Wearable technology: do you know what you are getting into?

08 November 2015

In our latest blog, Iona Silverman, discusses the inter-industry collaborations between technology companies and designers as wearable technology advances.

Introduction
Wearable technology is nothing new: an analogue watch is an early example. Advances in digital technology have seen the advent of the smart watch, but this was just the beginning; we're now seeing rings that measure UV levels, handbags with built-in chargers and lights, t-shirts that measure sporting performance, not to mention a host of wearable healthcare devices.
Creating these products requires inter-industry collaboration, with some firms straying outside their comfort zone. What follows here is an overview of the intellectual property (IP) rights you will need to consider to protect both the technical and aesthetic components of wearable tech, some top tips to bear in mind when negotiating a collaboration agreement, and a checklist of other issues you will want to keep at the front of your mind.

Using IP to protect the technology behind wearables
Patenting inventions   Products that constitute inventions in their own right will be patentable if the invention is new, involves an inventive step and is capable of industrial application.  For example, a group of researchers at Liverpool John Moores University has been granted a patent for electromagnetic wave sensors that can be woven into any garment as a way to continually monitor a patient's vital signs. But remember that a number of products are excluded from patent protection, including in particular aesthetic creations and computer programs.
Copyright in software In the United Kingdom, software is automatically protected by copyright as long as it is original  and there is no requirement for registration. However, all that is protected by copyright is the code itself, not the functionality of the product.

Using IP to protect the aesthetics of wearables
Trademarks   Any name or logo that can be represented graphically and that is capable of distinguishing the goods or services of one undertaking from those of another may be registered as a trademark.  Designers of wearable technology can put their trademark on their goods to prevent others from making a copy, but trademark protection does not extend to the design of the product itself. Although it is possible to register 3D trademarks, they must be distinctive and in practice can be difficult to enforce.

Copyright   Although copyright is the IP right most often associated with the creative industries, the protection that it offers to wearable technology is limited. To be protected by copyright in the UK, a work must fall within one of eight categories,  the most relevant of which is works of artistic craftsmanship. However the threshold for showing that a work is one of artistic craftsmanship is high, meaning that the aesthetic component of wearables is not likely to be protected by copyright in the UK. Other countries, including the United States, France and Germany, do not have closed-list copyright systems; and so in these countries wearables may be protected as long as they fulfil the local test for originality.

Design rights   These can offer good protection for the aesthetic components of wearable technology – whether the product is an attachment or clothing. Registering designs in the UK or at a European level will prevent third parties from using designs that do not make a different overall impression on the informed user of that wearable. The advantage of the registered community design (RCD) over the UK registered design is that it has unitary effect throughout the European Community. An unregistered community design (UCD) right also exist at a European level, where it is not necessary to rely on registration in order to protect a design. The UCD is very similar to the RCD and UK registered design, but protection lasts for only three years. It has nonetheless been successfully invoked recently by Karen Millen to protect the design for a shirt.  The UK unregistered design protects only the original shape or configuration (whether internal or external) of the whole or part of an article, which means that it is less relevant to wearable technology as it does not protect the more intricate elements of a design.

Collaboration: working together and staying friends 
The key to getting a wearable right is to combine cutting-edge technology with cutting-edge design – a feat that many companies are not capable of achieving alone. This has led to – and will increasingly lead to – collaborations between technology companies and designers. When entering into a collaboration agreement, remember to address the issue of IP ownership: should each party retain any intellectual property rights that they each contribute to the product? What about jointly developed IP: how should that be split? These kinds of issues can be straightforward if addressed up front, but can quickly spiral out of control if not and cause major tensions between the parties.
Each party will want to ensure that it owns all the IP created by its employees (which under UK law generally vests automatically in the employer as long as the work is created in the course of employment) or by third parties commissioned to contribute to the product (which vests in the person commissioned to make the design, so should be assigned in writing to the collaborators).

Other issues
Don't forget to consider the following issues: 

•    Regulatory Does your product comply with the relevant pharmaceutical, cosmetic, medical-device or other regulations?
•    Data privacy If you are collecting consumer data, have you ensured that you comply with the necessary data protection regulations?
•    Customs If you are selling a particular product abroad, do you know which category it falls into from a customs perspective? For example, a smart watch may be considered a computer rather than a watch.