By Christopher Heer and Sarah Halkyard.
The Internet of Things (IoT) is becoming more common in day to day life, from improvements in cars to the introduction of smart homes. There are currently billions of IoT devices being used throughout the world. IoT is an area of innovation. The ability to utilize technology that transmits data without requiring human interaction opens the door for new, potentially patentable creations. To be eligible for a patent your creation must be found to be new, non-obvious, and useful in that it actually works and does what it is supposed to do. Even if your creation does not meet the requirements for a patent, there may be opportunities to protect your IoT technology under copyright or trademark law.
For example, security and IoT is a potential area for innovation and improvement. Patentable technology could be created to improve the security issues in existing devices to help protect against cyberattacks. As mentioned above, in order to be eligible to obtain a patent for IoT software, the proposed invention must be new, and inventive, that is, not obvious to someone skilled in that field. While it may be difficult to create an entirely new and patentable type of IoT device, you may be able to file a patent application and obtain patent protection for an improvement upon an existing IoT device. However, to be patentable, improvements also cannot be obvious to a skilled person in the particular field and practically speaking need to provide at least one significant benefit over what is already available.
If you do not think that your software would meet the requirements to obtain a patent, copyright will still protect your software to some extent. Computer programs are considered literary works and, therefore, can be subject to copyright protection as an original work. Copyright does not need to be registered, but it is recommended that you do so in order to obtain stronger and more valuable rights. For instance, the United States will only award statutory damages to registered copyrights, not unregistered copyrights. While copyright protection does not offer nearly the same breadth of protection or commercial value as a patent, registration of copyright comes at a much lower cost than obtaining a patent.
To distinguish your IoT product from others on the market, you should consider conceiving of and registering a good trademark. Trademark rights can be used to protect the name of your product or business or both. Trademarks may be registered or unregistered. Registered trademarks are protected in Canada for a 10-year term and may be subsequently renewed for additional 10-year terms. Unregistered trademarks may provide rights under common law after being used for some time and acquiring reputation or goodwill where they are used. While unregistered trademarks can accrue some rights local to where they become known, it is not recommended to leave an important trademark unregistered as it is cumbersome and costly to enforce unregistered trademark rights when needed as you have to formally prove the extent of your reputation. A registered trademark is entered into the Register of Trademarks which is on its face evidence of your exclusive right to use that mark in association with your IoT product nationwide. It is important to note, however, that if a registered trademark is not used for several years, the registration may be vulnerable to cancellation from the Register of Trademarks which would result in the loss of your registered trademark rights.
When deciding how to protect your IoT creation using intellectual property rights, it is recommended to retain a professional with expertise in intellectual property law. An intellectual property lawyer will be able to help you construct a comprehensive intellectual property strategy to maximize the value of your exclusive rights in your work. It is also recommended to ensure the intellectual property law firm you retain employs registered patent agents and trademark agents (who may also be lawyers), so that they can represent you as your agent before the intellectual property office. Patent and trademark applications involve complicated processes, and registered patent and trademark agents have specialized knowledge and experience to effectively manage and advocate on your behalf in front of patent and trademark examiners.
IoT provides new opportunities for creations in technology. Whether the creation is entirely new, or improves upon existing technology, you have options for how you would like to protect your work with exclusive rights. Patents typically offer the broadest and most valuable protection for an invention, but also require the greatest financial investment and the most time. Trademark registrations are also essential to an IoT product in order to protect the goodwill and reputation tied to the product. Original works, such as the computer code of your IoT product, will protected by copyright and may be registered to enhance your rights under copyright law. Intellectual property lawyers will be able to provide information and assistance with applying for these forms of exclusive rights which will help deter competitors from copying your IoT product and substantially increase the value of your business.
About the authors:
Christopher Heer is the owner and founder of Heer Law. He is an intellectual property lawyer, registered patent agent, registered trademark agent, and is also certified as a specialist in intellectual property law (patent) by the Law Society of Ontario. He believes that intellectual property rights add tremendous value to businesses by enabling them to raise capital, build asset value, and grow faster under the protection that these exclusive rights give them.
Sarah Halkyard left a career in software engineering to pursue intellectual property law to help innovators protect their creations. She studies law at the University of Calgary. She is a member of the International Law Society and the Association of Women Lawyers.