When a major manufacturer spent millions to develop a new, environmentally friendly line of products, this was a reflection of modern society’s focus on “green tech”. Over and above the improved product itself, the green tech embodied in it was also a highly valuable asset. One of the company’s significant challenges was to guard its investment against appropriation by others, in this case through patenting that green tech. However, securing a patent requires establishing, to the satisfaction of the U.S. Patent and Trademark Office, that the green tech passes the test of ‘obviousness’ as defined in the law. In other words, an invention cannot be patented if it would have been obvious.
Any company seeking to patent new, “green” product technology almost inevitably must refute the notion that, if an element of a product is deemed harmful to the environment, simply removing such element would seemingly have been obvious.
Despite the difficulty inherent in patenting green tech, doing so is essential, for it protects the copious investment dollars now flowing into green tech. In 2009 alone the United States spent over $18 billion in the area – and this number does not begin to include green tech that extends beyond solar panels and wind turbines, to household or industrial products which are free of problematic materials, sanitizing of waste or by-products, pollution-remediation technology, etc.
Over and above meeting consumer demand and leveraging the marketing benefits of green tech, securing and enforcing IP rights to that technology can improve the business bottom line by warding off rival copycats, or by affording opportunities for licensing. Thus, there is the real prospect of doing well by doing good.
But, green tech related intellectual property (“IP”) rights are a two-edged sword, and there is a threshold “dark side” calculus that must be performed. For instance, assume that a rival has secured a patent on certain green tech of interest. Utilizing that technology to “green” an enterprise could infringe the patent. Unless a way is devised to proceed without transgressing the patent there could be crippling liability-related costs (damages, attorneys fees, etc.).
So, avoiding the pitfalls of, and realizing profit from, innovations in green tech entails familiarity with relevant patent, as well as trade secret and other know-how, considerations. Additionally, there may be software and related code created in connection with green tech solutions. Copyright considerations are therefore also implicated. And, commercial exploitation of green tech generally involves publicizing it for competitive benefit. Consumers must be alerted to the source of “green” goods or services via using a suitable trademark or service mark, proclaiming the environmentally friendly nature of such goods or services in advertising, or displaying a term or symbol which signals attainment of approved environmental standards. This brings trademark, unfair competition, false advertising and regulatory considerations into play.
Over the coming weeks I will be writing a series of blog posts on the challenges and benefits of IP in the green tech field. Future posts will discuss:
By George Snyder
With thirty-five years' experience in the intellectual property field, and now a partner at the international law firm of Troutman Sanders, George helps companies protect their green technology and green brands. He has a Chemistry degree, and works in a wide range of sub-specialties, including patent and trademark registration procurement, patent-infringement clearance and trademark availability analyses, patent and trademark litigation, and agreement preparation, both inside and outside the U.S. George can be reached at (212) 704-6017, and firstname.lastname@example.org.