I was going to write an article mapping Nike's latest generation running shoes onto its extensive patent portfolio. But then I had one of those Eureka moments – suddenly everything became clear. Very clear.
All you need to know is that at the Tokyo Olympics – which starts on July 24 2020 and which, at the time of writing, is just over five months away – the shoes below (or a variant thereof) will be winning medals and breaking world records in the 100m, 200m and 400m Olympic finals:
You don't need to know what technology has gone into the shoe (Nike’s Viperfly) – you can just (instinctively) look at the shoe above and tell from the design that, currently, this is the most advanced sprinting shoe in the world.
Details of the Viperfly were released by Nike on February 5 2020.
A super advanced shoe with an innovative carbon plate, manufactured by a new technique, with an airbag, advanced fabric design and advanced foam. What more does anyone need to know?
And then at the other end of the sport, in the marathon, the medal winners and world record breakers at Tokyo 2020 will be wearing this shoe (or a variant thereof):
Again, you don't need to know anything about the above marathon shoe except that it has a single full length carbon fibre plate, dual airbags at the front and a sole thickness of 39.5 mm. That's important.
On January 31 2020, governing body World Athletics (which is the IAAF rebranded) issued the following revised rules regarding shoetech:
All you need to take away from the above rule change is that from May 1 2020 onwards any shoe used in competition must have been released to the public for at least four months.
But, this rule change takes us into September 2020, which is beyond the scope of the 2020 Tokyo Olympics, which begin July 24.
With regards to the 2020 Tokyo Olympics there is no requirement for competition shoes to have been on sale for four months if the shoes are introduced before May 1 2020. This actually presents non-Nike shoe manufacturers with a unique opportunity as discussed below.
The other bit of interest in the rule changes is the following moratorium:
World Athletics could have legislated in new Rule 5.13.1 that "any shoe used in competition ... must not contain more than
onezero rigid plate or blade made from carbon fibre or another material with similar properties ...".
But World Athletics chose not to and instead permitted advanced carbon fibre technology and manufacturing techniques to go into Olympic running shoes.
It was at this point when I studying the technical rules looking (in vain) for one preventing a shoe manufacturer from enforcing IP rights, e.g. patents for the technology, registered designs for the shape of the shoe and 3D trademarks, against another shoe manufacturer at the Olympics that I had my Eureka moment.
As well as being a patent attorney with more than 25 years’ experience in IP, an amateur marathon runner (I ran the London Marathon in 2019 sub four hours) I have also always been a huge Formula1 fan. Ayrton Senna, Michael Schumacher, Eddie Irvine, James Hunt, et al. make it into my pantheon of the greats alongside Winston Churchill and my late father.
Why are there no patent/IP disputes in F1? This is a commonly asked question. The general feeling among patent attorneys who are familiar with F1 is that the lack of patent disputes is partly because of the length of time it takes to get a patent granted and the F1 technical rules are updated regularly to ban radical new inventions. Yes, I know that you could file a utility model and get it granted in a matter of days/weeks, but that does not seem to happen. The feeling is that patents are good at protecting advanced technology in the medium to long term, but they are not so good at protecting advanced technology in the short term because of the delay which is inherent in getting a patent application allowed by a national IP office. This is partly the raison d’être of utility models after all.
However, F1 teams do file patent applications for the advanced technology which they have developed, and often the technology finds its way into the consumer market.
Remember how back in 2009 some of the car manufacturers in F1 threatened to pull out of F1 and create their own rival series as a clever negotiating tactic against Bernie Ecclestone and Ferrari's favoured status?
Ferrari initially chaired the potential breakaway group but Ecclestone then cut Ferrari a secret deal. In response, the likes of McLaren, Williams and Renault cooperated to break Ferrari's dominance and favoured team status with Ecclestone/F1 and to get a larger slice of the TV money. And it worked. Genius.
Back to running shoes. Nike is the Ferrari of the running world. The company dominates the field (like Ferrari in F1), and Nike’s success is fully deserved.
As you will see from the screenshots below, Nike innovates at least one or two orders of magnitude more than any other running shoe company, it has the best marketing, it is the team that everyone wants to be part of. Nike is the Ferrari of running – that’s a huge compliment.
Nike would be my dream client. I've got a mortgage to pay, and Nike invests heavily in R&D and it patents widely and aggressively to protect its technology.
Nike deserves every success in the consumer market for its vision, focus on innovation and technology, coupled with some genius branding and free PR.
Have a look at the number of European patent applications published by different shoe manufacturers in 2019:
Nike: how many do you think?
Answer: 274 European patent applications published in 2019 filed by Nike Innovate CV.
For completeness, Adidas has 40, which is still an order of magnitude less than Nike.
Even Nike's company name and company structure is genius. The company name is Nike "Innovate" and the "CV" is a low tax company structure where the business isn't actually a tax resident anywhere in the world. Seriously.
The above data shows that non-Nike shoe manufacturers aren't really innovators, at least they are one or two orders of magnitude less innovative than Nike.
So here's the thing. The non-Nike shoe manufacturers could take a leaf out of the play book of the breakaway F1 teams a decade ago and cooperate for the Tokyo Olympics. They could pool their limited R&D resources and jointly produce a copy of Nike's running shoes to be used by their athletes at the 2020 Tokyo Olympics.
In advance of Tokyo 2020, the non-Nike shoe manufacturers could reverse engineer Nike’s shoes and produce a copy which their athletes could wear at the Olympics.
For the avoidance of any doubt, I'm 100% not talking about releasing copies of the shoes (selling) to the public/consumers. This would obviously constitute potential patent infringement. I am only talking about producing a few pairs of shoes which their elite athletes can wear at the Tokyo Olympics and then they go in the bin.
According to most patent laws, there is a defence of private and non-commercial use when threatened with patent infringement.
According to S60(5)(a) of the UK Patents Act, you cannot be sued for infringement of a UK patent if you use an invention in a private and non-commercial setting.
I think the non-Nike shoe manufacturers could argue that an Olympic final is a non-commercial setting. Private? Hardly, but that's where a good lawyer comes in.
But from a practical perspective, Nike, like F1 car manufacturers, is unlikely to have granted Japanese patents or Japanese utility models on its very most recent advanced technology. However, even if Nike filed a number of Japanese utility models and got them granted in time for the Olympics, from a PR perspective it would be a disaster for Nike to threaten to sue another manufacturer at the Olympics. Even if Nike did threaten to assert its Japanese patents and/or utility models, the other manufacturers could ignore such threats. Yes, they might be in the wrong but if they are not selling the shoes then where is the commercial harm? What is the quantum of potential damages? Potentially zero. What is the likelihood of getting an injunction? Potentially zero.
So here's the intriguing question. Are the other shoe manufacturers smart enough to collaborate? Will they produce a copy of Nike’s world class shoes for their athletes by the deadline of April 30 2020 when the new rules take effect? The Tokyo 2020 Olympics could be a level playing field in terms of shoetech. What is certain is that the shoes above (or a variant thereof) will win all the medals and will be breaking all the world records (for athletics track and road) at Tokyo 2020.
Phil Jeffrey is a chartered and European patent attorney.
The views expressed in this article are personal.
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