Cleantech's Messy IP Protection: Q&A with Wolf Greenfield's Joseph Teja

Joseph TejaPursuing clean energy and technology in the name of profits is becoming popular for businesses and venture capital alike. But trying to protect the intellectual property, whether patent or trademark, turns out to be an untidy business. Because much of high tech is looking at cleantech, I spoke with Joseph Teja, co-chair of IP law firm Wolf Greenfield's cleantech practice, who has been thinking about some of the issues.

BNET: You've said that cleantech offers some difficulties in protecting IP. Why? Joseph Teja: There is an increased presence of interdisciplinary knowledge. It's much easier to put a piece of innovation into a technology bucket. Entrepreneurs themselves who may have a particular core of technology background, and they may be stretching the boundaries themselves, may need to collaborate because the problem and solution may go beyond [their] core expertise.

There may be coverage not only for the combination of technologies, but how the pieces fit together. In the fuel cell example, how you get the current out of the device and apply it to a power conversion, the interface point between the electrical piece and the biotech piece, offered a key place for protection.

Ultimately, a great innovation in the cleantech space, if it's very disruptive, might not be plausible in a reasonable timeframe. Looking at energy and environmental sciences historically, it's not uncommon for these things to take significantly greater than ten years [to succeed in the market]. You can't blindly march off to the patent office with an application that might expire before you get to market.

BNET: How do you handle getting protection that will last long enough so the whole business is economically viable? JT: Some of the ways we hedge is that a provisional application [that does not become public information] in the US can be filed at any time. The applicants have the option of within a year filing another application non-provisional to get the benefit of the early date. [We can file] a series of provisional applications on incremental levels of maturity of the innovation.

Amongst my favorites, there is a way, and this is much more prevalent on the chemistry and biotech side, to target slower examination units. Software applications have a pretty fixed queue. In various [other] practice areas, one can observe that some types of applications take a longer time to get through the patent office than other types. [Given the multi-disciplinary nature of cleantech], that may be a way to delay publication of some filings. If the USPTO does not act within a time frame, they [extend the expiration date of the patent].

BNET: Any other major patent concerns? JT: [Popular] perception of public policies can really drive the cleantech markets in very extreme or sometimes volatile ways. An example is that the solar market in Germany and later in Spain was driven by government policies and regulation. If you're a manufacturer of solar panels, think of the supply and demand issues you face if you want to take advantage of a government incentive that may have time tables involved. That's only going to get more ubiquitous. You're talking about energy and the environment. It's hard to imagine instances in which [regulation is] not going to be a critical component to consider at well. That potentially impacts business strategy and maybe IP.

It's [also] necessary to appreciate -- the entry point into market. There may be limited possible routes to market and adoption. If we're talking about electric power production or alternative energy sources, we have to keep in mind that there's an existing infrastructure and some hierarchy that controls that infrastructure.

BNET: So in the drive for hydrogen-powered fuel cells for cars, coming up with a great fuel cell design for a car may be exciting, but if there aren't good ways to store hydrogen at a filling station, the patent may not be worth what you'd expect. JT: There are bottlenecks that are potentially involved with innovation. The bottleneck you identified is hydrogen storage. There may be instances of the bigger puzzle that are bottlenecks. If you can [solve a bottleneck], it could be incredibly valuable.

There is [also] a lot of legacy technology out there. Legacy technology does not mean unprotectable technology. It may mean that you're not entitled to as broad protection, but almost by definition, the people picking up legacy technologies will come up with further innovation. They may be incremental improvements. That's protectable potentially.

BNET: How about trademarks? JT: There is a dense rush of trademark applications who are seeking similar types of protection for earth this, green [or] enviro that. They want to have something from this finite bucket of words. It's like green gridlock at the US trademark office at the moment, because they're buried with applications that are endeavoring to get some of these key words in their mark, and there are only so many that will be able to get them. We have clients now dealing with branding and part of our counseling is step back, think about what you want to do with your brand, and recognize that everyone and their sister will want to get green-client-enviro-organic in their branding. It's a matter of exercising creativity. Is there a way to evoke a particular brand message without using words or phrases that are susceptible to this gridlock in the trademark office?