IP protection for advanced materials

To obtain a patent, at least one part of the recycling process would need to be new. This could be an additional step to the process, a different step within an existing recycling scheme or a completely different route to recycling. For example, if your new process uses a different pre- or post-chemical treatment to facilitate recycling, involves different heating and cooling stages or cycles, uses different pressure regimes or involves the use of new degrading or combustion agents, your new innovation could well be patentable. Protection may also be possible if your new process is more energy efficient.

Yes. However, it would be important to assess what other second-life uses are already employed. If your new use is sufficiently different to prior uses, it may be possible to obtain a patent. When considering patent protection, it’s important to start the application process before publicly disclosing your new idea.

Firstly, the situation should be assessed before the new plastic material is released into the public domain. As part of the assessment, it’s important to identify who owns any potential patent rights to the degradable material. Also relevant is the existence of any collaboration agreements between you and your supplier. These usually include an IP ownership clause that establishes who owns any arising IP.

One outcome could be that the potential patent rights are jointly owned. This isn’t necessarily a problem and one or both of you could still proceed with patent protection. However, it’s important for you to reach an agreement on how best to proceed.

A patent can be filed in joint names. Alternatively, your supplier may decide to transfer all rights to you at the start, during or even after the patent application process. The important point is that you secure your commercial position by filing. As part of any assessment of ownership, it’s common to evaluate those individuals/employees that have made an active contribution to the invention. This is often fundamental and decisive for IP/patent ownership.

If you’ve managed to keep your manufacturing process confidential internally, it may be possible to obtain a patent for it even at this stage. Any patent for a method of manufacture or process would need to include at least one new step. Even if this was developed and implemented years ago it could still be regarded as ‘new’ at the time of filing.

Obtaining a patent for a new product or process is helpful to strengthen your commercial and competitive position. In a simplified situation, a patent enables you to prevent all competitors from using your process. This may be more energy efficient (and therefore profitable), use more sustainable raw materials or is in other ways more environmentally friendly. A patent is a way of maximising your assets by legally defining the process or product. The value in a patent can take many forms — it could serve as a deterrent to your competitors, who may be unwilling to knowingly adopt an infringing process. Knowingly infringing patent rights does affect due diligence assessments and company valuations. Most company shareholders don’t like to be in a liability position — it’s an uneasy board decision to knowingly infringe patent rights.

It can be difficult to ‘police’ a patented process. One strategy could be to make the industry aware of your process (for example, via your website and marketing materials) and to actively associate your patent with this process. Again, competitors would be unwise to knowingly infringe a process patent, as potential damages would accrue over years.

It may be possible to obtain patent protection for your waste-water/effluent treatment. The key question is whether it’s known to use this particular plant variety for this specific purpose. If the plant hasn’t been used before in this type of treatment, it should be possible to obtain a patent for the system (for example, a reed bed incorporating this type of plant and a method of waste water or sewage treatment using the plant). You would then be in a position to control the manufacture, assembly and installation of these systems, as well as all waste water and sewage treatment processes, via your patent.

It’s important to start the patent application process before you discuss your concept with utility companies. The reason for this is that patents must be filed for ‘new’ technologies that haven’t been disclosed in public. In addition, there’s the risk that a third-party could inadvertently disclose your concept without your consent or even exploit your concept without any commercial benefit to you.

Filing a patent preserves your position and all options going forward. You could then approach different companies to negotiate the best deal without risk of them running away with your idea. A patent is a powerful negotiating tool as a company asset and can be sold or even licensed to multiple companies, with all royalties paid out to you.

A helmet containing a known material could be protected with a patent, assuming that it hasn’t been used in helmets before. While the material isn’t new, it’s being used for a ‘new’ application, and if there is an argument that it wouldn’t be ‘obvious’ to use this same material in helmets, then patent protection could well be obtained. This is particularly true if there is a technical difficulty that has been overcome by using the material.

In this case, patentable subject matter is likely to have been generated. Simply adding graphene nanoplatelets to tyres would be patentable, assuming that it hasn’t been done before. Other aspects of this development might also be patentable if, for example, the nanoparticles are dispersed through the rubber evenly in a way that is novel.

A simple but useful rule of thumb is to consider whether your development overcomes a technical problem, and if your solution has taken some thinking and testing.

A fundamental requirement to obtain a patent is that the technology must be ‘new’. In other words, it can’t be shown to anyone before the filing date unless the disclosure was made in confidence. Disclosing your fabric to your regular product testers might mean that an invention is no longer new, though this depends on who the testers are and whether you have a non-disclosure or confidentiality agreement in place. If the testers are your own employees, then disclosure is unlikely to be an issue and patent protection will remain available.

Depending on the details of the invention, it’s possible to draft a set of patent claims that include one or more independent claim categories — for example, a product and a process for making or using the product, or a process and a product directly obtained from the process.

Typically, a claim to a new component would offer the broadest scope of protection, especially as there may be alternative manufacturing routes to arrive at the product. It’s therefore important to pay close attention to any features that may inherently result depending on the manufacturing method selected. Alternatively, if the invention is a product that derives from a process from which other products could also be obtained, it may be more useful to protect the process first.

