Green is the new black

There’s no doubt green technologies are in demand as more of us look at ways of reducing our carbon footprint. As a consumer of energy, many of us are starting to take a closer look at the way we live and the way we consume, and furthermore what measures we can implement in our everyday lives to help reduce emissions.

‘Green technologies’ is still a reasonably new concept and represents enormous opportunities for research and development (R&D) firms. The industry is forecast to be one of the most promising in terms of profitability.

The impending introduction of the carbon tax by the Federal Government is testament to the seriousness of greenhouse gas emissions, and importantly, an indication of changing perceptions in terms of environmental concerns. Support for the industry is also evident through IP Australia, (the Government agency responsible for patents, designs and trade marks and plant breeder’s rights in Australia). They introduced an initiative to assist innovators with green technologies to fast track their patent applications through the Australian patent examination process.

Additionally, the United States Patent and Trademark Office currently has a

Green Technology Pilot Program to accelerate the examination of patent applications for inventions relating to green technologies. Incorporating new technologies with energy-saving measures in our every day lives is becoming a priority for a lot of people and is by all means an exciting time for R&D firms in Australia. However, ensuring the technologies are available for use is the most important part of the process.

There’s little point on spending hundreds of hours developing a technology to only discover it has been done before and it has already been patented. Similarly, there is little point in investing considerable time and expense in research and development, and bring an invention to market, without protection and having competitors reap the benefit of your efforts by simply copying what you have done.

There are numerous examples of this, one well known case being the first electrical powerboard developed by Kambrook. This product proved to be hugely successful, but because it was not patented it was open to copying. The inventor has been quoted as saying: “I’ve probably lost millions of dollars in royalties alone. Whenever I go into a department store and see the wide range of powerboards on offer, it always comes back to haunt me.” I understand that the company now actively protects its innovations.

Some inventions, particular green technologies, can take many years to develop from the initial idea, so doing the basic research on patents can be invaluable.

Top five tips to success

1: Research the invention – make sure it’s novel There is no point in reinventing the wheel. Patent searching can provide an indication of what has been done before and can assist in identifying what might be unique in relation to an innovative product or idea.

2: Maintain confidentiality The opportunity to obtain patent protection for an innovative product or idea can be lost if you disclose the product or idea too early. Selling, offering for sale, or publically or commercially using an invention before filing a patent application can have negative consequences.

Educate your staff on the nature of IP, how to identify it and how to protect it, as well as informing them what their responsibilities and obligations are in relation to your IP.

Be diligent in safeguarding and maintaining secrecy. Identify staff and other parties (such as contractors) involved in developing, maintaining and protecting your innovative products and ideas and have them sign agreements relating to confidentiality and competition. Consider using confidentiality agreements, however, caution must be exercised and legal advice should first be obtained, as disclosure of an invention even under cover of a confidentiality agreement can have negative consequences.

3: File a provisional patent application in Australia Commence the patenting process by filing a provisional patent application in Australia. This is an economical way to proceed, having the advantage of establishing a priority date for your innovative product or idea, and positioning you for the next stage of the patenting process.

The next stage of the process must commence within the next 12 months. Within that 12 months, development of the invention can continue, further patent searching can be done, commercial opportunities for the invention can be explored, commercialisation commenced and a decision made as to whether to proceed further, as well as identifying countries of potential interest.

4. Consider an international patent application In advancing beyond the provisional application, consider filing an international application under the Patent Cooperation Treaty (PCT) if protection is required overseas. Not all countries are members of the PCT but the majority of Australia’s major trading partners are members. All PCT member countries, including Australia, are covered by the international PCT application.

5: Monitor improvements and developments Consideration should be given to protection of any improvements and developments that might arise in relation to your invention. It may be possible to protect the improvements or developments as they arise, leading to the establishment of a larger patent portfolio, which may be useful in providing an extended term of patent protection.

Patent protection does not guarantee that a product will be successful in the market but it can assist by providing a barrier to entry of competitors. It may also provide a basis by which the products can be licensed to others, thereby offering an alternative route to commercialisation.

–John King is Partner at Wrays and a Patent and Trade Marks Attorney.

Related Stories