By: Anthony Dearden
The case for patent protection of cleantech can sometimes be more easily made than for other technologies. For example, intellectual property embodied purely in intangible software can sometimes face stiffer resistance from a patent office for being too abstract, resulting in protracted and more costly prosecution. With national policy paving the way for heavy investment in environmentally clean technologies, cleantech's capital-intensive innovations often demand robust IP protection, especially in the form of patents, as a means of safeguarding the ability to leverage the IP over the long term for increased revenue generation.
Justifying the substantial R&D and manufacturing costs associated with cleantech can therefore require that the technology be exported to foreign markets. While Canadian companies commonly file to protect their technology in Canada and the US, so too should Canadian owners of cleantech consider investing in IP protection outside of North America. Securing IP in markets other than those of Canada and the US can assist companies in maximizing the value attached to their proprietary technology, and can provide them with the ability to leverage the technology under their own terms. Conversely, cleantech that is not adequately protected where it is being used risks being devalued, and opens the door to third parties profiting from the innovation at the owner's expense.
Beyond the United States, Europe presents an attractive market for Canadian cleantech companies looking to expand internationally. The scale of growth of cleantech in Europe is readily apparent from patent filings alone. Filings at the European Patent Office (EPO) have generally seen an exponential growth over the last decade, with filings relating to hybrid vehicles, carbon capture, and nuclear seeing a nearly 150% to 300% increase, and filings for wind and solar energy likewise experiencing a nearly eight-fold increase.
For Canadian cleantech companies considering filing for patent protection in Europe, it is first important to bear in mind some key differences between the IP systems of North America and those of Europe.
A centralized application process
Although efforts are still ongoing to bring about a single, unitary patent right covering multiple European countries, at present there does not exist a single, pan-European patent right. However, the process of applying for a patent in Europe is relatively streamlined, and applicants can apply centrally, with a single application, via the EPO. Once the patent application is granted by the EPO, the patentee has the flexibility to pick and choose in which specific countries they would like the patent to take effect. The European patent is then split into a bundle of separate national rights. Therefore, while the European application is pending, applicants benefit from the flexibility of retaining provisional rights in any number of European countries, without yet being required to commit to the jurisdictions in which protection is ultimately desired.
Because of the manner in which a single European application often leads to multiple national patents, attacking a competitor's European patent family can be a daunting and expensive prospect. An exception to this general rule is the European opposition procedure. For a 9-month window following grant, a European patent can be challenged at the EPO by filing a so-called opposition. If successful, the European patent is deemed never to have existed, and all national rights stemming from the patent are revoked. European oppositions therefore provide a very cost-effective means of centrally attacking a recently granted European patent.
No grace period and a strict standard for priority claims
Unlike in Canada and the US, a one-year grace period is not recognized in Europe, meaning that a prior disclosure of an invention anywhere in the world can be fatal to a European patent filing. In addition to this, the EPO applies a very strict standard for recognizing a priority claim made in respect of an earlier-filed application. Even relatively minor developments to an invention can result in the right to priority being lost, which when coupled with the lack of a grace period can pose a threat to effective patent protection if, for example, the technology has been publicly deployed after the provisional filing but before a subsequent non-provisional filing. Thus, whereas the North American patent systems offer applicants some protection against IP that has been disclosed prior to a patent filing, companies considering filing abroad, especially in Europe, should seriously consider getting on file at least a provisional application fully describing and claiming an invention before any public disclosure takes place. In addition, it is especially important that developments to the technology be kept secret after the provisional filing, until they are included in a later-filed non-provisional application.
Ensuring that ownership of IP is properly accounted for is a general tenet of any sound IP strategy. In Europe, it is especially important for the transfer of ownership to be completed prior to filing a non-provisional application (such as a Patent Cooperation Treaty [PCT] application) that claims priority to an earlier-filed provisional application. Absent a complete transfer of ownership from all inventors to the applicant(s) of the non-provisional application, it is possible, for instance, for a PCT application filed by the employer to not be entitled to the priority date of the provisional application. This quirk of European patent law can have an unintended consequence in the event that an invention was disclosed during the priority year. Once again, Europe's lack of a grace period, when coupled with the loss of a priority right, can result in new subject-matter contained in a PCT application being found not novel and consequently unpatentable. Therefore, while it is generally advisable for companies that have filed a provisional application to ensure as soon as possible that rights in the IP are appropriately transferred to the company, with Europe in mind it is especially important to do so before the subsequent non-provisional application is filed.
Key differences between the European and North American patent systems, such as the ones above, underscore the importance of properly capturing key technology in an early first filing. While also good practice for Canada and the US, a robust priority filing may particularly benefit the applicant and increase the value of the IP in Europe.
If you are a Canadian cleantech company interested in filing for patent protection in Europe, contact Anthony Dearden for more information.