PROTECTING PATENT RIGHTS IN COLLABORATIVE INVENTING

            The tidal wave of online usage of social networks has spilled over into collaborative business networks.  Social networks such as Facebook are being used to create and market new ideas and innovations using social networking webpages.  Collaborative innovation networks have sprung up as online communities of like-minded people who choose to work together on innovation projects.  The speedup in investor expectation for startups to get to market using online development and product marketing tools has also given rise to online startup funding networks known as crowdsourcing.  For example, Kickstarter allows users to post project funding proposals on its website to vie for online (crowd) funding.  But what happens to patent (i.e., invention) rights in collaborative online inventing?  A brief outline of some of the perils and pitfalls of this phenomenon and recommendations for protecting patent rights follows.

CONFLICTING CLAIMS OF OWNERSHIP

Where a collaboration group has involved diverse users who may later disagree how they will exploit the result and share profits flowing from it, conflicting claims of ownership can arise.  This can lead to full-blown disputes and/or litigation that can tie up the innovation creators in destructive legal wrangling for years. 

In crowdsourcing, the typical terms of use, such as Kickstarter‘s for example, provide no guidance how to contract for “rewards” or “promised benefits” with online funders.  An inartfully drafted promise of benefits for crowdsourced funds can lead to funders later claiming a share of ownership or ongoing benefits (royalties) from invention rights.

As is already well-known to established companies undertaking joint research projects, it is important to define in writing in advance a collaboration group’s mission, membership and at least a general framework for ownership and apportionment of rights and benefits.  This can avoid or at least mitigate conflicting claims of ownership later.

LOSS OF INVENTION RIGHTS

Erroneous myths and misconceptions persist when it comes to invention rights, and specifically patenting, in collaborative inventing.  Many of those not familiar with the patent process still believe that they can mail a stamped and sealed invention disclosure to themselves to establish proof of their date of invention.  However, the U.S. Patent Laws were reformed by the America Invents Act (AIA) of September 2011, with full effect from March 2013, from the former “first-to-invent” system to a “first-to-file” system like the rest of world.  Under the “first-to-file” system now in effect in the U.S., patent rights belong to the inventor(s) who first files a patent application containing a complete enabling disclosure how to put the invention into practice.  It does not matter that an inventor has been working on their invention idea for years, or even for one day, before someone else files their patent application.  The first party to file will win!  It is important that a patent application be prepared and filed as soon as the invention has been completed with details of its best implementation.

Another common misconception is that a quick provisional application can be filed to establish an official invention date and buy one year of time for a formal patent application to be filed.  But this is true only if the provisional application contains an enabling disclosure of what will later be claimed as the invention sought to be patented.  All too often an amateur inventor will self-file a provisional application with marketing verbiage stating their “idea” or “wish list” for their invention but leave out crucial details of proposed implementation.  Later on during Patent Office examination, they may be dismayed to have the patent examiner cite disclosures of the same or similar idea by others earlier, and learn that their provisional filing date cannot be relied on as a date of invention because enabling details of implementation that might be patented were not disclosed in the provisional.

Collaboration networks often hold live events that connect online where an invention idea may be worked on publicly by a collaboration group.  Such public events published online may constitute a publication of what the group has worked on, which would cause an immediate loss of patent rights due to publication by others occurring before a patent application has been filed.  The U.S. Patent Office imposes a requirement for disclosure of all material prior art known to an applicant for patent, including their own prior publication, otherwise any issuing patent may be attacked later for invalidity.  The collaborative group members must disclose their prior publication to the Patent Office, which will have the effect of restricting them to patenting only a significant technical improvement over what the group publicly disclosed.

PRIOR ART AGAINST PATENTING

People not familiar with the reformed U.S. patent system may also believe in error that their own prior public activities (public disclosure, use, sale, or publication) cannot be cited as prior art against their own patenting if they are within the one-year U.S. “grace period” for inventor publications prior to filing.  But the “grace period” only applies to prior publication by the inventor(s) themselves.  It does not apply to prior public disclosures by other parties who may participate in development of the invention, such as marketing consultants, manufacturers and component suppliers, startup agencies that publish invention pitch descriptions, grant funding agencies that publicly post RFP descriptions and project submissions, etc.  Even a crowdsourcing project proposal by a related business entity can be deemed a prior public disclosure by another party.  Such prior public disclosures by other parties have immediate effect as prior art against patenting. 

