• At Kemp Little, we are known for our ability to serve the very particular needs of a large but diverse technology client base. Our hands-on industry know-how makes us a good fit with many of the world's biggest technology and digital media businesses, yet means we are equally relevant to companies with a technology bias, in sectors such as professional services, financial services, retail, travel and healthcare.
  • Kemp Little specialises in the technology and digital media sectors and provides a range of legal services that are crucial to fast-moving, innovative businesses.Our blend of sector awareness, technical excellence and responsiveness, means we are regularly ranked as a leading firm by directories such as Legal 500, Chambers and PLC Which Lawyer. Our practice areas cover a wide range of legal issues and advice.
  • Our Commercial Technology team has established itself as one of the strongest in the UK. We are ranked in Legal 500, Chambers & Partners and PLC Which Lawyer, with four of our partners recommended.
  • Our team provides practical and commercial advice founded on years of experience and technical know-how to technology and digital media companies that need to be alert to the rules and regulations of competition law.
  • Our Corporate Practice has a reputation for delivering sound legal advice, backed up with extensive industry experience and credentials, to get the best results from technology and digital media transactions.
  • In the fast-changing world of employment law our clients need practical, commercial and cost-effective advice. They get this from our team of employment law professionals.
  • Our team of leading IP advisors deliver cost-effective, strategic and commercial advice to ensure that your IP assets are protected and leveraged to add real value to your business.
  • Our litigation practice advises on all aspects of dispute resolution, with a particular focus on ownership, exploitation and infringement of intellectual property rights and commercial disputes in the technology sector.
  • We have an industry-leading reputation for our outsourcing expertise. Our professionals deliver credible legal advice to providers and acquirers of IT and business process outsourcing (BPO) services.
  • We work alongside companies, many with disruptive technologies, that seek funding, as well as with the venture capital firms, institutional investors and corporate ventures that want to invest in exciting business opportunities.
  • Our regulatory specialists work alongside Kemp Little’s corporate and commercial professionals to help meet their compliance obligations.
  • With a service that is commercial and responsive to our clients’ needs, you will find our tax advice easy to understand, cost-effective and geared towards maximising your tax benefits.
  • At Kemp Little, we advise clients in diverse sectors where technology is fundamental to the ongoing success of their businesses.They include companies that provide technology as a service and businesses where the use of technology is key to their business model, enabling them to bring their product or service to market.
  • We bring our commercial understanding of digital business models, our legal expertise and our reputation for delivering high quality, cost-effective services to this dynamic sector.
  • Acting for market leaders and market changers within the media industry, we combine in-depth knowledge of the structural technology that underpins content delivery and the impact of digitisation on the rights of producers and consumers.
  • We understand the risks facing this sector and work with our clients to conquer those challenges. Testimony to our success is the continued growth in our team of professionals and the clients we serve.
  • We advise at the forefront of the technological intersection between life sciences and healthcare. We advise leading technology and data analytics providers, healthcare institutions as well as manufacturers of medical devices, pharmaceuticals and biotechnological products.
  • For clients operating in the online sector, our teams are structured to meet their commercial, financing, M&A, competition and regulatory, employment and intellectual property legal needs.
  • Our focus on technology makes us especially well positioned to give advice on the legal aspects of digital marketing. We advise on high-profile, multi-channel, cross-border cases and on highly complex campaigns.
  • The mobile and telecoms sector is fast changing and hugely dependent on technology advances. We help mobile and wireless and fixed telecoms clients to tackle the legal challenges that this evolving sector presents.
  • Whether ERP, Linux or Windows; software or infrastructure as a service in the cloud, in a virtualised environment, or as a mobile or service-oriented architecture, we have the experience to resolve legal issues across the spectrum of commercial computer platforms.
  • Our clients trust us to apply our solutions and know-how to help them make the best use of technology in structuring deals, mitigating key risks to their businesses and in achieving their commercial objectives.
  • We have extensive experience of advising customers and suppliers in the retail sector on technology development, licensing and supply projects, and in advising on all aspects of procurement and online operations.
  • Our legal professionals work alongside social media providers and users in relation to the commercial, privacy, data, advertising, intellectual property, employment and corporate issues that arise in this dynamic sector.
  • Our years of working alongside diverse software clients have given us an in-depth understanding of the dynamics of the software marketplace, market practice and alternative negotiating strategies.
  • Working with direct providers of travel services, including aggregators, facilitators and suppliers of transport and technology, our team has developed a unique specialist knowledge of the sector
  • Your life as an entrepreneur is full of daily challenges as you seek to grow your business. One of the key strengths of our firm is that we understand these challenges.
  • Kemp Little is trusted by some of the world’s leading luxury brands and some of the most innovative e-commerce retailers changing the face of the industry.
  • HR Bytes is an exclusive, comprehensive, online service that will provide you with a wide range of practical, insightful and current employment law information. HR Bytes members get priority booking for events, key insight and a range of employment materials for free.
  • FlightDeck is our portal designed especially with start-up and emerging technology businesses in mind to help you get your business up and running in the right way. We provide a free pack of all the things no-one tells you and things they don’t give away to get you started.

Wearable tech: insights into the intellectual property rights

The Apple Watch was only released in April this year, yet Apple is apparently already working on the Apple Watch 2. It seems, then, that Smartwatches are leading the way in wearable tech, and this is likely to continue in 2016 with the digital watch titan, Casio, also set to launch its own smartwatch. Enormous growth is predicted for the wearable technology sector generally over the next few years and CCS Insight predicts sales to increase globally to 135 million by 2018.

