Clean energy companies should consider these important patent prosecution strategies:
Know where to file
Patent applications should be filed in countries with significant markets for the invention, as well as in countries that will produce large numbers of products incorporating the invention. The US, China, Japan, and South Korea eventually all will be hotbeds for production and use of clean energy technology, so clean energy innovators should be making every effort to obtain patent protection in each of these countries, at a minimum.
Until recently, anyone who invented something in a Chinese facility was required to file for patent protection in China before filing in the US or other countries. Under recent revisions to Chinese patent laws, inventors in China may file for patents in other countries first, as long as they submit their inventions to a security review beforehand.
Filing for patent protection first in the US gives applicants opportunities for excluding potential prior art by taking advantage of the first-to-invent system, which is different from the first-to-file system used in most other countries. Because an applicant’s invention date may occur well in advance of the filing of a patent application, the scope of potentially invalidating prior art may be narrowed significantly. In an environment where many clean energy companies around the globe are likely working on closely related innovations, this narrowing of the scope of potential prior art could be invaluable.
When considering where to file patents, inventors should also consider countries that provide fast and cost-effective redress for patent infringement. Germany, for instance, is known for its experienced and specialised courts. Roughly 1000 new patent cases are filed in Germany every year. Furthermore, unlike the US, Germany provides for injunctions as a remedy of right, which can provide inventors with immense leverage against infringers operating in or even outside Germany.
More and more Chinese factories and workshops possess the talents and skills to copy most of the world’s advanced technologies. For those entities that desire to protect their new energy inventions in China, filing a Chinese patent application is among the most effective measures.
There may be situations where the market for a cleantech invention already is so robust that the owner will want a patent to issue as quickly as possible. The term of a US patent is 20 years from the date the application is filed. Therefore, shortening the time between filing the application and issuance of the patent can effectively extend the useful life of the issued patent. On average, it takes nearly 40 months to obtain a US patent. Reducing this time could lessen the cost of prosecuting the patent and enable a clean energy patent owner to start earning money sooner from market exclusivity or from licensing the issued patent.
One option for reducing the prosecution time is taking advantage of a recently expanded USPTO green technology pilot programme for accelerating examination of certain pending clean energy technology patent applications.
Keep related applications pending
Companies seeking patent protection for their innovations always run the risk of competitors trying to design around the patent. Any patent applicant, cleantech or not, should try to keep related applications pending long after an original application issues as a patent. Related applications are those filed after an original application is filed, but before the original application issues as a patent, and that involve similar or related technologies. The benefit is that if a competitor somehow successfully designs around the issued patent, the claims of the related application may still be modified during prosecution in a way that covers the competitor’s design-around.
If a cleantech company cannot afford to patent every one of its inventions, it should instead consider publishing the inventions to establish them as prior art. Publication should prevent competitors from patenting the inventions themselves and then using the patents down the road to interfere with the business of the clean energy company that decided not to seek patent protection.