Supporting Embark’s Technology with a Practical IP Strategy
Ensuring efficient and thoughtful use of all facets of IP law to drive innovation and protect Embark’s intellectual property.
At Embark, we’ve engaged in a carefully considered intellectual property (IP) strategy that aligns with our business objectives and takes full advantage of IP law. We are in the business of developing leading-edge self-driving technology to support our shipper and carrier partners and have formulated IP protections that secure our ability to do so. We don’t reflexively try to patent everything for monetization reasons or otherwise, nor do we totally ignore patents. Instead, we make sure that our business needs inform our patent filing strategy, and that our patent strategy works harmoniously with the technology development efforts that are at the core of our business model.
In short, Embark believes in quality, not quantity, of our patents. Each Embark decision to file a patent follows a rigorous internal examination of the product roadmap, the business case for the patent, potential enforceability, and other issues. For example, our recent filings related to innovations including aspects of our Vision Map Fusion (VMF) technology were only made following a rigorous assessment of the business value, longevity, detectability, and the importance of confidentiality.
Working within the Intellectual Property Landscape
Patents are just one form of IP. Trade secrecy, contract law, copyright law, and trademark law are equally important aspects of IP protection, and our IP strategy is carefully considered across all of these areas of IP protection.
As a pre-revenue AV software company, much of our technology is kept proprietary through trade secrecy law and contractual and technical confidentiality controls. These measures are important to our overall IP strategy because, as part of the legal quid pro quo to obtaining a patent, a company that files a patent must disclose the technology that enables that patent’s claims for the rest of the industry to see. In many cases, it hasn’t made sense for us to disclose our industry-leading “secret sauce” through a patent application, which is why we often rely on trade secrecy, software copyright law, and other forms of protection instead.
In addition, patents are expensive in terms of engineering mindshare, our most critical resource. A good quality patent requires close review by the inventing engineers, which takes them away from their core task of developing great software. That is not to say that we will not invest in patents when appropriate, only that we understand that the bill always comes due.
Patents are also expensive monetarily. Each patent costs tens of thousands of dollars to file and prosecute, and this number can go up rapidly for multiple jurisdictions. Thus, focusing on only filing quality patents is key to being a responsible steward of both engineering and financial resources.
The time to obtain a patent is a consideration as well because an average patent application takes over two years to be granted, and sometimes well beyond that. This is a lifetime for a cutting-edge technology company, which raises the risk that an issued patent that was not carefully selected covers obsolete or irrelevant technology by the time it is issued, because the company has grown or found better ways to achieve an objective.
Many companies take a different approach from Embark — filing as many patents as they can, as quickly as possible. This rush to patent has led to a system that is overwhelmed with many patents of dubious value. Yet, despite this investment, the overwhelming majority of patents never see the light of day after they have been filed. The minority of patents that are litigated and that are challenged in the US Patent & Trademark Office during litigation (the USPTO is the agency that allowed the patent in the first place) are declared invalid nearly 30% of the time, suggesting they at least some of them may have been too broad in the first place. In this environment, a strategy that takes advantage of multiple layers of IP protection in addition to a high quality patent portfolio is superior to a shotgun, patent-centric approach.
Embark’s Practical Approach to Patents
AV technology firms are building on complex multi-faceted inventions based on work from many different fields — software, hardware, transportation, networking, and beyond. No one company can “cover everything” using patents because there is too much prior art (“prior art” is the patent law term for earlier technology or documents that show a patented invention was already known) and each individual patent only covers a small part of the whole solution. A company could spend an infinite amount of money filing patents on everything it develops and still not cover a meaningful slice of AV technology.
Consequently, Embark aims for a reasonable number of high-quality patents covering our core technology, and plans to supplement these patents with trade secrecy, confidentiality agreements, and copyright law, because it doesn’t make good business sense to do otherwise. Our goal is to use our valuable resources strategically and focus on patents with staying power because our success will ultimately be measured by the quality of our technology, rather than the size of our patent portfolio.
At Embark, we believe it’s better to focus on filings that matter.
Sid Venkatesan is the Chief Legal Officer at Embark. Sid counts two decades of legal and business experience in the technology and industrial space. Before Embark, Sid served as Executive Counsel and Chief IP Counsel at GE Digital, where he led negotiations of commercial deals and M&A totaling hundreds of millions of dollars and oversaw General Electric’s Industrial Internet of Things IP strategy, including oversight over a portfolio with hundreds of patent assets related to novel IoT applications and technologies. Prior to GE, Sid was a Partner at Orrick, Herrington & Sutcliffe LLP, resident in the firm’s Silicon Valley office with a broad IP litigation, transactional and counseling practice that included multiple bet-the-company patent and trade secret litigations representing major technology companies across a broad range of industries. Sid has also served as a business and legal executive at a private equity-backed company, has written on IP strategy topics in leading industry publications and has been the recipient of many legal industry awards, including recognition as a Corporate IP Star, Future Star, and Lawyer on the Fast Track amongst other accolades.
Sid holds an MBA from the Wharton School at the University of Pennsylvania, a JD from NYU School of Law, and a BS in Mechanical and Aerospace Engineering from Cornell University, concentrating in Automotive Engineering. He was also a software developer for several years.
