Green Tech Intellectual Property 101 Guide

This is an intellectual property reference guide for those working in the green technology sectors.

Welcome to Boult's 101 guide to green technology-related intellectual property (IP) rights. We hope this will be a useful reference for anyone working in the green technology space who is interested in, or needs help with, their IP. Whether you are established in the field, or a first-time green tech start up looking to protect your innovations, this guide is for you. Find out more about our green tech team how you can contact us here.

INTRODUCTION TO INTELLECTUAL PROPERTY

The green energy and renewables industry is of huge significance to society and represents a rapidly evolving market with technological advancement at its core. Intellectual property is an essential tool for protecting innovation in this fast-paced field.

Our team at Boult is well known and respected within the green energy and renewables space. We combine the technical expertise to draft efficiently and effectively on the most complex of energy products, with the commercial acumen to understand our clients' and the regulators' needs. Our team's experience is broad, covering emissions reduction/control products, battery storage for renewables, photovoltaics and beyond.

The impact of IP on the early stages of a green tech enterprise goes beyond just the protection of technology provided by patents. Branding is important and often supported by trade marks and copyright. The aesthetics of new technology are also protectable as registered designs, as well as the trade secrets inherent in their creation.

This is a 101 guide to green tech-related IP for green tech companies and those with an interest in protecting their green innovations. It is designed to provide a primer on IP, including: an introduction to IP rights and ownership; information on funding opportunities, fee reductions, and country-specific requirements; as well as how Boult can be of help.

TYPES OF INTELLECTUAL PROPERTY

Intellectual property (IP) is anything that is the result of someone's mental and/or creative labour, such as a story, a brand, or an invention. It is important to consider which aspects of your business may be covered by IP sooner rather than later. The value of your IP may not seem a priority when focussing on building your business, but, if properly protected, your IP could be of significant value in the future.

There are several areas of IP, including patents, trade marks, copyright, designs and trade secrets. Each of these areas could cover a different aspect of your business or may otherwise be useful in developing your business. For example, your IP can be licensed or sold to help with your start-up costs, or you can buy another company's IP to help with your development.

An overview of each area of IP, as well as key points to consider, can be found below.

More information on IP basics (with a focus on the UK) can be found on the UK government website here.

Patents

Patents are granted for inventions – that is, solutions to technical problems. Some patentable areas of green tech include: alternative energy sources (e.g., wind turbines, solar panels, hydroelectric power plants), transportation (e.g., hybrid vehicles, bicycles, vehicles with low aerodynamic drag), energy conservation (e.g., measurement of electricity consumption, energy storage, power scheduling), sustainable agriculture (e.g., alternative pesticides, soil management, irrigation techniques) and many more. Contrary to a common misconception, it is possible to obtain patents for aspects of software, particularly any control software associated with the operation of green tech devices. This is therefore a large area with many patentable technologies.

You may not even realise that some of your systems and methods are inventions that could be patentable! It is a good idea to reach out to a patent professional whenever your business comes up with a new way of doing things, so they can advise you on any possible next steps for obtaining patent protection.

To be granted a patent, your invention must be new (not disclosed publicly) and inventive (not obvious) at the filing date of the patent application. The key thing to know is that, in many territories (including the UK and Europe), an invention is no longer considered new once it has been publicly disclosed in any form, even if it is your own company that has disclosed the invention – for example, at a trade fair or through advertising. Any invention should therefore be kept secret until after a patent application has been filed.

Where the invention must be disclosed to someone (for example, to investors), an agreement should be put in place to establish that the invention is not being made publicly available – for example, a non-disclosure agreement (NDA). Some territories, such as the US, however, have exceptions to this rule, for example where the invention was disclosed by the owner and the patent application is filed within 12 months of the disclosure, known as a "grace period". Therefore, even if you have put your product on the market or let people know about your innovations, patent protection may still be possible in some territories. Again, it is always best to reach out to a patent professional as soon as possible so they can give you advice on the next steps.

Filing a UK patent application can be a useful starting point for seeking patent protection, as the official fees of the UK Intellectual Property Office (UKIPO) are, relatively, very low. The UKIPO will perform a search to identify any documents that suggest the invention is not new and if an examination fee is paid, provide an opinion on the novelty and inventiveness of the claimed invention. This can help you to decide whether to pursue patent protection in other territories - you have up to 12 months after the UK filing to file a further application elsewhere that can benefit from the earlier filing date of the original UK application.

For green inventions, the UK and some other territories offer an accelerated programme for seeking patent protection. This can be useful for securing investments, as you may be able to obtain grant of a patent sooner. Without accelerated procedure, it can typically take a few years to obtain grant in the UK, for example. Do note that acceleration of your patent application does not automatically guarantee grant. For more information on territories offering acceleration for green inventions, please see our article here.

A patent protects an invention for a period of time, usually 20 years, allowing you to prevent third parties from working your invention without your permission during that time. Annual fees must be paid to the Patent Office to keep the patent protection in force. Otherwise, the patent protection will lapse and others may be free to use your invention.

