Greater Manchester has committed to become a zero carbon city by 2038. The race to decarbonise the local economy and replace existing technologies used in our city with sustainable and green technologies will require innovation.
Companies involved in developing innovative solutions for decarbonisation and promotion of sustainability can use intellectual property rights, especially patents, to protect their ideas. Owning a patent can provide an important source of income for such companies.
The following list outlines five relevant tips for patent protection aimed at innovative companies, particularly those in the fast-paced and growing field of green technology.
- Before you file a patent application
Before filing a patent application, keep your idea confidential. One of the requirements for obtaining a valid patent is that your idea must be new on the date the patent application is filed. Therefore, any public disclosure that is the same as your idea and made before you file your application can prevent you obtaining protection for your idea. This includes public disclosures you make yourself such as selling and demonstrating a product or providing written and oral descriptions for securing investment. Without protection for your idea, you would be unable to prevent competitors from using your idea.
Therefore, you need to be careful not to disclose your idea to anyone who is not under an obligation of confidence before a patent application is filed.
- When to file a patent application
In general, you do not need to wait until you have a working proto-type of your idea before filing a patent application. A patent must include a description sufficiently detailed to enable a someone who understands the relevant technology area to make a working version of your idea. This requirement is usually satisfied by describing one way of carrying out the idea. This does not have to be the best possible way of carrying out the idea.
A delaying filing a patent application could give someone else the opportunity file their own application or publicly disclose a similar idea which would make protecting your idea more challenging.
Therefore, you may wish to seek patent advice early on when developing a new idea to determine the optimum time in the development process file an application.
- How to generate money
Patents can help secure investment for funding commercialisation of your idea and expansion of your company by providing evidence that your idea is unique and innovative. Whilst it is unlikely that you would need to enforce a patent in the early stages of developing a new technology, building a robust patent portfolio around you key ideas can help you demonstrate to potential investors that you will be able to maintain a competitive advantage and are mitigating for future risks. Patents can also reduce your tax bill, for example the Patent Box scheme offers a lower rate of corporation tax can be applied to profits earned from patented inventions.
To generate money from a patent you need to own the patent. Identifying ownership of an invention beings with identifying the inventor and then ensuring you have relevant contracts of employment or other agreements which transfer rights from the inventor to you. To avoid potential problems, it is usually best to identify who owns a patent when it is filed.
- Incentives for green inventions
Several patent organisations actively seek to encourage innovation in sustainable and green technologies.
The UKIPO provides a ‘Green channel' to accelerate processing of patent application that has an environmental benefit. The channel is free to use and can lead to quicker grant of an patent application. Obtaining a granted patent quickly can be useful, for example, if you need to enforce the patent or to take advantage of the Patent Box scheme.
The World Intellectual Property Organization hosts a ‘Green Database' for sustainable technology. The database provides a catalogue to link owners of patents for technology solutions addressing environmental or climate change challenges with companies, institutions, and non-governmental organizations seeking such solutions. The database is free to use and could provide valuable commercial opportunities from all over the world.
- Patents do not give you freedom to operate
Having a granted patent for your idea gives you the right to stop anyone without your permission from using your idea. However, is does not mean that you are free to bring your idea to market. Someone else may own an earlier patent, if your idea falls within the scope of an earlier patent you can be stopped from commercialising your idea. (It is important to note that patents are territorial, a UK patent can only be enforced in the UK. To protect an idea in another country such as the US a patent in the US would also be required.)
Freedom to operate searching can be done to identify potentially relevant earlier patents. If any relevant earlier patents are identified it does not necessarily prevent commercialisation of your idea. For example, the validity of the earlier right can be challenged and there can be opportunities to license or obtain the earlier right. It can be cheaper in the long run and reduce risk to identify any relevant earlier patents before your idea to is on the market.
Therefore, you may wish to seek patent advice on freedom to operate searching before commercialising your idea.
Conclusion
There is much more to know about patents than has been condensed into five topics discussed above, but these concepts provide a good starting point when considering patent protection for green technologies. If you are considering filing a patent application for your idea, please reach out to us and we shall be happy to provide further information and assistance.
Originally published by pro-manchester
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.
