When it comes to starting and building a robotics company, a robust intellectual property protection strategy can be the driving force behind market share, strategic collaborations, and capital investments.
Protecting Robotics Innovations: Five Tips From Your Favorite Robots
Todd Basile, David J. Dykeman and Roman Fayerberg | Greenberg Traurig, LLP
We touched base with five of your favorite robots for insights into their success. Every robotics company should consider these tips for protecting and leveraging its innovations.
#1 WALL-E Off Your Space
A strategic patent portfolio protects a robotics company’s core technology, which in turn helps secure funding and establish a competitive advantage in the marketplace. Industry analysts claim that a start-up has about a 2.5 times greater chance of achieving success within 10 years of VC investment if it holds patents before the investment.
Patents are extremely important for robotics companies in all stages. For early-stage companies, patents are often the only way for investors to place a value on a company’s technology during development. In this way, patents can make up a significantly greater portion of enterprise value for early-stage companies. As a company grows, patents become the currency to secure financing through venture capital or private equity investment. Patents can also lead to collaborations, joint ventures, and licenses with strategic partners.
“A strategic approach to patenting has helped ARIX protect its innovations in key markets, secure investment, and attract industry partnerships to fuel company growth,” said Dianna Liu, CEO of ARIX Technologies, a U.S.-based developer of pipeline crawling robots for oil & gas inspection.
Robotics technology is complex and often multifaceted, which can make patenting challenging. Robotic devices must be able to understand and adapt to the surrounding environment (especially as they are integrated more and more into daily life), making collision avoidance, facial/object recognition, and “follow me” features critical to safe and effective operation. Medical and assistive robotic devices must adapt to the biomechanics of each individual wearer to remain comfortable and transparent to natural motion. Creative companies are also leveraging machine learning techniques to improve these and other capabilities in the ongoing quest to make robotic devices more intelligent and less “robotic” in their interactions. Equally impressive advancements in materials, mechanics, and power management techniques are also helping to make robotic devices more mainstream.
These complex control systems can present challenges for robotics companies considering patent protection. Thus, patent claims should be directed to the entire system (in particular, how various sub-systems work together to address problems in novel ways), as well as key components, control systems, disposables, applications, methods of manufacturing, methods of use, and any other valuable aspects of the invention. Design patents can also provide protection for the ornamental features of robotic products. As companies continue to improve their core technology, they should patent incremental changes to form a "picket fence" of patent protection around the core technology. By filing patent applications that cover incremental improvements, robotics companies can expand their presence in the market and grow their patent portfolio as their technology improves and adapts to consumer preferences and the mainstream market.
#2 Police Your Tech Like RoboCop
Robotics companies interact with industry partners, software and hardware developers, customers, end-users, and other parties throughout the development and commercialization of robotics solutions. With so many parties involved it can be easy to lose track of who has access to your robotics technology and how your innovations are being used. Worse, it is often necessary to share sensitive technical information with these partners in order to get things done. Therefore, it is critical that robotics companies carefully consider how they can effectively manage these relationships and mitigate associated risks.
Contracts are particularly useful for protecting sensitive information in the robotics space. Well-drafted agreements should clearly define the specific goals of the relationship and, in turn, how exactly partners are permitted to use the technology in furtherance of such goals. For example, if a robotics company engages a developer to help optimize certain features of its control system and provides the developer with proprietary testing data to facilitate those efforts, the contract should strictly limit the developer’s use of the testing data to that specific purpose; otherwise the developer might use or disclose the valuable testing data to help a competitor develop or optimize a competing own control system. To that end, well-drafted robotics agreements will not only state how partners are permitted to use the company’s technology but will also clarify how partners are prohibited from using the company’s technology. For example, it is common to prohibit activities that may compromise underlying intellectual property, such as reverse engineering the technology, allowing access to unauthorized persons, and incorporating open source software (OSS) without prior review and permission. Conversely, companies should consider giving themselves flexibility (especially in peer-level and customer relationships) to add/remove/modify features, implement design-arounds to navigate IP infringement claims, and perform maintenance without violating service level warranties.
Putting time and effort into establishing a robust framework around permitted and prohibited activities can help companies proactively manage their collaborative relationships and reduce the chances of costly litigation should the terms need to be enforced against a problematic partner.
#3 Beware Rosie-Colored Glasses
Rosie the robot and attorneys have much in common – they frequently clean up messes. Many legal messes result from good relationships turned bad, so prudent robotics companies should consider hashing out the terms of a “prenuptial” agreement with partners to ensure their intellectual property remains protected.
One area of particular importance in the robotics industry is ownership. Ownership disputes often arise when sensors, hardware, or control systems are developed collaboratively, with persons internal and external to the company playing a role. In some cases, it may be tempting to agree to joint ownership, but more often than not what sounds like a fair approach can come with many complications. For example, do the parties need each other’s permission to exploit the IP? Do they need to share revenue with each other? What if one party wants to exploit the IP in a way that competes or otherwise conflicts with the other party’s business? What if one party wants to assert the IP against an alleged third-party infringer, but the other party does not wish to get involved or put the IP at risk of being invalidated? The parties should instead strive to work out an ownership and licensing arrangement that addresses such contingencies.
