected modules can be embedded into infrastructure (pipelines, smart meters, street lighting), supply- chain (package tracking, inventory tracking) or other mobile assets (patient-monitoring devices, dog collars, shipping containers), and any number of other “things”.
There has already been an explosion of patent-application filings to address the achievement of these goals. Having built up a 4G system with high-data capability, there is now great ingenuity in deconstructing the channel capacity to allow for many more smaller messages uplink, downlink and device- to-device (D2D). The latter is particularly important for driverless vehicles, allowing critical messages to pass from vehicle-to- vehicle reliably in a potentially congested network.
So far, so much the same. From an IP point of view, developing standards and licensing the resultant standard essential patents (SEPs) has been the business of wireless communications for decades.1 It has been written that the framework for SEP licensing set out in the CJEU’s decision in Huawei v ZTE may need further evolution to adequately respond to the complex and varied circumstances of anticipated IoT conflicts,2 but the same has been said for each previous generation of wireless communications standard. We await with interest the UK Supreme Court decision in Unwired Planet v Huawei and Conversant v Huawei and ZTE, but it is not expected that this will throw the present framework up in the air.
Charts that show the growth of patent activity worldwide are ubiquitous, particularly with the increasing contribution of activity from China.3
Figure 1 displays patent families filed worldwide, while figure 2 displays the number of IoT-related patent families pending or granted in a certain country.
Figure 1: Worldwide patent families filed between 2010-2017. Source: Orbit Intelligence
Figure 2: IoT-related patent families pending or granted by worldwide IP offices. Source: Orbit Intelligence
Figure 3 shows that IoT patenting accounted for 1% of all patent filings in 2016, but is on a high growth path.
Figure 3: Percentage of the total that are IoT-related patents filed with IP offices worldwide, 2008-2017. Source: Orbit Intelligence
The most prolific filers of patent applications come from the communications side of the story and include the usual players in that field (Samsung, Qualcomm, Intel, Huawei, Ericsson, ZTE, IBM, LG etc), but the range of classes involved from the International Patent Classification is broad.
In rank order after communications and IT come the respective classes for medical technology, transport, civil engineering, handling processes, thermal processes and games.
A particular challenge to the patent practitioner is the question of what is a “thing”? We are being asked to claim some new interactions of devices as a new IoT invention, but we frequently face the challenge that the interaction is already known in some distributed computer-network scenario, and the novelty lies in application of such an interaction to everyday objects. But a computer on a network or some other computer functionality (e.g. cloud storage or cloud processing) or peripheral (printer/microphone/ camera) or indeed mobile phone – with all its capabilities – is no less of an everyday object or a “thing”. It is often not enough to call out that the “thing” has some primary real-world function (microwave, fridge etc.). To distinguish over generic everyday objects, it is frequently necessary to focus on the specific application of the object.
The challenges are therefore very similar to those faced in the field of patenting AI. The draftsperson must anticipate that the application may have to be described at different levels of generality right down to a very specific application or use-case to be confident that a claim, however narrow, will survive the white heat of examination. Take, for example, the domestic scenario of the fridge and microwave (a commonly used example, so please excuse if all that follows is well-trodden).
A fridge can be connected as an IoT device to “know” what it contains and communicate this to a user or another device. In the simplest case, it might merely give an inventory to its owner’s mobile phone – what it has and how old the contents are. This might be achievable by scanning bar codes every time something is put in or taken out, or it might require IoT tags on each item. The same for a microwave – it may “know” what it is cooking and how long it requires to be cooked. It might “know” the frozen/defrosted state of an item being placed in it. Now link the two in an IoT network and the whole is greater than the sum of the parts – prima facie, we have an invention. But what might we claim in a patent application?
We might begin by abstracting the invention to consider other “things” that hold/store consumables for transfer to other “things” that process the consumables. But not so fast, because a plethora of other examples already exist (printer cartridges come to mind). So we can try, but we must anticipate having to focus on the fridge/cooker example. Let us anticipate that this will turn out not to be new; we must focus further on sub-problems – e.g. the problem of “knowing” whether food cooked in the microwave has been put back in the fridge.
And note that it would be wise to consider a specific sub-problem of “knowing” whether food defrosted in the microwave has been put back in the freezer. Each of these specific applications needs describing, with detail of any temperature sensing capabilities of the tag that passes to and fro with the food.
Having determined the scope of protection of the system or the method of interacting, the question remains as to what exactly can be claimed as new and inventive within the system. Bearing in mind that the separate components (fridge, microwave, IoT tags) may be made by different manufacturers in different jurisdictions, the practitioner will want to claim them not only as a system and a method but individually as well. A debate will ensue with patent offices over unity of invention and how many independent claims may be allowed in one application.
Before the US Patent and Trademark Office, a restriction requirement may be raised simply based on patent class (e.g. fridges and ovens being in different classes). Before the European Patent Office (EPO) the different claims may be allowed under Rule 43(2)(a) European Patent Convention as relating to different interoperating elements, but each must be new in itself. In our example, if the microwave is a known IoT microwave and performs its function in a known way, it will not be separately patentable just because a novel IoT tag can be placed in it to implement a new and inventive method of handling food.
In addition, even if each interoperating element is novel, the EPO may insist that each has corresponding features to overcome the same problem. This is an area in which the case law of the EPO is not well developed, and practitioners will need to discuss priorities with their clients. For example, if an element of the system is a high-volume consumable (like a frozen ready-meal with an IoT tag), it may be of greater importance to protect this than other elements.
The above example is set out merely to illustrate the challenges the patent practitioner will face in drawing out of an inventor/client the details necessary to succeed in obtaining useful patent protection in a field that is at the same time new and exciting, but nevertheless already surprisingly crowded.
These days, inventors are better able than ever before to conduct searches to determine the state of their particular art, yet experience shows that, short of a PhD research project, thorough searching by the patent practitioner frequently casts doubt on an invention that is presented as prima facie new. The very accessibility of knowledge through the internet raises the standard of patent quality and shows the value of prior-art searching before putting pen to paper.
Read our article in the Intellectual Property Magazine: IoT Lights Up
Read more on our expertise in this area: Wireless & Mobile Communications
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