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The Energy and Environmental Innovation Conundrum: Can the Patent System Protect New Ways of Using Old Technologies?


Written by Charles P. Lickson
Posted: April 25, 2013 @ 8:00 am
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EDITORIAL NOTE: Continuing our Earth Day 2013 series, Charles Lickson asks whether patent protection is enough of an incentive for exploring clean, green solutions that may not be protectable, but which could offer important benefits for the environment and a sustainable energy future.

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It is certainly understandable why time and field of application limits must be placed on patent grants to allow inventors and organizations other than the patentee to enter certain fields after the exclusivity period expires. To do otherwise would actually inhibit the value of an invention because there would only ever be one supplier.  Our patent system, of which I am a firm believer, gives a period of exclusive opportunity to the inventor – something essential to moving an invention into the real world of commerce and societal benefit.  The field of clean or green technology is one of those areas where innovation is desperately needed if our planet Earth is to survive as a place where all living things can thrive.

Several important questions arise from this kind of situation:

What if a “new” and needed technology is not really new, but rather a new way of doing something which builds on a known (and patented technology where the exclusive protection period has expired)?

And, what if the “new” technology cannot find its way to market (i.e. real-world application) unless there is funding?

And, what if that funding requires some type of market exclusivity (such as patent protection) be in place first?

Since there have been literally thousands of energy and environmental related patents granted in in what may be called “clean/green technology” – some still within the protection period – many others expired i.e. in the public domain, how can a new way of doing an old thing find the support it needs to get to market?

Regarding expired patents, patent attorneys might call the intellectual property protection challenge for the “new way” of doing the older technology prior art, lack of inventive step or obvious (in view of what is already known to a person “skilled in the art”).

The answer to this challenge lies in two possibilities, in my view.

First, and simplest, would be for the “new way venture” to achieve major first mover status with great financial, technological and human resource support behind the project. It could face competition but presumably the rapidity with which the first mover stakes a commercial market could give a competitive advantage without the need for intellectual property protection except perhaps as to business trade secrets and trademarks.

The second, and more long term possibility involves the creation of a new category of legal protection whereby the patent application reviewing authority (in the U.S. – The U.S. Patent and Trademark Office) acknowledges the new way of doing something old as an “innovation” – not necessarily an “inventive step”, but beyond a simple “improvement” – and grants a new period of time exclusivity. The period may be shorter than the usual protected window of a patent grant, but should be long enough to incentivize capital resources to assist the technology in getting to a real world market.

It strikes me that the first possibility mentioned above will only happen where the inventor (or assignee organization) can enroll a major partner with sufficient clout to establish early credibility in the proposed market.  This appears to be happening to an extent in Big Oil where the public relations angle of doing the so-called “clean/green technology” has at least as much value as legal exclusivity. An example of this is Shell’s promotion of its involvement in biofuels as a clean/green technology in the domain of fuel.

In the second possibility, the challenge is far more difficult because it will require a myriad of steps before promulgation including resolving policy issues, proposed regulation changes and the underlying legislative action on a national level in many countries.  The new America Invents Act itself did not have an easy legislative time in coordinating U.S. patent practice to the rest of the world.

Let’s look at emulsion fuels as an example of the challenge posed above. These fuels – comprising a method for creating a water-in-fuel emulsion – have been around for over 60 years. Thus, fuel emulsion technology is not new. The body of knowledge is extensive, primarily on the transportation, academic and experimental side.. Emulsion fuels have had considerably more commercial success in Europe where environmental pressures have been greater from local governments.

Emulsion Fuel technology has been developed for applications in oil burners and diesel engines aimed at reducing polluting emissions.  To date,  emulsion fuels are the only fuels that simultaneously reduce emissions of nitrogen oxides, particulates and carbon dioxide of diesel engines without the need for any mechanical modifications.

