Is the Polish invention the key to creating self-powered electronics? In a case study of this unique invention, we present the background work of patent attorneys whose goal was to build an effective patent protection strategy, in a way that will enable the rapid and beneficial commercialization of the invention in global markets.
Access to affordable, renewable and environmentally friendly energy is one of the greatest challenges of the modern world. A strong trend, as evidenced by the large number ofpatent applications, is innovation in batteries and storage cells. However, the negative environmental impact of their production and disposal remains a major challenge. Some scientists are working on solutions to the problem, while others are in search of alternatives.
The invention developed as part of the project entitled "SelF-powerIng electroNics – the Key to Sustainable future" (in short, SFINKS) is the best example of such an alternative. It uses innovative micro-generators to harness natural changes in atmospheric pressure and temperature to generate electricity, taking the energy industry to a whole new level. A favourite anecdote of the author, Prof. Skotnicki, which is often repeated, reflects the breakthrough of this invention: When humanity was looking for faster ways to communicate, Italian engineer Guglielmo Marconi did not focus on breeding faster homing pigeons - he invented the basis of radio communication.
In space, in the ocean, at the polar pole...and in a smart city
"SFINKS" is significantly different from conventional batteries. The ability to operate continuously in a wide variety of demanding environments is the main advantage of microgenerators. Their potentially unlimited lifetime makes them useful on satellites or even on other planets, where the variability of atmospheric conditions is enormous.Prof. Skotnicki plans to use the SFINKS to power sensors on Mars missions, which may contribute to groundbreaking discoveries in space.
The invention can also be used in the renewable energy sector, for example to power remote monitoring stations that require reliable energy sources in hard-to-reach places on the planet. They can be used in sensors that monitor environmental conditions in sensitive ecosystems or ecosystems that are very difficult to access, such as rainforests, deserts or oceans.
"SFINKS" can also be used to power sensors and devices in smart cities that assist in the monitoring of air quality, atmospheric pressure, temperature, traffic flow, road and pedestrian crossing safety, distribution of urban utilities, structural stability and robustness, etc. It can also be used for security equipment in border areas or other strategic locations where there is a need to provide a continuous power source without the need for regular battery replacement. It can be used to supply power to sensors in industrial environments where variations in temperature and pressure are common as a result of manufacturing processes.
All of these applications can make a significant contribution to energy efficiency and sustainable development in many sectors of the economy, as well as improving the security and quality of life for us all.
How did the invention come to our firm?
The inventor, Professor Thomas Skotnicki, is associated with the Warsaw University of Technology, which has been cooperating with JWP Patent and Trademark Attorneys for many years. At the end of 2023, the team of the Innovation Center of the Warsaw University of Technology asked the law firm for support in the preparation of the patent application.
SFINKS (SelF-powerIng electroNics – the Key to Sustainable future) was then a new and very important project for the whole university, among others due to the fact that it received a prestigious grant from the European Research Council (ERC). The board, which awards the grant, consists of outstanding European scientists. Its priority is to promote interdisciplinary research that goes beyond the current state of knowledge.
How do European grants and patents drive development?
EU grants often provide the necessary financial means to cover the costs of research and development (R&D), which are crucial to improve the invention and to carry out the necessary tests and experiments. This means that inventors and organisations can focus on innovating rather than worrying about budgeting. Credibility in the eyes of investors, partners and customers is also enhanced by the proven value and innovation of the project. As a result, it is easier to attract additional financing and enter new product markets.
The task for the team of patent attorneys was to distinguish those elements of the invention that were different from those that already existed. It is the unique features that will form the basis of the arguments in favour of confirming the premise of novelty and inventive step necessary to obtain a patent, which will be the basis for safe commercialisation.
A well-designed and described patent application provides a so-called "priority date", which is one of the keys to success, as it establishes the "start" in the race to obtain a patent for a given innovation and determines the moment from which it is initially protected. In global competition for patents, the "first come, first served" rule applies, and the priority date provides a benchmark to assess whether a given solution is new and inventive in relation to other applications for inventions and publications of research and development works. In the event that two different applications relate to a similar invention, the patent offices may use the priority date to decide which application takes precedence and therefore the chances of obtaining a patent.
