Advice for clean tech businesses on a new IP tool to help reduce their greenhouse gas emissions.
The World Intellectual Property Office has launched WIPO GREEN to facilitate access to new technologies that can reduce greenhouse gas emissions. This is to help meet obligations under the United Nations Framework Convention on Climate Change to help reduce emission of greenhouse gases.
WIPO GREEN is an online database listing existing or new clean-tech companies, new technologies, or those with know-how on minimising greenhouse gas emissions. More information on WIPO GREEN is available here. This database will significantly improve access to new technologies. The platform is therefore a great opportunity for New Zealand businesses, and worthwhile incorporating into a commercialisation strategy. However, WIPO GREEN poses some unique challenges for intellectual property strategies, and these need be considered before listing a technology on WIPO GREEN.
How can technology owners use WIPO GREEN?
As a database of technologies WIPO GREEN is an obvious tool to promote a new technology to potential customers and partners. Benefits provided by a technology can be explained and applications detailed. Know-how can also be highlighted as part of a complete technology package.
The terms of a licence to use technology are to be negotiated by technology owners and licensees, outside of WIPO GREEN.
In short, WIPO GREEN is a global portal through which those looking for clean tech innovations can search. This therefore provides a simple way to open up new paths to market for technology owners. WIPO GREEN will therefore help you to connect with new partners including those from countries outside of your initial target markets.
1. How much information to disclose?
Those listing technology on WIPO GREEN will need to balance providing enough information to attract partners against giving away your know-how.
If applications for registered intellectual property rights have been filed then those will often disclose key features of a new technology. In those cases describing the technology on WIPO GREEN should not be an issue. However, if a technology is to be protected as a trade secret then care needs to be taken to restrict access to the critical information.
2. Timing and when should you should list a technology on WIPO GREEN
Firstly, there should be no disclosure or offer for sale via WIPO GREEN until after filing of patent or design applications (if that is how the technology is to be protected). Should you though list on WIPO GREEN as soon as possible, or wait until you have entered key markets leaving WIPO GREEN for commercialisation in second tier markets?
On the one hand promoting a technology through all possible avenues early on will improve the chances of success. You will maximise opportunities for investment, identify target markets, and the appointment of licensees. Early feedback on these issues is critical to success, and extremely beneficial in developing strategies to protect your intellectual property rights.
However, an early disclosure can restrict your options to obtain protection, or lock you into certain time lines for securing registered intellectual property rights. If commercialisation or research stalls you may need to make difficult decisions on where to obtain protection. Accordingly, you need to balance timing and anticipated costs against the possible benefits of disclosing a technology on WIPO GREEN.
3. Protecting Innovations
It is important to have a clearly defined intellectual property strategy before listing a technology on WIPO GREEN. Developing that strategy requires identifying the key advantages provided by the technology and what provides these. From there it is a matter of selecting the most appropriate protection mechanism. Functional features can be protected by patents, know-how can be protected by retaining that as a trade secret and controlling access to the information, while reputation and expertise can be protected by trade mark registrations. Often all of these mechanisms can be used in combination to protect the different aspects of a technology.
However, you need to develop that strategy before promoting a technology in any manner, let alone WIPO GREEN. Therefore the key issue is considering these issues and making an informed decision before proceeding.
Fundamentally though you need to understand your business and technology. You will need to ask what features will provide you a competitive advantage in the market, and ask why your customers will seek out your products from those of others. That feature(s) should be the focus of a strategy to protect your intellectual property rights.
4. Investing in New Technology
WIPO GREEN's primary purpose is to facilitate access to new technologies. Therefore it is also a useful tool for New Zealand companies to find existing technologies or know-how. This may particularly useful given the New Zealand government's plans to implement an emissions trading scheme.
However, it is important to ensure that claims about a technology made on WIPO GREEN are accurate. There is no value in investing in a technology that does not perform as required or that does not provide quantifiable benefits over existing technologies.
In addition, you will need to carefully consider the need to partner with those promoting technology on WIPO GREEN. Obviously whether those promoting a technology have registered intellectual property rights will be relevant. However if the technology promoter does not own registered rights in your target jurisdictions, then there may be no need to partner with them. Therefore a thorough due diligence procedure should be completed prior to entering into any joint venture agreement.
Any due diligence should involve a careful analysis of the claims of any patent applications, a comparison of the claims to existing technologies, and determining whether the scope of protection provided by any patents does cover the key advantages provided by the technology.
WIPO GREEN offers a significant new commercial opportunity for New Zealand clean tech companies. Therefore it should be included as part of a commercialisation strategy. However care needs to be taken to protect intellectual property rights while maximising the commercial opportunities.
The best way forward is to involve your intellectual property strategist and together map out an intellectual property strategy at the beginning of any new project. That strategy should be continually review throughout the project to address progress or problems.
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 & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.