By George Snyder

Today’s successful business enterprise is tech-savvy, nimble, and green. Whether satisfying consumer demand for renewable energy, or for environmentally friendly products and services, a modern enterprise stays informed about government regulations concerning the environment, values observance of voluntary environmental standards, and strives for technological compliance with both. This can be an integral part of presenting a positive image, but is not the only benefit of green awareness. When a business enterprise spends millions on renewable energy pursuits, or to develop new green products or services, the green tech they embody is a highly valuable asset. There is a real-world need for the enterprise to guard its investment against appropriation by others, through patenting that green tech.

Patent rights on green tech have become highly desirable as they can improve the bottom line by warding off rival copycats, or by affording opportunities for licensing. However, the trend toward green tech patents is a two-edged sword because others are also procuring them. Therefore, before introducing its own green tech into the marketplace, a business enterprise would be well advised to search for others’ patents and determine if the green tech is “clear” of infringing anyone else’s rights.  Otherwise, there could be crippling liability costs (damages, attorney’s fees, etc.). Two recent matters are illustrative.

In one, a company named TDM America secured patent rights concerning a green tech solution to protect the technology from unauthorized use. Unlicensed US government contractors then commenced green tech operations to remove and process contaminated materials from navigation channels, which TDM perceived as an infringement of its patent rights. TDM sued to block the accused operations and preserve its technology’s exclusivity.

In contrast, consider the plight of several companies that commercialized technology for extracting corn oil from “whole stillage,” a by-product of manufacturing ethanol from corn. Another entity, GS Clean Tech, commenced litigation against them for infringement of its patent rights. Even though making ethanol production more lucrative, thereby encouraging use of ethanol as a green tech solution, the defendant-companies were sued by an entity seeking to exploit its investment in patents.

So, how do businesses go about pursuing patent rights to secure green tech advances and preserve their asset value? And, since good intentions obviously do not forestall litigation, how does one mitigate the risk of being embroiled in a lawsuit?

Patent procurement
The first step in capturing portable green tech is to institute an “audit” function that closely monitors innovations on an enterprise-wide basis. Personnel involved in research, consulting, sales engineering, and the like can be recruited to provide reports on green tech solutions that are devised in-house. The scope of their reporting should be inclusive, leaving assessment and decision on what should be pursued to an individual or committee charged with managing innovation.

Those advances, which are earmarked as potentially significant, can then be subjected to searching of the patent and technological literature to determine whether the innovation is clearly un-patentable. Depending on the results, a patent application—including a detailed description of the invention and claims legally defining its outer boundaries—can be prepared. It is a good idea to work out a theory of invention-patentability, and present the theory in the application right off the bat. In doing this, rather than waiting to respond to arguments against patentability raised by the United States Patent and Trademark Office (“USPTO”), one can frame the terms of the debate in a favorable way. In general, it is helpful at the threshold to develop a rationale for the invention’s difference from preceding technology—for instance, the invention enables “clean” practice, without any substantial loss of performance in comparison to conventional technology. Of course, it is important in extolling the superiority of the green invention not to indict the applicant’s prior conventional technology in a manner that might create liability for the latter’s utilization.

The USPTO’s examination process typically takes anywhere from three to five years in the normal course, and there is no guarantee of success. The process can sometimes be expedited pursuant to protocols in the USPTO for handling green inventions but, again, there is no guarantee. Either way, however, staying the course can yield a patent that preserves significant competitive advantage conferred by innovative green tech.

Freedom to operate
Best practices call for the vetting of a proposed green tech solution to see if it is clear of others’ patent rights before implementation. The initial step in conducting a “clearance” evaluation is structuring an effective search to uncover any patents and published patent applications of interest (these can be supplemented with patents and published applications already known to you and your colleagues). A useful technique for this is computerized key-word searching of US patent data bases.

Patents and applications that cannot be discarded as irrelevant must be analyzed more deeply (applications cannot be infringed unless and until they are granted as patents, but they should be evaluated to see what’s in the pipeline). Such an analysis (and any written opinion based on same) should be obtained from outside IP counsel if the goal is to obtain advice most likely to be credited as reasonable and competent by a court. The file histories of those patents and applications are obtained from the USPTO. Then IP counsel can determine whether the patent(s) and/or application(s) are sufficiently limited so that they do not cover the contemplated green tech solution or, at least, can be circumvented by an acceptable design modification. Alternatively, a search can be conducted to find literature foreshadowing the purported invention and establishing the “invention’s” unpatentability.

This type of clearance work is known as a “freedom to operate” study, and is best performed as early as possible. A conclusion of non-coverage, the formulation of a feasible “design around,” or the identification of evidence that the patented technology is unpatentable, should dispel concerns about infringement. On the other hand, if there is no ready basis for concluding non-infringement, finding another route will be dictated (maybe one might decide to inquire about licensing someone else’s patent rights). But, in any event, forewarned is forearmed.

Conclusion
Unless a business protects its green tech assets, others may misappropriate them and the benefits they confer. Patenting is a powerful way of achieving this protection. However, the innovative (or even patentable) nature of a green tech development is not insurance against being sued by someone else for patent infringement. The risk of liability cannot be insightfully determined without a freedom-to-operate study. Bearing these concepts in mind should make “greening” not only a noble, but also a profitable venture.

George Snyder is a partner at Troutman Sanders’ NYC office.  
 
Troutman Sanders LLP
www.troutmansanders.com