Departing employees can also put a robotics company’s innovations at risk. It may seem natural that the company would own ideas and work product created by an employee; however, the law varies from state-to-state and disputes can be more difficult to resolve if ownership rights are not clearly documented. Further, employees may leave with valuable and proprietary intellectual property and use it for the benefit of their new employer (which is often a competitor). Not only can this harm the company, but it can also put the new employer in legal jeopardy for unwittingly allowing misappropriated intellectual property to be incorporated into its products. Accordingly, agreements with employees should include assignment provisions conveying any ownership rights in inventions and intellectual property created by the employee to the company, as well as certain acknowledgements designed to reduce the risk of inadvertent or intentional IP misappropriation that must be signed by both new and departing employees.
Another often overlooked concern is whether or not a partner actually has the rights to contribute the intellectual property it is bringing to the table. Just like real estate, robotics technology can be subject to various encumbrances and other restrictions. Many of these restrictions arise from prior deals and collaborative development efforts. If a company overlooks such restrictions, it risks potentially not being able to use its partner’s technology as initially envisioned. Further, it is possible a partner’s technology was misappropriated from another party or infringes third-party patent rights. Each of these situations can lead to significant business harm and legal risk. Accordingly, robotics companies should perform a diligence review of a partner’s contributions prior to engaging in collaborative development efforts.
#4 Keep Robots in Disguise
Trade secret protection can be another effective way to protect robotics innovations. (Optimus) Prime candidates for trade secret protection include features that cannot be easily reverse engineered, such as preferred sensor and actuator settings (e.g., sensitivity or gains), machine learning algorithms, and image processing techniques. Implementing common sense safeguards and policies can often keep such valuable information proprietary to the company and out of the hands of potential competitors like the Decepticons.
One of the most effective ways to protect trade secrets is restricting access to only those with a “need-to-know.” For example, companies may configure their IT systems to allow only developers to access source code, thereby reducing the chances that a salesperson might share copies sensitive information with potential customers or with a competitor when changing jobs. Many IT systems can be set up to alert management to suspicious activity and thereby give companies an opportunity to intervene. Another effective way to safeguard robotics-related trade secrets is to provide customers and authorized third parties with access only to APIs and executables, rather than the underlying source code, libraries, and databases of a control system where the “secret sauce” typically resides.
#5 Don’t Borg-et About Assimilation
The robotics industry is highly competitive and full of up-and-comers with promising technologies. As such, mergers and acquisitions are common as robotics companies seek to gain a competitive edge. Now imagine one of your partners that has intimate knowledge and access to sensitive information about your technology being acquired by one of your competitors. You might be concerned your technology could fall into the wrong hands.
Resistance is not futile if you plan ahead. Most agreements include provisions that cover what happens if a party is acquired or otherwise undergoes a change of control – consider leveraging these provisions to mitigate risk of a competitor gaining access to your technology. For example, companies may want a right of first refusal (ROFR) to purchase its partner in the event that partner is courted by a competitor. Likewise, should its partner merge with a competitor, companies may want the option to terminate the relationship and oversee the return and/or destruction of sensitive information. With advance consideration, robotics companies escape the tractor beam of competitor acquisition and avoid having their technology being assimilated by the collective.
Stake Your Claim in the Robotics Gold Rush
In the dynamic robotics industry, a comprehensive strategy is crucial for protecting valuable innovations and maintaining a competitive edge. A mix of patents, trade secrets, and contractual protections can be leveraged to stake your claim in the robotics frontier and navigate a path to commercial success.
About Todd Basile
Todd Basile is a shareholder and registered patent attorney in Greenberg Traurig’s Dallas office. Basile helps technology companies protect and commercialize their innovations and brands across a wide range of industries, including robotics, autonomous vehicles, medical devices, wearables, and software. He also represents technology investors in M&A deals, negotiates technology transactions, and assists clients in navigating IP disputes. Prior to becoming an attorney, Basile was a flight technology engineer at Bell Flight. He can be reached at basilet@gtlaw.com or (214) 665-3640.
About David J. Dykeman
David J. Dykeman is a registered patent attorney with nearly 25 years of experience in patent and intellectual property law and co-chair of Greenberg Traurig’s global Life Sciences & Medical Technology Group. Dykeman’s practice focuses on securing worldwide intellectual property protection and related business strategy for high-tech clients, with particular experience in robotics, wearables, medical devices, life sciences and information technology. He can be reached at dykemand@gtlaw.com or at (617) 310-6009.
About Roman Fayerberg
Roman Fayerberg is a registered patent attorney with more than 15 years of experience in patent and intellectual property law at Greenberg Traurig in Boston. He advises clients on procurement and enforcement of IP rights, including domestic and international patents, with the focus on robotics, medtech and life science technologies. His patent practice builds on seven years of experience he gained as a research and development engineer at C.R. Bard (now Beckton Dickinson) and Boston Scientific. He can be reached at fayerbergr@gtlaw.com or (617) 310-5206.
The content & opinions in this article are the author’s and do not necessarily represent the views of RoboticsTomorrow
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