Maryland Bar Bulletin
Publications : Bar Bulletin : March 2009


Intellectual Property Focus:  

Calls for new innovation and patentable inventions in sustainable technologies continue to grow. With this growth, it is important for green companies and entrepreneurs to create and manage green patent portfolios effectively. This article looks at some of the special opportunities and issues raised by sustainable technologies in the patent process.

For previous IP coverage, read the March 2008 or 2007 Bar Bulletin

Green filing. The first question many companies working with sustainable technology face is: what subject matter should be protected by a patent application? In answering this question, many of the IP “harvesting and mining” techniques developed to protect high-tech inventions may be helpful. Bottom-up filtering of inventions identified by engineers, and top-down review of new products and research areas can be used to identify innovative subject matter and candidate inventions.

Once harvested, all candidate inventions should be screened to make sure they satisfy key criteria for patentability in the US: eligibility, novelty and non-obviousness. Here again, special issues arise in making a green patent filing decision.

To be patent-eligible, the subject matter must be in one of the following statutory classes: process, machine, article or composition of matter, or improvements thereof. One may not obtain a patent covering laws of nature, physical phenomena, abstract ideas or naturally-occurring living organisms. As a result of new case law, pure business methods involving steps only carried out by humans generally may not be claimed in a patent. Regardless, much innovation in new green products or chemical compositions in solar, wind, water, nuclear or biofuels will likely meet this new requirement with proper patent application drafting.

Certain green inventions may also encounter hurdles in meeting the novelty and non-obviousness standards. In the context of a patent application, “novelty” generally means that the innovation is new and has not been publicly known or achieved by others before. In some sustainable technology areas, such as the development of solar power, a considerable amount of prior art and public knowledge already exists. A good patentability search in advance can help ensure that a candidate invention is truly new and help focus a patent application on the key features that differentiate the invention from existing knowledge.

The non-obviousness requirement, recently invigorated by the Supreme Court, mandates that differences between a claimed invention as a whole and the prior art must not be obvious. Under the new standard, and subsequent US Patent and Trademark Office (USPTO) guidelines, the level of innovation for patenting must go beyond trivial design improvements and modifications. For instance, if a person of ordinary skill in the relevant field can combine elements of existing technology according to known methods, an invention sought to be patented is likely to be obvious when it does no more then yield predictable results. As a consequence, to be non-obvious, green inventions may require even more innovative work than their developers originally planned. Fortunately for green developers, good patent drafting techniques can highlight the truly novel aspects of their inventions, and lead to successful results.

Green examination. Examination of green applications at the USPTO generally proceeds in the same way as for non-green technologies. The length of time for examination can vary depending upon the workload of the Tech Center and Art Unit to which the application is assigned.

The USPTO does allow an applicant to petition for accelerated examination of an application, and provides for waiver of the petition fee for inventions that benefit the environment or reduce energy consumption. However, in many cases, the work involved and other drawbacks may weigh against filing such a petition.

For many companies seeking green patents, a pendency of three to five years to grant may be acceptable. A set of patent applications can preserve rights while R&D is ongoing and define company assets for funding efforts or acquisition. In addition, when US applications are elected to be published at 18 months, the published application creates defensive prior art and contributes to the public disclosure of important technical information.

During examination, green patent applications, like other applications, are more likely to encounter increased prosecution hurdles and decreased willingness by the USPTO to grant patents than in the recent past. The USPTO allowance rate has been steadily declining – after hitting a high of 72% percent in 2000, the allowance rate has dropped dramatically and may now be as low as 44% percent. More aggressive lawyering, interviews with examiners, and submission of evidence of non-obviousness may be required.

Green patents. It is the use of green patents that will determine whether the green IP context plays out differently than patent uses in other technologies. Recently, there has been a dramatic increase in options for patent owners. These options extend beyond the traditional uses of patents for cross-licensing or deterrence from suit. Companies can now use green patents to promote joint development, assist standards-settings efforts and develop patent pools in order to simplify licensing and promote freedom to operate. A variety of monetization options exist, including traditional enforcement efforts, flexible owner-initiated licensing, the formation of holding companies, auctions and the bundling of patent rights by patent aggregators. This flexibility may allow creative green patent companies to meet both their own interest in realizing profitable returns and the public interest in the successful adoption of solutions for sustainable development.

Michael Messinger and Peter Jackman are directors, and Richard Almon is an associate, at Sterne, Kessler, Goldstein & Fox P.L.L.C., an intellectual property law firm based in Washington, D.C. The views expressed herein are those of the authors and should not be attributed to former, present or future clients of Sterne, Kessler, Goldstein & Fox P.L.L.C.

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Publications : Bar Bulletin: March 2009

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