Patent-killing prior art can also include prior public use or sale of the invention in foreign countries, or prior filing of a foreign patent application anywhere in the world.  Foreign filing dates are typically 18 months earlier than their date of publication, which makes it even more imperative that a U.S. patent application be filed as soon as an invention is completed.  In one recent U.S. patent court decision, a foreign publication by an off-shore manufacturer of an invention product for its U.S. owner was held to be qualifying prior art against the owner's patenting in the U.S.

            

POINTERS FOR PROTECTING PATENT RIGHTS IN COLLABORATIVE INVENTING

(1)  Define in advance the collaboration group’s mission, membership, and rights and benefits in any invention(s) developed. 

(2)  File a U.S. patent application as soon an invention has been completed, taking care to explain full enabling details of its best implementation at that time.  Take care to name as inventors all those making a substantial contribution to the conception and implementation of what is claimed as the new or improved subject matter (each named inventor must review and sign the application).

(3)  If the collaboration group intentionally or inadvertently made the invention subject matter public more than one year before filing its patent application, it must disclose that information to the U.S. Patent Office, and take care to claim only significant technical improvements over what was publicly disclosed.

(4)  Be aware of what your competitors or even your own business partners or suppliers may publish in the U.S. and/or globally.  There is no grace period for third party publications, so you must file your U.S. patent application as soon as possible before any such public disclosures are made.

(5)  Be aware of the risk that collaboration networks are public forums whose online publications can kill later-filed patent rights, so manage your participation and online disclosures accordingly.

Leighton K. Chong

IP & Patent Attorney

December 2014

IPR BENEFIT SHARING IN OCEAN RESOURCE TECHNOLOGIES

The world's burgeoning population and continual pressure for better standards of living will require ever greater resources for living needs at the same time that conventional energy sources are becoming depleted or unusable, food sources depleted and insufficient, and clean water supplies polluted and scarce. To where will humans turn as the available resources on Earth run out and human needs continue to grow?

71 % of our Earth's surface is covered by ocean, and 80% of the heat of the Sun shining daily on Earth is stored as thermal energy in the ocean. By pumping or upwelling just a small fraction of this cold deep ocean water for heat exchange with warm surface waters, the stored energy if converted by ocean thermal energy conversion (OTEC) into electricity has a capacity of 10,000 times the energy used by mankind daily. The OTEC heat exchange cycle can also be used to generate potable water by flash evaporation, and OTEC electricity can be used to generate clean fuels such as hydrogen and ammonia by electrolysis.  Each megawatt of OTEC production could supply energy, fuel and water sufficient for about 50,000 persons (world usage averages).

Deep ocean waters store high concentrations of dissolved minerals such as nitrates, phosphates, and other nutrients that if brought to the surface could act as natural fertilizer for growing marine biomass on submerged ocean racks.  Marine biomass can be processed into clean biofuels such as butanol, and the biomass residue can be further processed into organic fertilizers, protein-rich animal and fish feeds, bioactive pharmaceuticals and other high-value marine bioproducts.  Fishfeed from marine biomass and OTEC electricity can be supplied to tethered ocean cages for growing pelagic species of fish.  The discharge of nutrient-rich cold water into the euphotic zone of surface waters could stimulate marine life growth and thereby enhance marine food chains to revitalize wild fish stocks.

Pumping cold deep ocean water to the surface in large volumes for utility-scale OTEC energy production could have beneficial impacts on the marine environment and atmosphere.  Each megawatt of OTEC energy would bring about 50 million gallons of cold ocean water to the surface per day.  The large-scale cooling of surface waters could reduce or mitigate the formation of tropical storms and hurricanes.  Other environmental benefits could include absorption of carbon dioxide from the atmosphere to reduce greenhouse gases that contribute to global warming and ocean acidification.

Realization of this vast potential for producing food, water and energy from the ocean represents a new frontier for humanity that has been called the "Blue Revolution".  Like the “Green Revolution” of the past generation that brought about an order of magnitude or greater of productivity in agricultural and other land-based food production, the Blue Revolution has the potential to provide food, water, and energy sufficient for mankind’s needs.  However, rather than being land-based, the Blue Revolution is to be carried out in the oceans.  This is a planetary resource that under the United Nations Convention on the Law of the Sea has been declared to be “the common heritage of humanity”.

