Patents send ‘powerful message’ to green technology investors

Out-Law News | 07 Dec 2021 | 12:48 pm | 3 min. read

Patents send a “powerful message” to investors looking for opportunities with green technology start-ups, according to an intellectual property expert.

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”.

Pinsent Masons recently hosted a webinar in which intellectual property (IP) experts at the firm discussed how IP rights could be used to protect green innovation. The webinar explored the role of all IP rights, including trade marks, designs and copyright, in the development and exploitation of green technologies. However, patents are synonymous with protecting technological inventions.   

A patent gives the owner an exclusive right to commercially exploit the patented invention for the duration of the patent's life, normally 20 years. The patent owner may practice that invention themselves or collaborate with a partner to commercialise and scale up that invention. Patent protection is available for technology across sectors where inventions meet the relevant criteria for patentability capable of protecting a product or a process provided that that it is new, inventive and useful.

Patents give the owner a monopoly which means that patent infringement can be asserted against a third party even if they were not aware that the patent existed. The scope of the monopoly is broad so it may also catch technology that is not substantially different from the elements of a patented invention including technology being used in other sectors.

The Pure Air Nano-TiO2 air purification technology, developed by Lion Trunk Technology, provides an example of the relevance of patents to green tech. The company has secured multiple patents for its nano-adhesive technology that breaks down air pollutants creating potentially cleaner air in working and living environments.

“Investors need comfort around investment risk,” said Marfé. “Patents provide that. If the green technology at the heart of the business is patented then investors are reassured of up to 20 years of exclusivity to generate revenue by commercialising or licensing the technology, and the ability to keep competitors out. A business with patents has the USP investors are looking for and a means to keep that USP.”

Marfe Mark

Mark Marfe

Legal Director

A combined approach reliant on different forms of IP is likely the best fit for a company wanting to protect its work in its green developments.

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.