TAKEAWAY: Companies may need to update their patent strategies as they add Internet-connected capabilities to their existing product lines.

With the fast pace of digitalization, many companies are developing an increasing number of Internet-connected products designed to communicate with computers and various other products. Everything from ‘traditional’ watches, toys, and other consumer products to automotive parts and medical devices have been made ‘smart.’ But as companies update their products with more connectivity, they may also need to update the way they think about patent protection.

For example, ongoing changes in the patent laws have made it more difficult to establish that new software is indeed novel and eligible to be patented. As a result, innovative companies may want to file patent applications with specifications that have been drafted with these potential legal hurdles in mind. The specifications may be crafted to provide ample detail regarding the inventive steps, how those steps are performed (e.g., code or algorithms), and what hardware they may be performed by. It can also be helpful to describe how the invention solves an actual, real-world problem, and how the invention improves the technological field or makes a computer function more efficiently. When patenting a digitalized device, innovators now focus on describing how their inventions go beyond merely linking a known technique or known device to the Internet. Taking the time to capture more detailed information with software engineers and developers may improve the chances of successfully obtaining patent protection for these types of inventions.

Additionally, as devices become more connected, it can be more important to draft patent claims that cover only one actor or entity. Since issues of divided infringement—more than one entity performing a claimed method—can make asserting a patent more complex, care should be taken up front to draft patent claims that both capture the novel aspects of the invention and also capture the actions of only one entity, if possible. For a company developing a product, it can be useful to think in terms of what steps the company (or its competitors) may actually perform, versus the steps that may be performed by a customer or another entity.