Intellectual Property Considerations for Clean Tech

Clean technology is a growing and substantial area of interest for investors, entrepreneurs, innovators and governments. Billions of dollars are invested annually in the development and exploitation of new clean technology. Many new start-up companies have been founded solely on the basis of new clean technology. The success of all of these efforts will substantially depend on the efficacy of the intellectual property (IP) protection efforts surrounding the new clean technology. 

As with any technology, it is important to develop a sound strategy for protecting the IP inherent in new clean technology. An important early issue to be aware of is the effects of public disclosure of the new clean technology. Innovators, entrepreneurs and other clean technologists must be aware of the IP-related consequences of publicly disclosing a clean technology invention. Public disclosure of an invention before IP protection is sought can jeopardize the IP rights. For example, publicly disclosing an invention starts a clock running on how soon a U.S. patent application for the invention must be filed. Specifically, an applicant must file a U.S. patent application within one (1) year of the first public disclosure of the invention. In foreign countries, however, all rights to a patent may be lost if the invention is publicly disclosed. Moreover, any disclosure of the invention not under a duty of confidentiality will prevent trade secret protection from being maintained for the invention.

Unfortunately, as with any emerging technology, it is often necessary to disclose the clean technology invention early, at least to potential investors, in order to generate sufficient interest and funds to advance the development and exploitation of the clean technology. This naturally creates a tension between protecting the IP rights and generating funding. Consequently, it is important to decide early what type of protection to seek. Certain types of clean technology inventions are best protected with patents, while others are best protected by trade secret. For example, is the new clean technology inventive enough to be patentable? E.g., is the new clean technology truly innovative or is it an obvious application of existing technology to clean technology? Will use by others of the new clean technology be easily detectable? E.g., the clean technology is a new type of wind turbine that can be publicly examined, so infringement can easily be detected. Can the new clean technology be kept confidential and effectively used? E.g., the clean technology is a process for generating ethanol that can be effectively used in a closed facility.

All these factors should be weighed and a determination made whether to seek patent protection or trade secret protection, or a combination of both, for the new clean technology. Once that determination has been made, the appropriate measures should be put into place immediately. For example, if trade secret protection is chosen, then it will be necessary to enact mechanisms to maintain the confidentiality of the technology and to only disclose the clean technology to those that are bound by a duty of confidentiality. Ideally, the clean technology will be disclosed only to those that need to know. Alternatively, if patent protection is chosen, steps should be taken to ensure that patent applications are filed prior to any public disclosure of the clean technology. Ideally, the confidentiality of the clean technology will be maintained at least until a patent application is filed.

More than other types of technologies that were “hot” in the past decade, such as business methods and software, the international IP aspect of clean technology must be considered. As opposed to business methods and software, clean technology is generally allowed patent protection in most countries around the world. Therefore, it is important that an early determination be made as to for which countries patent protection should be sought, and steps taken to ensure the ability to pursue such foreign patent protection is maintained.

Beyond the above issues, it is also important to be aware of certain governmental measures to spur investment in clean technology and how these can affect IP protection. For example, the U.S. Department of Commerce announced in December 2009 a Green Technology Pilot Program to speed the processing of clean technology patent applications. Under this program, the first 3,000 clean technology patent applications will undergo an expedited examination process. With similar expedited examination processes for other types of patent applications, the author has seen dramatic reductions in the amount of time needed to examine an application and issue a patent. The USPTO goal is to reduce examination time from 40 months to 12 months. See www.uspto.gov for details. Applicants should make sure they qualify for this program or they will be at a competitive disadvantage.

As with the development of semiconductor and software technologies, there is a great deal of excitement and interest in clean technology. The above is a sampling of the many IP-related issues that must be considered in order for a clean technology venture to succeed. If these issues and others are appropriately addressed, and the underlying science is good, the clean technology venture will have a significantly increased chance of success. 

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