Peter Youle, Senior Associate at Marks & Clerk, explains what green materials, production processes and formulations are (and aren’t) protectable under current IP law and offers actionable tips where the chemical sector may struggle.
Awareness and appreciation of environmental issues are becoming increasingly heightened, particularly regarding the carbon footprint, origin and end of life of materials.
From material carbon footprints to their source and end-of-life footprint, transparency is increasing across industries.
And as a reaction, there’s a new wave of innovation on the rise: new, more sustainable materials and bio-based or renewable substitutes for legacy substances.
For those companies willing to adopt them, these cleaner alternatives present evident economic and environmental benefits.
But changing a product to fulfill sustainable goals is not an easy endeavour. It requires huge investments in capital and research to ensure the final product is marketable and of high quality. And thus, for those ready to take the leap, one important question remains – is the innovation patentable?
The answer, in many cases, is yes. The pressure to reduce environmental impact is fuelling the creation of revolutionary green materials and new applications for them – and many of these technologies can be protected with IP.
As companies change, those that invest wisely in sustainability may save the planet, but they may also have an advantage.
Green versions of known materials
Certain materials with non-renewable origins have direct replacements from biological sources that are the same as the original material; for example, those that can be produced by conversion of a biologically derived feedstock. Fortunately, Patent Offices would consider the process for producing the green version to be patentable in the same manner as any other industrial chemical process.
Less fortunately, Patent Offices are agnostic regarding the origin of a material and would consider the bio-based version produced by the process to be the same as the original material and therefore not novel.
For green formulations using a bio-based version of a material, this switch is the simplest change to make, with testing and validation of the new formulation being straightforward.
However, as for the bio-based version of the material itself, the green formulation would be considered to be the same as the original formulation and would not be patentable due to a lack of novelty.
Bio-acetone, created by fermentation of biomass, is a common example of this. The green bio-acetone is not new; it is identical to acetone obtained from petrochemicals.
Likewise, formulations that substitute bio-acetone with petrochemically generated acetone are likewise not unique in comparison to the original composition.
In theory, though, the method for turning the biomass into bio-acetone might be patentable.
Green equivalents and the inventiveness challenge
There are green substitutes for some non-renewable elements that serve the same purpose but differ chemically from the original. This is especially true for complicated combinations, like those made of mixtures of hydrocarbons, such as bitumen. Regarding the green versions that were previously addressed, the methods used to create green counterparts are theoretically patentable.
Formulations using a green equivalent in place of an original material are more complex to bring to market, requiring testing and validation to demonstrate the same performance.
Formulations exchanging the original material for the green equivalent would be considered novel due to the chemical differences between the green equivalent and the original material. As a result, the green formulation may be eligible for patent protection.
However, inventiveness is just as important as novelty for a patent to be granted. If the green solution is known to the public as an equivalent to the original material, it is likely that Patent Offices would consider the switch to be obvious.
To try to counter this view, it is best to highlight any chemical and physical differences between the green equivalent and the original material in the patent application to give the patent application the best chance from the outset, as well as explaining any technical prejudices that may exist against switching from the original material and highlighting any minor adjustments made to accommodate the green equivalent.
IP opportunities in new green materials
Although progress continues apace, not all materials have green versions or equivalents. Therefore, rather than reformulating an existing formulation and making a direct exchange to a green version or equivalent, an entirely new formulation making use of a new green material, that achieves the same functionality as the original formulation, is required.
Such new formulations require the most intensive research and extensive testing. A new, green formulation would have the advantage of being essentially unique compared to the original formulation and, depending on how much the original and green formulations differ, innovative.
One example of a new formulation using green materials is the use of bio-based polymers, such as polyesters or carbonates, in place of petrochemically derived polymers. To enable the use of the new polymers, the surrounding formulation must be changed to accommodate it due to, for example, different solubility.
Enforcement
It is relatively straightforward to determine whether a competitor’s product is the same as a new formulation using green materials or using a green equivalent as these are chemically distinct from the existing formulation.
The question of how enforcement could be accomplished without depending on the potential infringement disclosing the crucial information on the material’s source is frequently raised, nevertheless, because bio-based versions of well-known products are chemically identical to the original version.
For bio-based materials, one option for determining the content that is biologically derived, as opposed to petrochemically derived, is the 14C/12C ratio. Carbon from petrochemicals has a greatly depleted ratio as it has been sequestered from atmospheric sources of 14C (both natural and man-made), whereas carbon from biological sources has a ratio more in keeping with atmospheric levels.
Conclusion
Unless bio-based versions of known materials are used in place of the known material, many green products and their applications may be patentable. For certain applications of green equivalents to known materials and formulations using them, overcoming the obviousness hurdle may be a challenge, but good patent drafting can maximise the chances of success.
Peter is a Chartered (UK) and European Patent Attorney working in Marks & Clerk’s chemistry team. He has 7 years’ experience in drafting and prosecuting applications for chemical inventions, with a particular focus on nanomaterials, polymers, and alloy compositions. Peter works with a wide range of clients, including multinational corporations, SMEs, and universities.
| Are the Following, in Principle, Patentable: | |||
| In its Own Right | Processes for Production | Formulations containing | |
| Bio-Based Versions of Known Materials | No | Yes | No |
| Green Equivalents of Known Materials | Yes | Yes | Yes |
| New Green Materials | Yes | Yes | Yes |
