Intellectual Property for Project Development

by Terry Mazanec and Justin Krieger (Lee Enterprises Consulting, Kilpatrick Townsend & Stockton, LLP/Biofuels Digest) ... Careful and thoughtful planning for obtaining intellectual property protection can be crucial to the success of a company. Without such protection it is possible for another to take advantage of your hard work developing a process or product and jumping right in as a competitor. Your ‘first mover’s advantage’ will then turn into a disadvantage as your competition avoids the sometimes costly research and development process.

Development of intellectual property (IP) naturally follows the development of the technology and the business. Delaying the development and implementation of an effective intellectual property policy until one approaches potential funding sources is often too late. Investors need to understand whether intellectual property protection is in place, or at least applied for, before making an investment.

IP development needs to be viewed from two parallel perspectives: internal and external.

Internal development of IP starts with the evaluation of where you are and where you see yourself going. A handy way to estimate where you are on the development curve is the Technology Readiness Level (TRL) scale, originally created in the 1950’s by NASA and subsequently modified by the US Departments of Energy and Defense to fit their needs. The first article in this series, Expanded Technology Readiness Level (TRL) Definitions for the Bioeconomyby Dave Humbird, adapts the concept for bioeconomy projects.

Even in the earliest days of fundamental research – TRL 1 – it is important to start developing an IP strategy since patents are granted to the ‘first to file’ at the US Patent & Trademark Office (USPTO).

Conversely, a poorly conceived and written early patent can become a barrier to obtaining more complete protection of an invention at a later date.

During the feasibility studies that are conducted at the lab bench or with computer simulations, when the technology is at TRL 3 or 4, new insights are typically gathered that may be worth protecting with patents. While data is not required to obtain a patent, it can be extremely helpful in determining the most valuable aspects of an invention and accurately specifying the scope of the invention in a Patent Application.

In addition, the process of navigating a patent application through the US and foreign patent offices is complex. As a result, retaining the services of an experienced patent attorney having the appropriate technical background is essential to ensuring that your patent rights are broad and fully protected.

Concurrent with the internal development of inventions and patents, technological advancements and commercialization continue to change the IP landscape worldwide.

It is a common misconception that having a patent gives its owner the right to freely operate within the scope of his or her patent. That notion is wrong because there may be an earlier, broader, patent that dominates a later issuing patent—preventing the later patent owner from operating under their own patent! Recall: a patent only grants the right to excludeothers from operating within the scope of the patent—it does not grant the affirmative right to the patent owner to operate within its scope.

So how do you know if you have the ability to operate your current or planned commercial process? A comprehensive freedom to operate (FTO) analysis should be performed involving a skilled patent attorney and technical experts. Conducting an FTO study early in the development can be important in order to avoid investing money and resources in a process that cannot legally be commercialized without infringing another’s patent. FTO studies involve: (1) carefully defining the scope of the contemplated process, (2) conducting patentability searches for all “living” patents (patents that have not expired) in all relevant jurisdictions based on the scope of the contemplated process; (3) having a patent attorney work with a technical team to review all of the search results to ensure that none of the prior art patents present a potential FTO issue; and (4) if possible, obtaining a written opinion from the patent attorney documenting that the company has freedom-to-operate the process.

Before making a significant commitment, investors should require that a technology developer have an effective IP policy in place in order to capture all the value of the creative process and potential products that arise. The plan should include: READ MORE