26 April is World Intellectual Property Day, WIPO's annual celebration of all things IP. This year, the theme is "innovate for a green future". WIPO's website perhaps sums it up best: "World IP Day 2020 puts innovation – and the IP rights that support it – at the heart of efforts to create a green future. Why? Because the choices we make today will shape our tomorrow. The earth is our home. We need to care for it".
Cleantech patents "101"
It is broadly accepted that climate change cannot be redressed by means of existing non-renewable technologies. Environmental consciousness – especially as it pertains to climate change is increasing exponentially throughout the world. Climate change has gained significant attention recently with Australia having recently endured its worst bushfire season on record. "Cleantech" – technologies that may lessen, nullify or even reverse the environmental impact of an existing product or process is a thereby a buzzword in many aspects of society – including patent law.
In this article, we look at the patent system in general, cleantech patents in focus – and consider a few "tricks of the trade" particular to (although not unique to) cleantech patents.
The essential quid pro quo of the "patent bargain" is that in exchange for providing the public with a new invention, a patentee is afforded a twenty-year exclusive period in which to exploit it. Exclusive, in the context of patent law, refers to the exclusion of third parties from being able to use the patented technology. This is "IP101" – and history has generally shown it to be sufficient inducement with which to stimulate inventive activity. This is especially true of the cleantech industry where the strategic management of IP is underpinning rapid growth throughout the sector.
Patent issues particular to cleantech
Whereas new inventions are typically patented with a view to profiting the patentee, there may be some cross-over into the realm of also providing a great benefit to the public. However, what happens when an invention is of such outstanding public benefit that the patentee's right to exclude others is arguably contrary to the interests of society? In such circumstances, the patent bargain does not fit well with the advancement of the species and gives rise to a real tension between the two. Indeed, we've seen this tension play out very recently in respect of the COVID-19 pandemic and proposed Crown use of patented inventions under the banner of "the public interest".
Pharmaceutical patents are the "classic" example of the tension between private rights and public good – and this dovetails quite nicely into another salient COVID-19 issue: the search for a vaccine. However, it can be argued that patent exclusivity for pharmaceuticals is a necessary evil given the enormity of both R&D and clinical trials costs associated with getting a product onto the market. Moreover, while the respective definitions of "happy" may be somewhat different, a lifesaving drug sold under patent generally makes for both a happy patentee and a happy consumer/patient.
Another example – one not quite so easily reconciled, is that of cleantech. For instance, a patent for a "cleaner" method of manufacturing cement or battery technology. Clearly, it is in a patentee's best interests to exploit the exclusivity conferred by the patent in working or licensing the invention. On the other hand, it is in society's best interests that such an invention is placed immediately in the public domain. To generalise (perhaps unfairly), cleantech doesn't invite the same R&D costs as pharmaceuticals. As such, it could be argued that the case of cleantech, society's need may actually be greater than the patentee's right – which is, of course, completely at odds with the original patent bargain.
A feature of the cleantech sector (although by no means unique to it) is the high level of industry-academia collaboration when it comes to R&D. As will be appreciated, academics are under publication pressure and are often required to produce x-number of publications (journal articles, abstracts, oral presentations) each year ("publish or perish") as part of their performance review. Industry, on the other hand, is driven more by the prospect of obtaining monopoly rights via the patent system to capitalise on profit growth.
"Patent versus publish" is an age-old conundrum which, in my experience, is not all that well understood. Many think it's necessarily a case of one or the other. It's not – you can have both – on the simple condition that filing a patent application comes first (even if by just one day).
Although some countries have idiosyncratic grace period provisions that may, under certain circumstances still allow a patent application to be filed validly, these vary greatly from country-to-country and require resource expenditure (time/money) that may be better allocated elsewhere.
In short, why take the risk? File a patent application first before proceeding via the traditional publication route.
The national patent offices of several major jurisdictions have facilitated the expedited examination of applications relating to cleantech. For instance, the USPTO, UKIPO and IP Australia, among others, each now offer (or have offered) such a scheme. While these programs each have subtle differences, the fundamental principle is that a cleantech patentee has means to jump the queue with respect to "unclean" applications. In the case of small or start-up patentees, expedited examination may be attractive such that a granted patent is often required in order to attract investment. On the other hand, the associated legal costs may not have been budgeted for so early in the lifecycle of the patent. Moreover, the many companies who file patents for defensive reasons generally have less motivation to proceed via this route.
Expedited examination is an option, although not essential, for cleantech patentees. As always, a decision to proceed or not to proceed should be based on a thorough consideration of all commercial/legal factors, made in conjunction with the best professional advice.
There have been other recent developments toward establishing a more efficient cleantech community within the existing patent system. For instance, in 2010, WIPO launched the IPC Green Inventory – an online tool intended to assist users in identifying existing and emerging cleantech, as well as isolating potential commercial partners. The most recent iteration is simply named WIPO Green.
Further, certain other measures may be adaptable to cleantech. For example, a fair dealing defence, perhaps analogous to that found in copyright law is largely self-explanatory. However, it is worthwhile noting that the judicial parameters of "fair" would possibly invite a significant amount of otherwise-avoidable litigation.
Next, the patent pools model purports to facilitate the efficient trading of patent rights. In this respect, a significant impediment to any potential developer of cleantech has been the emergence of patent thickets which cover every foreseeable twist and turn along the path to a new technology; such thickets have arisen in respect of fuel cells, wind energy, and carbon sequestration technologies, to name but a few. Accordingly, money initially earmarked for cleantech R&D risks being siphoned off to pay for infringement opinions and cross-licensing arrangements. Significantly, however, the various competition authorities have placed stringent conditions on such patent pools in recent years, which may have restricted their uptake and appeal.
Bringing all the pieces together
The intrinsic nature of cleantech means that whilst patenting is essential, it is nonetheless a somewhat imperfect fit. During the initial R&D phase, IP will often be a cleantech company's most valuable asset. Moreover, patenting creates opportunities for cross-licensing deals and strategic use to negotiate joint venture arrangements. Finally, patents can be instrumental in a cleantech company's exit strategy, by way of going public or being acquired.
That said, the somewhat uneasy marriage between cleantech and the patent system has never been better reflected than in 2009, when patents (in combination with the closely related field of technology transfer) effectively torpedoed a global climate treaty being agreed at the United Nations Climate Change Conference (COP15) in Copenhagen. Cleantech and patents need to be linked, but do not mesh easily.
The above discussion represents what is likely only the opening stanza in what is sure to be a fascinating period in patent law. Cleantech will continue to poke and prod the patent system in ways that were probably never envisaged – and it will be interesting to see if, when and how any changes eventuate so as to better accommodate "public" clean technologies within the "private" patent system. While the cynic may suggest that an agreement in Copenhagen would have materialised if the climate change issue was perceived as real, the pragmatist would likely counter that if a genuine fix was apparent from within a short, 1500-word article, it would have been adopted long before now.
Three takeaway tips
- Interpret "cleantech" broadly. A "dirty" technology can still be "clean" if it's cleaner than competitors' existing technologies – it's all relative.
- To expedite or not to expedite (examination). There are pros and cons depending upon where a cleantech organisation is at legally, financially and commercially – one size certainly doesn't fit all.
- Patent versus publish. You can have both, provided filing a patent comes first (even by one day).
2020 – A World IP Day with a difference
In light of the coronavirus pandemic, and the need to keep everyone safe and well, WIPO will not organise any physical events this year, and encourages the World IP Day community to move celebrations to virtual channels – something most of us have had to get used to very quickly over the past few weeks.
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