Green tech patenting – borrowing from established industries

 

Many processes for making biofuels are based, at least partly, on established technologies.  The production of drop-in biodiesel can employ hydro-processing steps that are used conventionally in the oil industry to refine crude oil to finished products.  Moreover, some processes for the production of alcohol products from biomass feedstock make use of unit operations developed in the pulp and paper industry.  However, where does this leave us in terms of patenting innovation in this space?  Does a process that uses many of the elements from established industries still lend itself to patentability?

A key principle to keep in mind is that new combinations of old things can be patented.  A Supreme Court case in the United States stated that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”[1]  The court emphasized that the inquiry is complex and should not be limited to determining whether there is a specific “teaching, suggestion or motivation” in the prior art to combine the elements, a rigid analysis that had been previously adopted by the Federal Circuit (a lower court in the U.S.).  The court said that the “diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way”.

Viewed through this lens, and given the complexity of the myriad chemical reactions and unpredictable nature of the art, you can see that there are many patenting opportunities that might arise in this space.  For instance, mixing and matching known unit operations to meet the unique requirements of a particular conversion process to produce biofuel could result in patentable subject matter in some instances.  On the other hand, it should be kept in mind that the court also said that combining elements like assembling lego blocks is not patentable.  For example, the court cited with approval a case in which claims directed to a device combining two pre-existing elements: a radiant heater burner and a paving machine was held to be non-patentable.  The claims were deemed obvious because the radiant heat burner and the paving machine functioned exactly as they would be expected to function together.  In this instance, nothing unique and unforeseen resulted from the combination.

One element that bolsters patentability is whether or not the prior art teaches away from the combination. In particular, if the closest prior art teaches away then you are likely onto something that might be patentable.  Another feature of biomass conversion processes that might lend itself to patentability is that the starting materials are complex.  They contain many components that are not present in fossil fuel feedstocks and that often interfere with and reduce the efficiency of unit operations in a given process.  For example, biomass contains a component called lignin, a biopolymer made up of phenylpropane units, that reduces the efficiency of unit operations that employ biocatalysts (such as yeasts and enzymes).  Unique process steps that remove this problematic component or processes designed to allow unit operations to operate efficiently despite its presence can be patented in their own right or as part of an overall conversion process.

Nevertheless, it should be kept in mind that identifying patentable inventions coming out of your research programs is an art.  It is important to engage a patent profession to help in this regard.  A research scientist that understands patenting is worth their weight in gold, although people with this skill are hard to come by.  If you require assistance, we are here to help.

[1] KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).

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