It’s good practice to ensure that the main claim defines the essential features of the invention to secure the broadest scope of protection. In addition, the claim category selected will govern which acts are legally defined as infringing and this will influence the remedies that are available to you.

It can be beneficial to engage a pre-filing search or IP landscape report to help draft a good set of claims with sufficient fall-back positions to increase the chances of overcoming prior art objections. This can be a useful strategy to ensure that the subject-matter disclosed in the patent is complete.

It’s important to link any independent claims within a claim set to form a single inventive concept that avoids unity objections. However, it may be preferred to file multiple independent claims to divide the parent application into one or more divisional applications later, and prior to grant, while retaining the same filing date. Such a streamlined approach can save you money and, if commercialisation of the invention is supported by a good business plan, a solid set of claims can be an asset to fend off competition and maximise return on investment.

Firstly, it’s important to file a patent application before publishing, as this may otherwise count as a public disclosure. Typically, the introduction section in a journal paper can be useful for the background section of the patent application, especially if it highlights key areas of development or problems that are unsolved by the industry. The experimental method section can be useful for understanding the features involved in the method, which could form the basis for a method claim — however, this would need to be drafted carefully by stripping back the invention to its bare bone essentials.

If the results of the scientific work are new and inventive, this could provide patentable subject matter. However, it will need to be redrafted to ensure that technical, legal and language issues are addressed to best protect the invention. The results and discussion section of the journal paper may be particularly useful for the description, demonstrating the workability of an invention and to provide examples in the patent specification. Scientific journal papers don’t usually disclose the commercial products in which the new technology is to be used, which is needed to draft a product claim. Therefore, it’s always wise to have a business model that supports the patented invention to at least recover the costs invested in obtaining protection.

A patent application must describe to the skilled reader how to put the invention into effect. Without this, it would be vulnerable to invalidation. Since your in-house graphene is the crucial element of the composite, you need to describe how it’s made. If there is more than one way to make your in-house graphene, you could describe your least preferred method of making it. But even this would be a problem in some jurisdictions where it’s a requirement to describe the best method of manufacture (the so-called ‘best mode’).

A patent application includes a set of legal claims that define the scope of protection the applicant is looking for. Ideally, for a chemical such as a polymer, the claim defines a molecular structure or a repeating unit and/or a measurable parameter. Where this isn’t possible, certain jurisdictions will allow the polymer to be defined by its method of manufacture. In Europe, this is referred to as an ‘obtainable by’ claim. You should be able to secure a patent if it’s possible to fully describe the way in which your new polymer is manufactured (e.g. starting materials, conditions, purification, etc).

Although the combination of constituent elements in general is already known, it may still be possible to secure patent protection for a more specific combination of the constituent elements.

The patent application could be directed towards the specific feature or combination of features that give the alloy its improved properties. This may (for example) be the content (wt.% range) of one or more constituent elements, or a particular ratio (or range of ratios) between two or more elements. If no examples exist that fall within the ranges you define then your invention may be patentable as a selection invention. In this case, the presence of a credible technical effect such as improved material properties, lower content of expensive or harmful elements can be useful to assert that the invention is non-obvious.

Not necessarily, but it would likely be advisable to do so. Patent specifications must provide enough detail to enable a person skilled in the relevant technical field to put the invention into effect (i.e. to make the product or perform a process). Typically, this means including at least one worked example, such as a specific example composition, in the specification.

One option would be to include a sub-optimal worked example in the patent specification while keeping your exact composition secret. However, this strategy could be risky, as the scope of protection claimed by the application may change during examination. If your preferred composition isn’t in the application, it may be difficult (or impossible) to rely on it for any limiting amendments. This could lead to your preferred composition falling outside the scope of the granted patent.

If you’re unwilling to make your composition public, an alternative would be to keep it as a trade secret, rather than filing a patent application. While trade secrets can work well in certain industries, they can be very difficult to maintain — once the secret is out, any commercial advantage may be lost irretrievably.

When professional patent attorneys draft a patent application, we try to strike a balance between aiming for the broadest possible scope of protection while also having a realistic chance of getting a patent granted. Generally, we initially aim for broad protection, while including optional ‘fallbacks’ such as increasingly specific numerical ranges, alternatives and optional features. This gives us scope to easily amend the application during examination, if necessary. It also means that the initial scope of the application is probably much broader than your specific composition and will likely encompass most trivial changes. If it has been less than a year since the application was filed, it’s possible to file a supplementary or ‘top-up’ application that includes the new composition as a worked example.

If the change to the composition is fairly trivial (such as a minor adjustment to weight percentage of a particular component) then there is a good chance that the new composition still falls within the scope of the patent claims. Even if the change is more significant (such as one element being swapped for another) then it’s possible (at least in the UK) that it could still be protected by the patent, as long as the difference between the variant and the patented composition is immaterial. If a competitor marketed a product which, while not being identical to the patented product, varied in a way or ways which were immaterial, then they may infringe your patent. Whether or not a variant is immaterial can be difficult to determine — the courts often rely on the testimony of expert witnesses to decide such cases.