“Emulsion Fuels are as safe as commercial diesel fuels and bring a high level of protection against corrosion and wear in the engine.  From a technical viewpoint, Emulsion Fuels work as follows: as the emulsion is injected in the cylinder, the sudden vaporization of the w ater dramatically increases the contact surface between air and diesel oil, enhancing the combustion efficiency and reducing Particulate Matter (PM) across the complete size distribution as well as Smoke Opacity and Carbon Dioxide (CO2).  In parallel, due to the high heat vaporization of water, the conversion of liquid water contained in the fuel to steam reduces the peak combustion temperature leading to a reduction in the production of Nitrogen Oxides (NOX).” CEN (European Standards Agency) Workshop Business Plan 15-03-04, CWA 15145:2004.

Some patents, both mechanical and chemical, have been issued in the field of emulsion fuels.  But emulsion fuels have, so far, not created a large market in the U.S.  It may very well be that there have been, in the past, questions about the patentability of this basic technology that has been around and studied for many years. These questions may have slowed development of these fuels as a commercial undertaking in a major way.

Still, since it has been shown that emulsion fuels cut noxious emissions and, in some cases, improve efficiency, there is a strong societal need for this technology. So, there ought to be a way that this important know-how becomes a factor in fuels for engines and boilers.

I have been involved in promoting the technology and also looking at how to protect a market by both by having the company be a first mover – while also seeking traditional patent and other intellectual property protection.

The big question is: What other clean and green Earth-friendly technologies are out there but not moving forward fast enough because they are just “new ways” of doing “old things”?

About the Author

Charles P. Lickson is a former practicing attorney and is Founder and Chairman Emeritus of Cavitronix Corporation. He currently serves Cavitronix as Executive Vice President – Operations and, among other things, is responsible for in-house legal support for Intellectual Property. Cavitronix has a number of U.S. and international patents pending for its proprietary “just-in-time” emulsion fuel technology. Lickson is also the Editor of the upcoming GreenTech Legal Reporter™ being launched Summer 2013.


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3 comments
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  1. Ah –there is that “innovation” word rearing its sneaky head out of the rabbit hole again:

    “… acknowledge the new way of doing something old as an “innovation” – not necessarily an “inventive step”, but beyond a simple “improvement” – and grants a new period of time exclusivity. The period may be shorter than the usual protected window of a patent grant, but should be long enough to incentivize capital resources to assist the technology in getting to a real world market. … “

  2. If the perceived financial rewards of implementing technology covered by expired patents are great enough, the investors will come. Likewise for corporate expenditures that are perceived to generate good will. Patent term extensions and creation of a new protected class based on some lower standard of “innovation” are not needed to cause businesses to exploit good ideas in expired patents. I have personally witnessed in multiple unrelated industries [oil & gas, ceramics, and aerospace] several instances of industry wide adoption of patented technology after the patents were struck down through litigation and also at expiration. The same competitors as well as new entrants who had previously widely bad-mouthed the patented inventions became advocates and users when the risk of being liable as an infringer no longer existed. Also, during the term of the patents, these competitors worked vigorously to invent and design around the key patents, resulting in patents of their own and further advances in the technical fields, thus, again proving the patent system [long before the AIA] was working to help promote the advance of technology and its implementation.

  3. Surely the approach is to adopt the same approach as used in software patents, try and identify something that is ‘new’ and can have a different label attached to it, that the patent office will accept as new and patent your ‘invention’ for that.

    So for example whilst emulsion fuels are not new, is the modern diesel engine somehow different to what has gone before and hence your specific formulation and blending technique is somehow new and uniquely applicable to these modern engines and the modern fuel distribution and storage systems (ie. your product has an enhanced shelf life) etc. etc..

    I think the problem being alluded to is more to do with the cost of bringing something to market and hence the desire/need to try and protect the upfront investment and to hinder competitors so as to create a scarcity value for your product. But then looking at the IT sector and specifically the smartphone market we see that fundamentally the only difference between Apple’s products and the competitors is the design and styling. The majority of the patents that Apple have asserted have not been core functionality but those embelishments that were considered to give their product the “Apple” experience.

    Hence I suspect that part of the problem here (Energy and Environmental Innovation) is with investor reluctance due to perceived risk and people being afraid of competition.