Patent protection for green technology

By Ann Skerry, partner, Fay Sharpe LLP

As green technology becomes more and more a part of our everyday lives, companies may have questions about obtaining patents that protect their inventions.

In drafting a patent application, particular attention should be paid to the claims. As with any patent, it is up to you to find out who is infringing your claims and keep an eye on your potential competitors.

Green technology patents generally fall into three categories.

  • Energy generation
  • Reduction in energy consumption
  • Improvements to environmental quality

In the energy generation field, Northeast Ohio has been a source of numerous innovations in wind turbines, dating back to 1888, when the world’s first electric wind turbine generator was constructed in Cleveland. Advances have included improvements in motors and blades for the turbines and the towers on which they are mounted.

Across Ohio, there are projects for large turbines, as well as much smaller devices that can be used at industrial sites and homes. For example, Lake Erie Energy Development Co. is continuing to push toward building the first off-shore wind turbine on Lake Erie, with a targeted start date of 2017. Land-based turbines are already in place at FirstEnergy Stadium and at various manufacturing facilities around the area.

The energy advances aren’t limited to wind. KB BioEnergy Inc., located in Akron, uses anaerobic digestion to eliminate the pathogens in wastewater streams and generate gas in the process, which can be used to generate electricity, making the operations self-sufficient.

Northeast Ohio is also home to two organizations that received federal grants to study the hydrogen and fuel cell supply chain: Cleveland-based WIRE-Net and the Ohio Fuel Cell Coalition based in Elyria, illustrating the potential that fuel cells hold for energy generation.

In the energy consumption category, companies including Cleveland-based GE Lighting Inc. are continuing to develop more efficient lighting products that use less energy, such as LEDs, smart grid technologies and concentrated solar power.

To improve environmental quality, companies are developing new products that are safer for the environment, such as low-VOC paints and hybrid vehicles, and looking for ways to use more recycled materials in their products. Encouraged by entities like Great Lakes Biomimicry Collaborative, companies are seeking ways to emulate nature in product design.

All of these advancements may yield technology that can be protected with patents.

Keys for developing green technology patent claims

As with any type of technology, the goal when developing green technology patents is to draft claims for a patent that will cover not only the current idea for the products, but also any potential design changes that may be made before the product comes to market.

The claims should also provide enough of a barrier to prevent competitors from easily “designing around” the claims simply by making small changes.

The approach to achieving strong claims is to know the market, know where the market is headed and understand how your product fits in to the developing market. The claims of the patent should be as broad as possible without covering what is already known.

The Patent Office examiner who reviews your application typically raises rejections based on a set of references, such as publications and patents. The examiner will argue that your claims are not patentable based on those references.

Therefore, knowing the market and references that could be raised before you draft a claim is a great help.

Expediting your patent

On average, it takes about 18 months for the U.S. Patent Trademark Office to provide an initial review of an application.

If you have an invention in the early stages of development, and you are not ready to go to market with it, you may not wish to expedite your patent application.

However, if you are ready to go to market, have someone who is ready to license the technology, or think that other companies are likely to enter the same area, it could be advantageous.

The U.S. Patent Trademark Office offers an accelerated examination program based on special circumstances, two of which are environmental quality and energy. However, the process is costly as well as requiring a search for relevant references.

One option is to consider whether you will be filing for a patent in other countries as well. Several countries offer accelerated examinations specifically for green technology patents, including the UK, Canada, Australia, Japan, Israel and Korea, and could provide a fast track for getting your invention patented.

Ann Skerry is a partner with Fay Sharpe. If you have questions about patents for green technology, contact her at