The extent of the protection is defined by the scope of the patent "claims", which are oddly worded clauses a patent attorney is uniquely skilled to draft. However, it is important to note that a patent does not give you a right to use your invention – other companies may already have their own granted patents that could cover your invention!

Getting a patent granted does not guarantee business success. You should carefully consider how the patent will be used in your business plan. For example, you may choose to sell or licence the patent to other companies to obtain capital.

An important factor to consider when patenting your inventions is the inventorship and ownership of the patent rights. If your company does not own the rights, or if there are doubts surrounding the ownership, this can lead to serious issues down the line. See the patent ownership section below for more details.

Key points:

• Patents are granted for technical inventions.
• An invention should not be disclosed until after a patent application has been filed. If the invention must be disclosed, an NDA or similar agreement should be in place, with legal advice sought on the NDA or agreement prior to signature.
• Nevertheless, patent protection may still be possible in some territories even after the invention has been disclosed.
• Filing a first patent application at the UKIPO is a relatively low cost way to get an idea of whether continuing to pursue patent protection is worthwhile.
• Patents provide limited-term protection, usually 20 years, for inventions.
• A granted patent does not guarantee business success.
• Yearly fees must be paid to maintain the patent protection. Otherwise, others may be free to use your invention.

Trade marks

A trade mark is a sign capable of distinguishing the goods and services of one undertaking from another – it may be a word, logo, colour, sound or the shape of goods or their packaging.

In the UK, trade marks are protected in two ways.

1. An unregistered trade mark or the goodwill associated with a business is protected by the common law tort of 'passing off'. In short, a business can rely on its use and reputation to prevent others from using a similar trade mark for similar goods or services.
2. Registration of the trade mark at UKIPO.

A UK trade mark application can take between six to eight months to register, provided there are no obstacles. The time frame for registration is different for each territory.

It is also possible to protect your trade mark in other countries by filing national or regional applications. Each country has their own requirements that must be met for registration. In most countries, trade mark registrations are renewed every ten years but can, in contrast to registered design and patent rights, be maintained indefinitely.

To be registrable, a trade mark must be distinctive (either 'inherently distinctive' or having 'acquired distinctiveness'). Inherent distinctiveness refers to trade marks that are original or unique – for example, "Kodak", which is an invented word. Acquired distinctiveness refers to trade marks that were not initially distinctive but they have gained a reputation with specific goods or services through extensive use in the marketplace – for example, "Holiday Inn". The words themselves are descriptive, but the Holiday Inn brand has acquired a secondary meaning associated with a specific hotel chain over time.

There are certain trade marks that are generally considered to lack inherent distinctiveness:

• Geographical name.
• Generic designs.
• Single letters or numbers.
• Laudatory words and phrases.

For example, a trade mark including words such as "green", "clean" or "eco" may be more difficult to obtain protection for in relation to the green tech sector. It is likely to be considered descriptive. However, each case at the UKIPO is decided on its own facts.

It is not compulsory to register a trade mark but it is recommended. Enforcing unregistered rights is more difficult and expensive than enforcing registered rights. A trade mark registration gives the owner an exclusive right to use the registered trade mark for those goods or services for which it is registered. A registration also gives the owner the right to prevent third parties from using confusingly similar marks for their goods or services.

The UK is a first-to-file territory for trade marks, so the first owner is the first party that registers the trade mark at the UKIPO. It works a little differently in the US. The US follows a first-to-use system, so the first party to use the trade mark in commerce is the owner.

Once a party has decided on a trade mark, they should consider pre-filing searches to identify whether they are any third parties with identical or similar trade marks that could prevent their use of the proposed mark.

Key points:

• A trade mark is a sign capable of distinguishing the goods and services of one undertaking from another.
• A trade mark must be distinctive.
• A trade mark can be a single word, combination of words, logo or colour.
• Descriptive words, generic designs and single letters are more difficult to register.
• Renewal fees must be paid every ten years to maintain UK trade mark protection.
• Trade mark protection can in theory last indefinitely.

Designs

The appearance of your products may be an important factor in your green branding. For example, the look of your packaging may mean that fewer materials are used, which may be a selling point for your customers, or you may have designed your product so as to be aesthetically pleasing to your customers.

The appearance of your product, packaging or the like, including app interfaces and marketing material, can be protected by registering a design. To obtain a registered design right in the UK or Europe, the design must be new (not disclosed publicly). This means that, as with inventions, a design should not be disclosed publicly until after a design is filed (although some protection may be offered by an unregistered or community design right, which are discussed below). It is possible to file a valid registered design in the UK within 12 months of a disclosure; however, such prior disclosure can cause problems, particularly when applying for protection elsewhere, and therefore is not a recommended strategy.

The design must also have individual character (giving a different overall impression to someone who knows the field as compared to existing designs). It is worth noting that the registered design right can cover the appearance of the whole or part of the product – for example, the look of a table or just the table leg.

A design application must contain images of the product or packaging that you wish to protect – it is not possible to obtain a registered design right for an idea or concept. The design in the images used to apply for the registered design right should be identical to the design of the items you intend to place on the market. Differences may mean that others are able to use the design of your actual product because it is not covered by your registered design.

