Take one of the largest sneaker companies in the world, add Michael J. Fox time traveling to 2015, sprinkle in a bit of absurd technology, and you end up with sneakers that lace themselves. In 1989, Back to the Future II introduced high-top, power lacing Nike sneakers, along with hover boards and flat screen televisions that doubled as window shades. But this sort of technology is rarely injected into a plot generically; inventions of the silver screen are hopelessly inundated with corporate logos. Product placement in a movie about the future can be a powerful marketing mechanism that, among other things, sends a signal about the company’s longevity and ability to innovate.
Nike, however, has taken this strategy one step further. Not only is it in the process of developing the futuristic technology to allow sneakers to actually self-lace, it is also relying on its own product placement of the Nike logo in 1989’s Back to the Future II to market the shoes today, long before they hit the factory floor.
On April 29, 2009, Nike filed an international patent application for an “automatic lacing system.” The application describes the mechanism as a set of straps, connected to a motor and spool that tighten on top of the foot, in addition to a “clinching system” that tightens around the ankle. The lacing system would be powered by either an internal, rechargeable battery, or by disposable batteries. When The World Intellectual Property Organization (WIPO) published the application in November 2009, the technology blogosphere – which undoubtedly has some overlap with Marty McFly lovers – went into a frenzy. The prospect of the imaginative technology depicted in a movie becoming a reality by the year 2015 was described by one blogger as a “time-warping paradox so perfectly mimicking those in the Back to the Future movies that the world might possibly end.” This sentiment seems to be a fairly accurate representation of how potential collectors feel about the shoes, but what is unclear is whether the technology for the power laces is patentable or, better yet, patent-worthy.
The question of whether the automatic lacing system is patentable is a matter of statutory interpretation, for which I can only provide a layperson’s perspective. International patents are governed by WIPO and the Patent Law Treaty, which harmonizes filing standards but not patentability standards across countries. Within the statutory framework of the US, patentability depends on three criteria. 35 U.S.C. § 101-103 (2010) require that for an invention to be patentable, it must be useful, novel, and non-obvious. While it seems fairly clear that a mechanism by which shoes lace themselves would be useful (because it would add an element of convenience that most “smart” technology provides), the criteria of novelty and non-obviousness require more analytical heavy-lifting.
35 USC § 102 describes scenarios under which an invention is not novel, and thus not patentable. One such scenario is if “the invention was known or used by others in this country. . . before the invention thereof by the applicant for patent.” 35 U.S.C. § 102(a) (2010). Enter amateur inventors like Blake Bevin. Not only did Bevin develop and implement the technology for self-lacing sneakers earlier this year, she also credits her invention to the same source as Nike: Back to the Future II. Bevin and other tech-savvy McFly fans have the power to potentially derail Nike’s efforts, especially since the technology is already apparent, even to the point of publishing a how-to guide. It seems to me that an invention would become increasingly less novel if the mechanism has already been implemented by another inventor. Furthermore, though the Nike and Bevin mechanisms are not identical, their functions are virtually indistinguishable. While Bevin will not likely be a problem in this regard, considering her work came after Nike’s 2009 filing, it also seems unlikely that Bevin is the first of her kind to work on this type of device in the 21 years since the Back to the Future sequel.
§ 103 provides that an invention is obvious, and thus not patentable if the differences between it and “prior art” are obvious to a person of ordinary skill in the subject area. 35 U.S.C. § 103(a) (2010). Essentially, the patent applicant’s invention cannot obviously flow from existing inventions – the new idea cannot be an apparent corollary to existing ideas. But can images, like those in Back to the Future II, function as prior art? Initially, it would seem that the most problematic detail for Nike is also its most powerful marketing tool: the idea for this device came from a movie in which its name was attached to the very device it seeks to patent. The movie created a free-for-all among inventors because they all had access to the same imagery for how the mechanism would function, regardless of the fact that Nike’s logo was on the shoe. The element of considering “prior art” for the non-obviousness criteria, thus, is complicated by whether the images in the movie constitute prior art and if Nike owns that prior art. However, it is very unlikely that the images in Back to the Future II would constitute anything more than an “idea,” and ideas, standing alone, are not patentable nor do they constitute prior art. See Jones v. Hardy, 727 F.2d 1524, 1528 (Fed. Cir. 1984). The mere existence of the idea, even in something as illustrative as a movie, does not preclude Nike from reducing that idea to a workable product.
Finally, it would seem that when faced with the question of whether it is good business practice to attempt to patent the automatic lacing system, Nike lived by its own mantra and proclaimed, “Just Do It.” But Nike’s application has no mention of how the shoe will actually perform with the lacing system. For an athletic shoe company, what is there to gain from patenting a device that will likely hinder the performance quality of the shoe? Undoubtedly, collectors will flock to own the newest technology. But is it really in Nike’s best interest to invest in making shoes for collectors? In the way of athletic shoes, the device creates practical problems because the motor and spool are in the heel of the shoe, and automatic tightening means the owner of the shoe has less control over how tight they want their laces tied. Charging the device creates another problem – consider what happens whenever you step on or drop an electrical device in water. Even if the power laces are patentable, the question of patent-worthiness has a much more delicate cost-benefit analysis: Nike must consider whether the added convenience of not having to tie shoestrings is substantially mitigated by the decreased functionality of the shoe itself.
*Tiffany Johnson is a second-year law student at Wake Forest University School of Law, and works as a Legal Writing and Research teaching assistant. She holds a Bachelor of the Arts in Politics from Princeton University. Upon graduation in May 2012, Ms. Johnson intends to litigate in the private sector.