Eleanor MacIver and Jeremy Webster, partners at IP firm Mewburn Ellis, look at the issues inherent in patenting Green Chemical innovation, and the importance of a clear IP strategy to achieve commercially valuable protection.
Research into and development of Green Chemicals is being carried out in all parts of the chemical industry.
The interest in Green Chemicals provides a wealth of new technologies, know-how and marketing potential. In turn, the sector provides opportunities for businesses in terms of partnering, collaboration and investment. Combine this with emerging regulation, legislation, incentives and powerful public opinion, and it seems certain that Green Chemicals will play a key role in the chemical industry going forward.
The future – Green Chemicals and IP Strategy
As businesses, customers and nations move towards a net‑zero future, the chemical industry (and chemicals themselves) must become more sustainable for parties to achieve their net‑-zero aims. With all the valuable innovation in Green Chemicals, it is important to consider how they can be protected and exploited using Intellectual Property (IP).
Having a well-thought-out IP strategy is important for any business. This doesn’t mean lots of patent filings are a must; rather it’s important to think about your plans and how IP can help with them (and equally, or possibly more, importantly how to avoid IP issues that might hinder them). For Green Chemical innovations, all these things are true and more so.
The technology itself is most likely to be protected by patents, although trade secrets may play a role in some cases. Branding will also be important, particular for consumer goods, with designs and trademarks playing a key role in distinguishing Green Chemicals from less sustainable alternatives.
Green Chemical innovations are moving at a relatively fast pace as is the commercial landscape. It is possible to accelerate the patenting process for green technologies in a number of countries (e.g., UK, Australian, Japan, Canada and Brazil) based on its green potential. Acceleration might be commercially valuable by providing a granted patent quickly to facilitate licencing or other deals around the technology.
Patenting Green Chemical innovations
There’s no exact definition of what the term ‘Green Chemicals’ means but, at least for the purpose of this article, we use it to mean any chemical that is produced in a (more) sustainable manner.
Making chemicals more sustainable can be done in a variety of ways, each way having a unique IP potential and strategy. For example, the technology making traditional polymers more sustainable requires a different patenting approach to technologies developing alternative materials to replace traditional polymers. The same is true for the technology being developed to make Green Graphene or efforts to make the pharmaceutical industry more sustainable.
Broadly speaking, some Green Chemical innovations can be protected by patents in similar ways to traditional chemical inventions. However, in lots of cases it can be more difficult to capture Green Chemical innovations using traditional patent strategies.
Some Green Chemicals might not match or improve over traditional products in terms of physical characteristics. These physical characteristics (and their improvement) are often used traditionally to demonstrate non‑obviousness which is required for patentability. In some such cases, encouraging patent examiners to take a more holistic view of the technology can be key to success. For example, it is helpful to explain at the outset that the invention lies in the balance of properties between the improved sustainability and physical characteristics.
The balance of properties is also often commercially valuable as consumers are keen to see credible sustainability claims for the products they buy and are potentially willing to accommodate some change in physical characteristics.
In other cases, the use of functional definitions in combination with physical features can be employed to effectively protect Green Chemicals by putting us in a better position to persuade a patent office that our patent claims are limited to only those compositions that are effective.
Finally, some Green Chemical innovations might, on paper, seem like obvious modifications compared to known technologies to reach the goal of sustainability.
A relevant example is the switch from fossil fuel derived monomers to the same monomer from bio‑sources for producing traditional polymers. This might at first sight seem obvious given that bio‑monomers are now relatively well known. Telling the right story in such cases can be key to success.
For example, it is helpful to explain any difficulties encountered in developing the technology. These “difficulties” – and an explanation as to how they were overcome – can stop an examiner saying the modification is obvious because you have explained that it was not routine to make the change.
In our experience, with the right approach from the outset – especially when grounded in a clear IP strategy – it is possible to provide commercially valuable patent protection for Green Chemical innovations.
More details at mewburn.com.