Registered design rights protect a design for up to 25 years in the UK, allowing you to stop third parties from using the design without your permission. Fees must be paid every five years to keep the design protection in force. Otherwise, the registered design right will lapse and others may be able to use your design.

In contrast to registered design rights, unregistered design rights come into effect in the UK and many other countries, including the EU, automatically. They do not require any formal registration or fees to pay. However, unregistered design rights typically offer more limited protection than registered designs and can be difficult to enforce because it requires proof that your design was intentionally copied. Unregistered design rights are also much shorter than registered design rights, lasting in the EU for just 3 years from the date on which the design is first made available to the public in the EU and in the UK for either 10 years from when it was first sold or 15 years after it was created, whichever was earlier.

In the UK, the designer is usually the first owner of the design rights, unless the design was commissioned or created in the course of employment, in which case, the commissioner or the employer is typically the owner.

Key points:

• A design protects the appearance of an item, such as a product, packaging or the like.
• A design should not be disclosed until after a design application has been filed. If the design must be disclosed, an NDA or similar confidentiality agreement should be in place.
• Nevertheless, some unregistered design right protection exists automatically, although this may be more difficult to enforce.
• UK and EU registered designs provide protection of up to 25 years.
• Unregistered design rights in the UK and EU provide protection for significantly less time, as little as 3 years in some cases.
• Fees must be paid every five years to maintain the registered design right. Otherwise, others may be free to use your design.

Copyright

Copyright is an automatic IP right that protects the original works of authors.

Businesses often create and use copyright works without realising how they can be commercialised and protected, or how to lawfully use the copyrighted works of others.

Copyright protects literature, art, music, dramatic works, sound recordings, photographs, software, databases, films and radio and television broadcasts. Literature does not require that a work is written on paper and so includes, for example, digital leaflets, brochures and manuals that your business may use to reduce its environmental impact.

In the UK, Europe and many other territories, you get copyright protection automatically as soon as the qualifying work is created. Some countries (for example, the US and China) have a copyright register. There are several benefits in registering your copyright work in the US register: your copyright claim will be on public record, meaning third parties are aware of your rights; and you are able enforce your rights (i.e., file an infringement suit in court).

Generally, copyright lasts for the creator's lifetime plus 70 years after their death. However, different types of copyright works and certain older works are subject to different rules. Copyright gives the owner exclusive rights to authorise or prevent certain uses of their work, including copying the work, adapting the work or distributing copies to the public.

The creator of the work is generally the copyright owner. However, where works are commissioned or created by an employee in the course of their employment, the commissioner or the employer is usually the copyright owner. In those scenarios, ownership will depend on the terms of the contract and whether the work created falls within the scope of the commission or in the course of employment. It is very important to determine ownership of the works, especially for external tasks i.e. creation of your logo or website.

Key points:

• Copyright protects sound recordings, films, broadcasts and original artistic,
• musical, dramatic and literary work. " Copyright is an automatic right and comes into effect as soon as the work is created.
• Copyright lasts for the creator's lifetime plus 70 years after their death.
• The creator of a work is generally the owner. However, this may not be the case for commissioned works or works created in the course of employment.

Trade secrets

A trade secret is knowledge that is secret, has commercial value because it is secret and reasonable steps have been taken to keep it secret (e.g. always being marked as confidential and/or with restricted access within an organisation). This knowledge may include, for example, a particular composition of your product that makes it useful for green applications, a certain step used in your manufacturing process that makes it more environmentally friendly or even a customer list.

Trade secrets can be used as an alternative or complement to patents. For example, a trade secret may cover a non-patentable innovation or can be used to avoid telling others something important about the way you make your product (for example specific parameters used during manufacture of parts). Applying for a patent requires that you explain how your invention works in a detailed document that will be published, which means that once the patent protection is up, others may be able to copy you. On the other hand, a trade secret, so long as it remains a trade secret, is known only to you.

There is no need to register a trade secret, so there is no fee to pay. Furthermore, a trade secret can last indefinitely, as long as it is not disclosed to the public and remains valuable and reasonably protected. This may mean trade secrets are a relatively low-cost way to protect valuable information, as costs for keeping the information secure are likely to be incurred either way as part of good security practices. On the other hand, identifying theft or misuse of the information may be costly.

A trade secret can be useful but it is also a relatively weak form of IP protection. Once the information is public, the trade secret no longer exists and the innovation will not be patentable in the UK or Europe (although, as discussed above in the "patents" section, it may still be patentable in some territories, such as the US). Trade secrets are also vulnerable to independent discovery and reverse engineering. In addition, enforcement of a trade secret may be more difficult than enforcing other IP rights and detecting theft of a trade secret in the first place can also be hard.

Key points:

• A trade secret is knowledge that is secret, has commercial value because it is secret and reasonable steps have been taken to keep it secret.
• Trade secrets can be used as an alternative or complement to patents.
• The advantage of a trade secret compared to a patent is that valuable information may remain known only to you. On the other hand, a trade secret may be a weaker form of protection and more difficult to enforce.
• Trade secret protection can in theory last indefinitely.
• A trade secret loses its protection if it fails to remain secret, valuable or reasonably protected.

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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.