February 11, 2019
Patent Attorney Chicago, IL
In an interview with patent education site Patent Pandas, Jie Qi, cofounder of edu-tech electronics biz Chibitronics, told her tale of how after inviting her to meet with company executives allegedly Google tried to patent her ideas for electronic books with embedded circuitry.
In March 2014, Qi says, she was working on her doctorate at MIT’s Media Lab,developing techniques for integrating electronic circuits into paper books. She received an invitation to visit Google’s Advanced Technology and Projects (ATAP) group, which was headed at the time by Regina Dugan. During her job interview with Google she claims, she shared what she had been doing to develop interactive books and storytelling methods.
Google then proceeded to file a US patent application related to her work, a fact she didn’t realize until 2016. That’s when a friend mentioned that some of the individuals who had met her at Google had filed a patent application on interactive pop-up books embedded with circuitry.
“These patents covered many of the same things that [I] had discussed, that I’d showed them, with no mention of my or others’ work in the field,” wrote Qi in her post.”I found out from a friend who followed a pop-up book blog – someone there was excited that Google was researching book technologies and happened to publish a blogpost about it.”
With the support of MIT Media Lab director Joi Ito, Google offered to add Qi as an inventor of the patent. She declined, she says, because others who had worked on the project would not be included. Receiving credit as an inventor is not the same thing as being the patent assignee, the owner. While an inventor may get the credit on the patent, they don’t have the right to use the patented technology themselves.
Dugan left ATAP shortly thereafter and ATAP’s legal counsel ended up sending the US Patent Office the prior art documentation supplied by Qi and her colleagues – the existence of prior art allows a patent examiner to decline to grant a patent because it establishes that the idea being considered for protection is not original. Ultimately,Google ended up abandoning the patent application after the controversy.
But this was not the end of Qi legal saga about the circuit stickers! Qi had decided not to patent her idea because as an educator she wanted to allow the public to innovate based on her idea. This noble idea backfired on Qi when the backer of a crowdfunding campaign, Liteseeds, to develop LED stickers was allowed to file a patent on the idea without the involvement of Qi or her colleagues.In her biography page on the Liteseeds website, she even cites my first advisor Leah Buechley as inspiration without any mention our prior work in paper circuitry.
Sadly this is not an isolated incident leading some to speculate Silicon Valley has sunk to new lows in its race to patent key tech first doing whatever it takes to win. Developers Ryan Spahn recounts a similar experience with Google ATAP (part of its Motorola Acquisition) in 2013.
Spahn says in 2013 he began work on a project called SpeakerBlast, which connects internet devices so they can play audio in sync with one another. After Samsung in March that year said it would build similar capabilities into its S4 device, Google got intouch to discuss implementing the capability in the Moto X phone and a Non Disclosure Agreement (NDA) was signed the following month.
“They asked if we ever thought about selling our technology to them before the meeting and at the meeting they baited us for how our tech worked, saying we’d like to work with you, tell us how it works,” Spahn wrote. “Once we did, they left the room (Dugan’s Second right hand man at the time and another) and three minutes later, [they] showed us the door saying the ‘race is on.'” According to Spahn, Google has since been awarded patents for syncing audio across phones.
Spahn continued. “I felt it was not professional and I met with many other companies like Samsung [that] acted with the utmost respect towards us. Yet, Google, whose motto is ‘Don’t be evil,’ can’t act in the same fashion?”