When setting intellectual property strategy it pays to have a
solid understanding of the prevailing business issues. In cleantech
there are a number of diverse industries involved, with a trend
towards convergence of technologies and sectors.
Many cleantech sectors are also well established and have seen a
lot of R&D over the past 10 years with heavy patenting
activity. Such issues have intellectual property implications:
It is very important to conduct freedom-to-operate
searching early in the R&D project. Care must be taken
to ensure third party rights are not infringed. There may also be
key patents in fields that are converging with your core technology
that you may need to access before you can launch a commercially
Cleantech involves a relatively high level of collaboration and
licensing transactions, so it's important to have
formal patent protection to clarify what you bring to the
table. Businesses need to prepare for these types of relationships
by ensuring they have established clear chain of title to their
inventions; their employment contracts are solid with
confidentiality obligations and reasonable restraints of trade; and
non-disclosure agreements are utilised with all potential
collaborators from the outset.
Obtaining patents around sets of improvements that reduce price
to consumers, increase scale, enhance convenience, usability or
reliability will be important. Don't underestimate
the ability to patent improvements, or assume your
improvement is too insignificant for protection. Even narrow
patents in the bottleneck of the path to market may be
There may be opportunities to gain patent protection for the
individual technology pieces, as well as the combination of those
pieces into a solution. It is important to understand the
synergies of the technology combinations and ensure patent
claims cover them. There may also be opportunities for patent
protection in the areas of convergence of your core technology with
There may also be opportunities within universities or Crown
Research Institutes to link together scientific research
and bundle technologies with your own to create a more
There is often a long gestation period from proof of principle
to market traction for cleantech solutions. This time delay, again,
has some IP implications:
Consider looking for intellectual property in the areas where
your technology 'plugs in' to the existing
conventional production, delivery and distribution
The long time to market may have implications
for the timing and content of patent filings. For example, you may
consider delaying your initial filing until the technology is
closer to market, to ensure you have sufficient patent term
remaining to return your investment. This of course risks a third
party filing a blocking patent in the interim. You may consider
filing for the base or core of the technology early, and then
stagger your filings for improvements.
The 'first to market' approach may
be unsafe without patent back-up. A well resourced competitor will
have ample time to reverse engineer your technology and usurp your
The path to market for cleantech is very capital intensive and
it is almost inevitable that angel and/or venture capital will be
required. Such investors will want to see a strong patent portfolio
to establish credibility and confidence. Patents play various roles
for cleantech businesses including:
1. Establishing credibility and confidence with
Establishing exclusivity and a strong defensive
position in the market
Acting as leverage for licensing and partnering
Increasing acquisition valuation
Building a patent portfolio for horse trading
during cross-licensing negotiations during litigation or
Finally, the role of trade marks should not be underestimated as
public perception plays a strong role in marketing
environment-related products. We have witnessed a global 'green
rush' around marks containing elements such as
'green', 'eco', 'earth' and
'enviro'. So there is a good argument that a new
cleantech business would be better off adopting a more distinctive
mark to stand out.
This article first appeared in Unlimited Magazine and was
written by Simon Rowell, a Partner in the Auckland office. To
contact Simon please email him on email@example.com or phone 09 914
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2010 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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