Chloe Flower looks at new strategies for a developing sector
ALTHOUGH historically, chemical engineering has primarily focussed on process engineering, the discipline now encompasses high-performance material design and is frequently linked with biological or biomedical engineering. As the sector continues to develop, new strategies are required to protect the intellectual property that’s created. In this article I explore what these new strategies involve.
Intellectual property (IP) rights created by a chemical engineering company may encompass technologies not only at the borderline of chemistry and engineering, but also physical processes, and biotechnology. The World Intellectual Property Organisation (WIPO) classifies patents according to the different areas of technology they involve. Patents relating to chemical engineering cover a huge range of classifications, from “performing operations” such as “physical or chemical processes or apparatus in general”, “separation of solid materials”, “centrifugal apparatus or machines for carrying out physical or chemical processes”, and “cleaning” – to categories relating to textile treatment, mechanical engineering, electricity production and specific areas of chemistry. It’s clear just how diverse the technologies are when you consider the companies which are filing the most patent applications in chemical engineering (see Figure 1).
The best way to protect chemical engineering inventions is to take a cross-sector approach which ensures that all new and inventive aspects are captured. For example, Universal Oil Products’ (Honeywell UOP) patents cover not only methods of manufacture of absorbents and catalysts, but the resulting absorbents and catalysts, as well as the apparatus and components used in those methods and uses of these products in separation and renewable fuels technology. This comprehensive filing strategy provides a robust patent portfolio, reflecting the company’s R&D effectiveness and innovation strength, and leading to a competitive advantage. Another example of a beneficial combination of protection for a physical or engineering apparatus, a chemical process and a final product arises out of the collaboration between SABIC and Plastic Energy. Plastic Energy’s patented Thermal Anaerobic Conversion (TAC) process is used to convert a wide range of end-of-life, contaminated plastics into usable feedstock, while SABIC refines and upgrades the feedstock into high quality packaging materials. SABIC has a number of patents in place to protect aspects of the engineering process and the plastic packaging products, such that the innovative parts of the whole chain of production are protected.
Another point to consider when protecting chemical engineering inventions is the person or team handling your patent or application. Since patent attorneys all have a science background (we have science degrees and then do our legal training on the job), shouldn’t we all be able to help with drafting, prosecuting and defending patents relating to any technology? Well yes, and no. Obviously, when drafting a patent application it helps to have a good understanding of the technology. That helps make sure the right questions are asked of the inventors, so that you get the appropriate scope of protection (as defined by the patent claims). For example, while it is important that the key inventive aspect is protected, the claims must not be so narrow as to exclude possible modifications or alternatives that would make it easy for a competitor to work around the claims.
The work of a patent attorney doesn’t stop at drafting and filing a patent application. It also involves prosecuting the application through to grant and defending a patent against any oppositions once granted. Prosecution can be thought of as a dialogue between the patent office and the patent attorney – a series of communications in which aspects are discussed such as how clear the claims are, if the description enables a person to actually put the invention into practice and whether the claims are new and inventive over known products and processes. Opposition involves attacking or defending granted patents, usually those of competitors and rivals in the same field. During both prosecution and opposition, certain areas of technology can face specific objections and patent attorneys who specialise in these areas are more familiar with the established case law relating to these objections and the ways in which they can be overcome. For example, chemistry and materials cases often come up against pre-grant clarity objections at the European Patent Office relating to the use of ranges or parameters, such as molecular weight or particle size, to define features in the claim. Pharmaceutical and biotechnology cases on the other hand might face objections relating to “excluded” subject matter in terms of claims directed to a method of performing surgery or medical treatment. Attorneys who specialise in these fields will have an understanding of the ways in which patents need to be drafted to avoid getting into difficulties, as well as the arguments and case law that can be used to try to overcome any objections.
The choice of where to validate a patent is an important one. Validation countries dictate the ongoing costs associated with a patent; not only do certain countries require a translation of the patent into their local language, but renewal fees must be paid to keep the patent in force.
An attorney with sector-specific understanding will also be able to advise on which countries you should validate your patent in. A pan-European patent does not (yet) exist, and so once granted, the patent is validated in selected countries across Europe. The choice of where to validate a patent is an important one. Validation countries dictate the ongoing costs associated with a patent; not only do certain countries require a translation of the patent into their local language, but renewal fees must be paid to keep the patent in force. Furthermore, a patent can only be asserted in a country in which it is validated. Patents in the pharmaceutical sector tend to be validated widely, whereas those in the engineering and chemistry sectors might be validated in a bespoke set of countries, for example places where the product or process is intended to be made/used or imported. Patent attorneys can provide guidance to help you make decisions on the future of any patent.
I have focussed on patents, because I am a patent attorney, but chemical engineering technology will likely benefit from a cross-sector IP approach. A variety of legal means are available to protect IP: patents, copyright, design rights and trademarks all play an important role to ensure the best level of protection. Designs protect the shape, configuration, pattern or ornamentation of a product – the features which give a product a unique appearance. Where replication of the image or appearance of a final product is key, registered design rights provide useful protection. For example, 3M Innovative Properties Company protected a drug inhaler using design drawings, while Shell has designs covering containers for the transport of products such as pesticides or fuels. Designs can be used alongside patents to provide a greater depth of protection.
Trademarks, focussing on the words, symbols or shapes associated with the company, product or process can also be registered. While they are not exactly related to the technology, they are becoming increasingly important to protect brands in our digital world and allow customers to find your products or services in the marketplace. Plastic Energy not only has a trademark protecting its brand name, but also has a trademark in place to protect the feedstock obtained from its TAC process, TACOIL. As a trading reputation develops, trademarks can be used to prevent competitors benefiting from this goodwill by using similar names or logos, and the feedstock product has been identified as one that can be trusted.
The technology associated with chemical engineering is broad and far-reaching. A team of patent attorneys with a wealth of inter-disciplinary knowledge can ensure that your inventions are looked after by the best people in order to provide robust and commercially meaningful patent protection. Owing to the nature of the technology, an effective IP strategy is likely to include a combination of patents, design rights, copyright and trademarks.
This article was written by Chloe Flower on behalf of The Chartered Institute of Patent Attorneys.
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