Patents send ‘powerful message’ to green technology investors

Speaking at a recent event, Mark Marfé of Pinsent Masons said that patents were an “identifiable asset” with a “recognised value that is attractive to investors.”

“Responding to the challenges of climate change and sustainability is a top priority for all organisations, and probably never more so given the recent global focus on these issues at COP26,” said Marfé. “We are seeing an increasing number of start-ups developing green technologies to make a positive contribution to the climate emergency, but also as a business opportunity. Innovation requires investment so start-ups are looking for ways to stand out to investors”.

Patent protection is usually a desirable business asset but there are some disadvantages to this IP right. Patents are limited in geographical reach to the territory in which the patent registration has been obtained. Applications must be filed in every major territory in which the patent owner, or its customers, intend to operate which can be a costly exercise. For this reason, planning ahead is vital, Marfé said.

“Patents are expensive to file and maintain, so careful thought needs to be given early on as to what to protect,” he said. “For instance, businesses should consider seeking patent protection in its key markets for core technology, significant advancements and those inventions with wider commercial value. But thought should also be given to what developments can’t be patented and how best to protect those.”

There are other considerations. If a patent application is rejected by a patent office in a particular territory, then the invention has nevertheless been disclosed to the world and any competitor could adopt the relevant technology knowing that invention is not protected by a patent.

Patent applications commonly take a number of years before they are granted. While the patent owner can claim its monopoly back to the date of the patent application, it cannot assert infringement until the patent is granted. In fast-moving industries, the technology in question may be outdated by the time the patent is granted, Marfé said.

Marfé said that in cases where innovation may not be patentable – for example, air purifier software that monitors air flow – then other rights, such as copyright and confidentiality, come into play to protect business interests.

“Ultimately a combined approach reliant on different forms of IP is likely to be the best fit for a company wanting to protect its work in its green developments,” he said. “In particular, consideration must be given to branding your new technology using registered trade marks so customers know about it.”

Marfé said that advice on all forms of IP protection should be sought at an early stage in the development process to understand what rights are available and how to safeguard them. 

“Some IP rights will be lost if certain steps are not taken prior to product launch – or even just a trial – so you could say when it comes to getting IP rights that prevention is certainly better than a cure,” he said.

Editor's note 07/12/21: This story has been expanded and updated.