This is also of great importance in the international context. Based on the priority date, the inventor may use a so-called "priority year" to file the invention in other countries while retaining the same priority date for all filings. Thanks to this knowledge and its use in the patent protection strategy, inventors can plan for the international protection of their invention without the risk of losing patent potential in subsequent applications in other jurisdictions.
Commercialization with regard to the risk of violations
In the course of cooperation between patent attorneys and the team of Prof. Skotnicki discussed the high risk associated with potential patent infringements. In the case of this solution, i.e. breakthrough technology, violations lead to significant financial and image losses. Unfortunately, it is not uncommon for companies to deliberately market products that are deceptively similar to others without incurring the costs of, for example, research and development. A well-prepared patenting strategy is the first line of defense against threats.
As is often the case when developing descriptions of inventions, there are several variants outside the core of the technology that are optional improvements and add to its features. Each patent application may be for a different aspect of the invention or a different application of the technology. This approach makes it possible to tailor patent protection more precisely to the specific characteristics of the technology and the needs of the market, and to obtain broader patent protection. Thanks to this type of strategy, even if competitors find a way to bypass one variant of protection, others will still be protected.
Having a patent covering different variants of the invention also provides greater flexibility in discussions with business partners and licensees, giving the inventor a better negotiating position and the ability to license different aspects of the invention separately. In the case of very complex technologies such as the "SFINKS", the invention can be divided into a number of independent but related innovations. Separate applications allow for a more efficient management of the patent portfolio, which in turn allows for a better alignment of the legal protection strategy with the individual market segments and ensures a more precise risk management.
The role of a patent attorney often goes far beyond the traditional defence of intellectual property rights in the field of modern technologies. It becomes an essential element of a strategy that helps inventors not only protect but also commercialize innovation. A good agreement between the patent attorney and the inventor has a significant impact on the commercial success of the invention.
What effect was achieved in the case of SFINKS?
At the beginning of the year, in accordance with the established strategy, we made several patent applications to the Patent Office of the Republic of Poland. We have already received the first expert opinion from UPRP, which is very positive. The solution is considered to be innovative and novel, and there are no additional comments on the industrial application of the invention, the method of its precise explanation or the possibility of its reproduction. The application is therefore well on its way to obtaining a patent in Poland.
It is good to know
When planning a patent protection strategy, it should be remembered that patents are territorial. This means that patent protection is only valid in those countries where the patent has been applied for and granted. Therefore, an action that constitutes a violation in one country may be completely legal in another where it is not in force. To effectively protect the invention, patent applications must be filed in the countries where the product is to be commercialised or where there is a high risk of infringement.
A patent attorney or legal advisor or attorney specializing in IP law is a person who will help secure the rights to the invention and manage the technology transfer process. From reviewing contracts, through licensing negotiations, to advising on a strategy for active and effective patent protection. Professional support plays a key role in securing the interests of the owner of the invention.
When the invention leaves the laboratory, its most important journey begins — the path to commercialization. The transition from an idea to a product available on the market is a complicated and multi-stage process. The inventor may choose one of two main paths of commercialization:
- Selling a patent is particularly attractive to inventors who prefer to receive a one-off payment rather than engage in lengthy production and marketing processes. A patent agent or attorney will assist in assessing the value of the patent, negotiating the terms of sale and managing the entire transaction process to ensure that the owner of the solution is adequately remunerated.
- Licensing of inventions - allows inventors to retain the rights to their technology while at the same time allowing other companies to use it. In this variant, the provisions in the agreements between the parties are crucial, as they regulate the generation and distribution of revenues. They can also help draft contracts which protect the inventor's rights and are attractive to potential licensees.]
Patent protection is the foundation for technology development, allowing creators and companies to invest with the assurance that their inventions will be protected from unauthorised use by competitors. Long-term research and technology projects that are already revolutionising the world can be developed with a well thought-out intellectual property strategy.
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.