Protecting intellectual property amid industry disruption

Autonomous driving technology is continuing to disrupt and transform the automotive space, with new entrants disrupting what was once a largely homogenous industry.

“In the past, organisations that were not native to the transport industry struggled to make a significant impact. This was largely due to the homogeneity of processes and vendors,” according to Michigan, U.S.-based Intellectual property (IP) law firm Harness, Dickey & Pierce, which will be celebrating its 100th anniversary in 2021.

“The idea of software companies developing transportation systems would have been unimaginable 20 years ago, but it could soon be a reality. With the introduction of autonomous driving technology, the landscape is now two-pronged, with software and communication technology companies working on vehicles and automobile companies working on complex software concepts and sensors,” says the firm.

Known as Harness Dickey for short the firm has represented automotive OEMs and suppliers since its inception in 1921 and is one of the largest patent and trademark law firms in the United States. In 2019 it was named among the top five law firms in the country for providing counsel to companies with the largest portfolios of issued U.S. patents. The firm currently represents 44 of the “US Patent Elite” — a list of 100 companies with the largest portfolios of granted U.S. patents, as compiled and reported by IAM (an IP business media platform).

Harness Dickey has been involved in the development of technologies pertaining to hybrid, diesel and electric vehicles, as well as having served as patent and trademark counsel for tens of thousands of U.S. and foreign automotive patents, trademarks, licenses, freedom to operate investigations and lawsuits.

In addition to ranking #2 among firms who provide counsel to the U.S. patent elite companies, Harness Dickey was ranked #6 for filing the most patent applications on behalf of those companies. Harness Dickey provides full-service IP solutions to clients in virtually every industry, technology field, and business category. “It always helps to have great clients, but this is also a recognition of the hard work our attorneys, support staff, and docketing teams do here every day,” says Michael Wiggins, Principal at Harness Dickey.

Automotive Industries (AI) asked Harness Dickey CEO, Bill Coughlin what some of the major issues are that he sees being raised regarding intellectual property rights of automotive technologies.

Coughlin: Global collaborations seem to be accelerating due to the added costs around electrification and autonomy — and the need to win the race to place products in the market.

So, contributing IP rights, negotiating under what circumstances they can be used, and preserving competitive advantage is a delicate balance.

AI: How can OEMs and suppliers safeguard their proprietary technologies when it comes to connected and autonomous vehicles?

Coughlin: Firstly, these IP creators need to be strategic about what they should protect. It’s not just about the cost of protection — it’s about targeting your IP investments in the technology advances that others will likely need. Many more inventions will be needed to bring autonomous vehicles to scale and inventive solutions from more than one OEM or supplier will be needed. And sharing will be the smart play, not just for manufacturers, but for consumers who will be able to benefit sooner as a result.

AI: Sharing technology platforms is critical to the development of new vehicle development – how will this impact IP litigation and future IP-related collaboration?

Coughlin: Historically, the OEMs sharing vehicle platforms have played well together. It’s usually two automakers that work this out between themselves. But new entrants like Rivian are changing this game by creating platforms that could be more broadly shared. Technology platforms on the other hand may need to be widely shared to encourage adoption, and reasonable IP terms are instrumental. SmartDeviceLink from Ford is a good example. Some litigation in the auto industry is inevitable, but hopefully the patent wars we saw around smart phones will be avoided.

AI: Have the technological breakthroughs in automotive technologies seen a corresponding boom in filing of patents?

Coughlin: Overall, the number of automotive patents has nearly doubled since the great recession. But my recollection of
Ford in particular is that the growth has been much higher. In fact, Ford is now in the top 10 patentees for the U.S. — and Ford now leads the industry in being awarded U.S. patents.

AI: How has Harness Dickey managed to keep its premier position as a leader in IP and trademark law?

Coughlin: I could give you stock answers like our relentless protection of client interests and extraordinary results. And it would all be true. But I think that the firm has thrived for 100 years because our culture and values are built around high expectations and a genuine desire to bring out the best in each other.

AI: How do you see the intellectual property and trademark challenges growing in the automotive sector in light of the globalised nature of the industry?

Coughlin: As the supposed Chinese curse goes “May you live in interesting times.” Well, I think that the auto industry can safely say that we have been living that particular dream in recent years. But I believe that the times will continue to be interesting, albeit more positively than before. Connectivity, electric powertrains, autonomy and so forth will become even more challenging as commercialization ramps up across the globe. Various IP right-holders will see dollar signs and not be able to resist from making outlandish demands, not just in the U.S. but everywhere these technologies are used. You may soon find that your IP counsel has become your best friend.

AI: How will Harness Dickey mark its 100th year anniversary in 2021?

Coughlin: Stay tuned, because it’s going to be epic. We will use the entire year, not just to connect and celebrate, but to provide the kind of innovative IP solutions that our clients will need to win.

Interviewed: Bill Coughlin, chief executive officer of Harness Dickey

Where law and manufacturing expertise meet

Intellectual property attorneys need to be multi-skilled in order to understand the technology that needs to be protected.

Many Harness Dickey attorneys also have degrees and hands-on experience in the engineering and scientific disciplines in the automotive, aerospace and transportation industries.

This includes Harness Dickey’s chief executive officer, Bill Coughlin, who began his legal career at Harness Dickey and spent 17 years with the firm, before leaving in 1995 to work in Chrysler Corporation’s legal department, where he served as the company’s Chief Trademark Counsel and then Chief IP Legal Counsel until 2000.

After leaving what was at that time DaimlerChrysler, he spent 18 years at Ford as Assistant General Counsel and CEO of its IP subsidiary, Ford Global Technologies. For a decade, Bill also served as Adjunct Professor at Western Michigan University Cooley Law School, teaching trade secret law, e-commerce law and IP Risk Management. He was appointed CEO of Harness Dickey in January 2020.

“We are highly familiar with engine and transmission controllers, variable displacement engines, high efficiency  internal combustion, hybrid and diesel powertrain systems, powertrain components, exhaust treatment systems, convertible roof mechanisms, electromagnetic actuators, airbags, junction boxes, electrical switches, industrial manufacturing, tire pressure monitoring systems, suspension systems, voice recognition systems, stability control, GPS technology and infotainment systems — to name only “a few,” says the company in a statement.

“When our clients seek comprehensive service and protection for their innovations in the automotive and transportation industry, we provide it. When it comes to insight, The North American International Auto Show and the Society of Automotive Engineering Conference take place in our backyard. Our neighbours include the headquarters for the largest U.S. automotive OEMs and most of the U.S. suppliers, as well as their CEOs, marketing directors, accountants and engineers, with whom we interact regularly over the backyard fence,” it adds.