The successful twenty-first century enterprise is tech-savvy, nimble and green. Its executives stay informed about government regulations concerning the environment, value observance of voluntary environmental standards and implement technological compliance with both. However, civic responsibility is not always rewarded. There are frequently others who have already staked a proprietary claim to the green tech which enables compliance, and to the intellectual property (IP) that protects it. Thus, it is also necessary to exercise “smarts” in identifying and circumventing “enemy” IP. Two recent matters illustrate this point.
In one, a company named TDM America sued U.S. government contractors in federal court on the theory that green tech operations to remove and process contaminated materials from navigation channels infringed TDM’s patent rights. Irrespective of the outcome, it is important to note that even the U.S. government (at least through its contractors) was charged with patent infringement while in the course of discharging its official duties as environmental guardian.
And, in just the last few weeks, GS CleanTech has brought suit in federal court against numerous companies, alleging that they have infringed its patent for extracting corn oil from whole stillage, a byproduct of manufacturing ethanol from corn. Ethanol is of course used to power automotive vehicles as a way of decreasing fossil fuel consumption; making a byproduct of ethanol manufacture into a valuable commodity sweetens the proposition, and thus induces greater reliance on ethanol as a green tech solution. Perhaps nothing is more emblematic of green philosophy than the replacement of fossil fuels with ethanol. Nevertheless, the incentivization of that practice is under attack by an entity seeking to exploit its IP investment.
Since good intentions obviously do not forestall litigation, how does one mitigate the risk of being embroiled in a lawsuit?
OK, taking stock: You’ve done your homework regarding relevant regulations and voluntary standards; you’ve consulted with the environmental lawyers; and you’ve developed a technological adaptation of your operations that solves the need to comply with a regulation or standard in question. What else? Well, there’s still the patent angle. You need to consider the advisability of evaluating whether your technological adaptation is available for use in light of any adverse patent rights.
To do this, you must have competent patent counsel. The truth is that core legal skills acquired through working in many different IP areas are transferable to green tech and will be the analytical tools brought to bear in this emerging sector. Best practices call for the vetting of a proposed green tech solution to see if it is clear of other companies’ 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 powerful technique for this is computerized key word searching of U.S. patent data bases. The trick is knowing what regulations, standards, buzz words, U.S. Patent and Trademark Office (USPTO) subject matter classes and industry participants (i.e., other possible patent owners) should be referenced in the search strategy. (While there can never be a guarantee that all patents/applications will be located, performing a clearance search improves the chances of avoiding trouble.)
Once a search has been completed to identify patents and applications for review, they are screened for retention of those which cannot be discarded as irrelevant and must be analyzed more deeply (applications cannot be infringed unless and until they are granted as patents, but they should be looked at to see what’s in the pipeline). The documentary histories of how those patents were secured (or what steps have been taken to date in seeking allowance of any applications) are obtained from the USPTO for the targeted items. With these materials, IP counsel can determine whether the patent(s) and/or application(s) are sufficiently limited so that they do not cover your green tech solution, or at least can be circumvented by an acceptable design modification. In the case where a “non-coverage” rationale does not present itself, additional searching will be conducted in an attempt to find literature published before the patent’s or application’s critical date to show that the purported invention was not really innovative, and thus patentability is precluded.
This type of clearance work is known as a “freedom to operate” study, and it is best performed at the threshold. If there is no likely coverage of the green tech sought to be deployed, concerns about infringement will be dispelled. If there is a feasible “design around,” or if technology claimed by another can be proven unpatentable, concerns about infringement will again be dispelled. On the other hand, if there is no ready basis for concluding that infringement seems foreclosed, finding another route will be dictated (maybe you’ll decide to inquire about licensing someone else’s patent rights). But, in any event, forewarned is forearmed.
With this accomplished, you’ve educated yourself as to the level of risk involved in putting a green tech solution into practice. Next time: what to do so that your proprietary green tech is protected against the predations of others.
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 Snyder 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 email@example.com.