Obstacles in the Road: the Multi-faceted Approach to Ip Protection in the Autonomous Vehicle Sector

• Citation: Vol. 1 No. 6
• Publication year: 2018

Paul Keller and Alexis Wilpon^*

This article highlights the different intellectual property rights that are relevant to the autonomous vehicle space—patents, trade secrets, and copyrights—and provides insights into how they can be used together to effectively protect the valuable innovations that may be key to a company's success.

From automated navigation systems to trajectory sensors and from forward facing cameras to maneuvering algorithms, today's autonomous vehicles ("AV") operate through the use of thousands of different innovations. Many of the functions necessary for autonomous driving is achieved through novel software or unique physical equipment, or a combination of the two. These components may be created in-house, outsourced to third-party manufacturers, or created collaboratively through a joint venture. The proper protection of the various innovations that can be created and the careful consideration of their assignment or licensing can be critical to the financial future of a company operating in this ever-evolving and highly competitive space. This article highlights the different intellectual property ("IP") rights that are relevant to the space—patents, trade secrets, and copyrights—and provides insights into how they can be used together to effectively protect the valuable innovations that may be key to a company's success.

Patents

A patent is one of the most popular protections for IP, and is often considered the strongest form of protection. In the United States, a patent is a grant from the federal government that allows the owner of the patent to prevent others from making, using, selling, or offering for sale the owner's invention for a period of

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20 years. There are three types of patents, the first two of which are most relevant to the automotive field: (1) utility patents, which apply to processes, machines, composition of matter, or any improvement thereof; (2) design patents, which apply to design for an article of manufacture; and (3) plant patents, which apply to a new and distinct variety of an asexually reproduced plant.

In order to obtain a patent, an inventor must file an application through the U.S. Patent and Trademark Office ("USPTO") within one year of publicly disclosing the invention. If the patent is granted, the USPTO will publish a description of the invention and its purpose. However, patent rights are limited to the country or region in which the patent has been granted. Thus, if a patent is only obtained in the United States, there is little to address the use of the technology that occurs entirely outside of the United States.

A patent owner may license, or give permission to another party to use the invention, or may sell the right to the invention altogether. However, if a patent owner believes that someone is using his or her invention without permission, the owner is entitled to bring a patent infringement lawsuit in which, in order to prevail, it needs to prove by the preponderance of the evidence that the claims of the patent have been improperly used. Once the patent expires, the invention becomes part of the public domain and anyone can replicate or sell the invention without liability concerning the expired patent.

What Type of Subject Matter Can Be Patented?

In order to qualify as patentable subject matter, the alleged invention must first be one of four enumerated statutory categories: processes, machines, manufactures, and compositions of matter. Next, the alleged invention must qualify as patent-eligible "subject matter." In short, other than limited exceptions, everything is patentable. The limited exceptions, however, are very relevant to the patenting strategies relating to AV technology—the exceptions that relate to abstract ideas and laws of nature. This naturally raises questions about the patentability of software and algorithms. Fortunately, the U.S. Supreme Court has emphasized that an invention can be patent eligible even if an element of the claims involve judicial excepted material. Although an algorithm by itself might not be patentable, its application to the decision-making of a vehicle may

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be patent eligible. The line between eligibility and not should be thoroughly considered during the course of patenting algorithmic innovations in the AV space.

The Patenting Process

The patenting process begins by the inventor (or the lawyer representing the inventor) preparing a patent application to be filed with the USPTO. A significant amount of strategy and thought go into the drafting of an application, especially when crafting the patent claims, the actual description of the metes and bounds of the invention for which the patent is being sought. Once the application is filed and accepted by the USPTO, an examiner will review, among other things, the contents of the application to determine whether or not the invention is in fact patentable. If the examiner finds that the application does not meet the requirements, he or she may explain the reasons why and give an inventor the opportunity to amend the application. Final denials issued by the examiner may be appealed to the Patent Trial and Appeal Board. On average, the patent application process can take about three years and can cost between $10,000 and $50,000 per patent.

Key Considerations of a Patenting Strategy

Some of the most important patent strategy considerations are coverage and enforceability. These elements affect the ability of the patent owner to protect their innovations and potentially monetize the patent asset. To assess the elements, businesses typically assess how they would provide that a patent has been violated and how the enforcement would assist the business. As for proving infringement, during the drafting phase, patent owners typically consider how they may or may not be able to police the unauthorized use of their innovations. For example, if the patent claims relate to manufacturing methods that are not generally publicly described, it may be difficult to learn that anyone is improperly using the technology. This challenge may very well affect the "value" of the patent. As such, a contrary approach may be to claim particular elements (or a combination) of elements in the finished, publicly available product.

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With regard to the benefit to the business, enforcement measures may allow a company to protect its...