Green technology is an economic growth area for Ohio, while other areas of the economy are contracting or staying static. Many companies are looking to take advantage of this trend by developing technologies that reduce the use of nonrenewable resources and improve the quality of the environment, both globally and locally.
Because there is so much interest in this field, it’s important to draft a patent application that protects your invention against infringement by others. Particular attention should be paid to the claims of the application.
“As with any patent, it is up to you to find out who is infringing your claims and keep an eye on your potential competitors,” says Ann Skerry, a partner with Fay Sharpe LLP.
Smart Business spoke with Skerry about how to obtain patents for green technology, and how the process works.
What sort of green technology patents are being sought?
Patents could fall into three main areas: energy generation, reduction in energy consumption, and improvements in environment quality.
In the energy generation field, there has been a lot of work done in Northeast Ohio in connection with wind turbines. There have been advances relating to everything from the motors and blades for the turbines to the towers which carry them.
In Ohio, there are projects for large turbines as well as small-scale devices that can be used for an industrial site, or, perhaps in the future, people’s homes.
Other areas of energy generation include biomass (converting waste materials to energy), solar cell technology, batteries, and fuel cells.
In the energy consumption category, companies are developing more efficient lighting products, and designing other devices that use less energy.
To improve environmental quality, companies are developing new products that are safer for the environment, like paints and hybrid vehicles, and ways for using recycled materials in their products.
What are the keys to developing patent claims for green technology?
As with other technologies, the goal is to draft claims for a patent that will cover not only your current idea of the product, but also the potential designs that you may end up making when the product comes to market.
The claims should also provide enough of a barrier to prevent competitors from easily designing around your claims by making simple changes that take their product out of the claim scope.
The approach to achieving that sort of claim: know the market, see where it is going, and understand where your product is going to fit into the developing market. That, of course, is where you need your patent attorney.
When drafting a claim, how broad should it be?
Basically, the idea is to have the claims of the patent application be as broad as they can be without facing the possibility that there is something already known that will prevent you from getting those claims.
The Patent Office examiner who reviews the application typically raises rejections, based on a set of references, such as publications and patents, arguing that your claims are not patentable based on those references. Therefore, knowing the market and references that could be raised before you draft the claims is a great help when trying to determine how broadly you can claim an invention without facing a rejection.
How difficult is the process of proving your technology is, in fact, green?
It is not necessary to prove your invention is green, but the Patent Office currently provides an expedited examination process for patent applications in this area if you do. Initially, the application had to fall into a particular one of a small number of Patent Office classes to be accepted into the program. Now, it has been made much easier because the applicant only has to show, either in the specification of the application or via a brief statement, that the invention materially enhances the quality of environment or materially contributes to the discovery or development of renewable energy sources, the more efficient utilization and conservation of energy resources, or greenhouse gas emission reduction.
Why might companies want to expedite their green technology patent application?
If you have an invention in the early stages of development, and you are not ready to go to market with it, you may decide not to expedite your patent application.
On the other hand, if you are ready to go to market, have someone who is ready to license the technology, or you think that other people are likely to enter this area, it could be advantageous. Small businesses working in the wind turbine field, for example, may be looking to larger companies to take over and develop their inventions. Having a patent in hand can help with that.
An expedited patent application can issue in about a year — a sizable time savings. The Patent Office is generally quite slow, and it has a large backlog of unexamined applications. It takes two years, on average, for the Patent Office to provide an initial review of your application. Then, it can take another year or more after that for the patent to issue. In these rapidly developing fields, three years is a long time.
The Patent Office does have several routes for expediting patent applications. The one that is most applicable to green technology is the Green Technology Pilot Program, which is quite liberal in its approach. Other methods for expediting applications can make the applicant jump through quite a few hoops and pay high fees for expediting. The Patent Office has worked hard to make it easier for inventors to file an application via the Green Technology Pilot Program, and the additional fee can be waived entirely.
It is only a pilot program, so it will run out at the end of 2011, but based on the positive feedback it has received, it may be continued.
Ann M. Skerry, Ph.D., is a partner with Fay Sharpe LLP in Cleveland, a law firm focused on intellectual property. Reach her at (216) 363-9000 or [email protected].