However, wearable technology is not limited to smartwatches. Google Glass was withdrawn as a consumer product, but it may be re-launched soon with more of a business focus. Glass’s Sony rival, SmartEyeglass, is already gaining traction as a business tool, including a recent Virgin Atlantic trial. Pure fitness and health devices like Fitbit and Jawbone are also increasing in popularity, and Google may even be releasing a prescription-only medical wristband for patients. High-tech clothing products are also available, such as the Ralph Lauren smart polo shirt that monitors heartbeat, respiration and stress levels or Sensoria’s smart socks.

Wearable tech businesses, as with other technology businesses, have a heavy reliance on their intellectual property (“IP”). The difference between a successful wearable tech business and a failing one, may well be its approach to harnessing, protecting and enforcing its IP. In that regard, there is a bundle of overlapping IP rights to consider, including copyright, database rights, trade marks, patents, design rights and confidential information.


Figure 1

The IP team at London-based Kemp Little, the UK’s leading technology law firm, have come up with some useful practical tips on how businesses entering this space can protect their IP assets, categorised as (i) invention rights, (ii) data rights and (iii) product rights.

Invention rights

Wearable tech products, from the hardware’s monitoring sensors, to the software that manipulates the resulting data and provides an end-user experience, are undeniably smart. Developers should consider whether anything they are doing amounts to a new invention that could be made the subject of a registered patent in target countries. A registered patent, while expensive to obtain, can be an extremely powerful and valuable IP right, providing a legal monopoly for up to 20 years.

But not everything “clever” can be patented. A patentable invention must be:

  • New: not previously disclosed, anywhere in the world
  • Inventive: an unimaginative but skilled person in the relevant art would not come up with it
  • Capable of industrial application

Bear in mind also that software is generally not considered patentable in the UK and EU

However, source code will be protected by copyright laws instead, provided the code is original. It will only protect the code itself, but not entitle its owner to prevent the replication of functionality, if the new program is coded from scratch. 

Wearable tech businesses should take every care to ensure that their source code is kept private. They should also ensure that they actually own the copyright in the code since, by default, sub-contracted or commissioned developers (who are not employees) will own the source code they create, unless the contract states otherwise.

Data rights

Much has been written about data protection from the perspective of the customers of wearable technology, but wearable tech businesses should think about that data as an asset in its own right. The biometric data collected by an Apple Watch or smart polo shirt could be aggregated, anonymised and sold to medical or actuarial businesses, or it could be used for targeting future products and apps. 

A database can be protected either indirectly by copyright law or directly by ’database right’, an independent right introduced European legislation. Both rights prevent third parties from copying or extracting a substantial part of a database without permission. For copyright, it is the creative arrangement of the data that is protected; for database rights, it is the investment in obtaining and collating the data.  Usefully, the definition of what counts as a database is wide, and things that are not traditionally considered ‘databases’ may be covered, e.g. intranets or document management systems.

But what about protecting the data itself? The only right that can be said to protect the data itself is the right to ‘confidence’. Information not already known or disclosed to the public must be kept confidential if it is made clear, when passed on, that (i) it is confidential information, and (ii) it is being imparted in confidential circumstances. Anyone seeking to disclose or publicise such information or data, without permission, would be in breach of confidence and could be stopped by a court injunction, or may have to pay damages to compensate the owner.

Product rights

A wearable technology product’s branding and design can be more important to its success than its technical specifications. Whether you wear a smartwatch with watchOS or Android Wear probably depends on you being a fan of Apple or Google, which just happen to be the two most valuable brands in the world.

A brand is usually best protected by registering a trade mark, which gives the owner a territorial monopoly for that mark, for specified goods and services. For example, a wearable technology business might want to register its brand for:

  • Medical instruments (class 10)
  • Clothing, footwear and headgear (class 25)
  • Sporting activities (class 41)

Once granted, protection can last forever, provided that use is continuous and renewal fees are paid.  In order for a trade mark to be registrable, however, it must be: capable of graphical representation; distinctive; and not purely descriptive. There must also be no other identical or similar marks existing in the relevant territories, for similar goods or services; which could include unregistered marks with sufficient reputation. A global wearable technology business should have a worldwide strategy for trade marks, filing in all jurisdictions that matter. 

What the product actually looks like is clearly key for wearable technology; from the consumer and legal perspective. This is the market where fashion and technology combine: as Alan Dye, Apple’s head of User Interface Design put it, “if you’re going to put something on your body and wear it and it’s going to be on your wrist, we can’t not pay attention to that.” The relevant IP right is design right, which comes in both registered and unregistered forms in the UK and EU. Design right protects the aesthetics of a product. The design must be new, and not purely functional. It can last up to 25 years if registered or 15 years if unregistered.

As with the creation of copyright works, ensuring ownership of designs is crucial. External contracted designers should provide IP assignments and a product’s design process should be carefully documented so the date of design creation can be authenticated. Where possible, designs should be registered to enhance protection. Given the potential importance of the design of a wearable technology item, in staving off competition, such practical steps can be of real, tangible value down the line.

Conclusion

There is a suite of IP rights involved in a wearable technology offering which, properly harnessed and understood, often constitute the real value of the business. 

IP rights can be monetised in a number of different ways, depending on the business model adopted:

  • Licensing to third parties for certain purposes
  • Assigning rights that are no longer useful to the business
  • Using rights, and keeping them protected (registration or confidentiality)
  • Enforcing rights against third parties, in cases of infringement

It is usually through a combination of these that a business carves out its niche and thrives, but it can only do so if it first understands what IP rights it owns, and how to protect them in its dealings with third parties.

This article was originally published on ITProPortal. For further information please contact Emily Nuttall or Nick Allan.