Research efforts over the past 40 years have shown that OTEC power generation can support integrated production of energy, food, water and a variety of marine bioproducts on ocean platforms or "plantships" deployed in ocean waters.  OTEC­ powered plantships can be deployed in ocean spaces far removed from coastal areas occupied for human recreation, fisheries, marine sanctuaries, ports, and navigation lanes. Under the United Nations Convention on the Law of the Sea[1] (UNCLOS), countries bordering the oceans are deemed to have territorial waters extending to 12 nautical miles (20 km), contiguous zones of enforcement extending to 24 nautical miles (40 km), and administrative jurisdiction over exclusive economic zones (EEZ) extending 200 nautical miles (340 km) from shore. 

UNCLOS provides that ocean-bordering nations have exclusive rights to exploit their EEZs economically, including through fishing rights, mineral extraction from the seabed, and permitting the deployment of ocean structures, artificial islands, and/or seabed structures.  Other nations have a right of transit for vessels through the EEZ and may share in access to fishing and other resource gathering to the extent not utilized or otherwise permitted by the ocean-bordering nation.  Ocean waters beyond the EEZ are defined as the "high seas" or "international waters", which are reserved as "the common heritage of humanity" from exclusive appropriation or exploitation by any country.

The U.S. is a signatory to the UNCLOS but has not yet ratified the treaty to be binding as U.S. law (first blocked by President Reagan in a dispute over the definition of boundaries of the continental shelf).  However, the U.S. observes its ocean space definitions and framework of rights and duties.  U.S. administrative regulation of activities in the EEZ continues to be in a transitional state moving toward codification.  Environmental and resource use regulations and other laws have effect within U.S. territorial jurisdiction of territorial waters extending to 12 nautical miles, and may be enforced within agency discretion to contiguous zones extending to 24 nautical miles. 

For realization of the potential of the Blue Revolution, much research on testing and development of best practices and technologies for ocean resource production needs to be done.  Intellectual property rights (IPRs) in technology innovations are typically claimed by developers and inventors and secured in their home countries as well as other countries of the world.  Technology developments are often generated by multi-lateral or international research collaborations, as global companies and foreign governments seek to exploit opportunities in other countries.  The global system of intellectual property (IP) rights has been developed to protect innovation and invention rights within and among the nations of the world.  Important questions of benefit sharing in IPRs would be raised for Blue Revolution technologies developed through multi-lateral or international research conducted in ocean zones, and used in later deployment of ocean resource production technologies in the ocean zones of other countries.

Historically, knowledge of best practices and development of economical and efficient technologies have been led by the more advanced nations that have the technological and economic wherewithal to explore and innovate new technologies.  But the more advanced nations have tended to use strong IPR regimes for market dominance and profit­making in globalized world trade.  This has resulted in ongoing trade conflicts and economic inequities.

The "Green Revolution" of the 1960s and 1970s greatly improved agricultural productivity but was dominated by industrial corporations of the more advanced countries controlling high-yield seeds, fertilizers, & pesticides for sale in lesser developed countries at high cost.  Advanced medical and drug technologies are another area where advanced countries have controlled access to needed drugs and therapies, such as AIDS drugs, to the detriment of lesser developed countries in Africa and Asia.

Developing countries have long sought to promote developmental policies toward access to life-sustaining technologies through benefit sharing in IPR rights, and this position has been supported in many UN studies such as by UNESCO and UNCTAD.  Most recently, developing countries have sought to negotiate IPR access to climate change technologies as a condition to signing on to world protocols to reduce greenhouse gas emissions.  However, multi-national companies and the IPR agencies of the more advanced countries have resisted attempts for IPR access, recommending instead that developing countries should strengthen their own creative economies to build up their IPR assets.[2]

Because the oceans are a shared, open, and accessible planetary resource available to mankind worldwide, it has been asserted that the benefits of ocean resources production should be shared with all humanity.  In particular, it has been suggested that IPR benefits in ocean resource technologies should be shared by allowing ocean resource technology access to all countries of the world. 

The case for IPR benefit sharing in ocean resource technologies is particularly compelling where multi-lateral or international cooperation is necessary for global companies and foreign governments to conduct research within or in proximity to ocean zones of developing countries.  Those countries should be allowed to share in the benefits of such research in exchange or as equitable consideration for permitting the research to be conducted within or in proximity to their ocean zones.  As effluents and other effects of production technologies practiced in one ocean zone can easily flow and create impacts in adjacent ocean zones, IPR benefit sharing should also be considered when developed ocean resource technologies are later deployed within or in proximity to the ocean zones of bordering countries. 

Much ocean research will necessarily entail cooperative or joint research efforts.  In joint research, it is common to jointly manage or pool together IPR rights in order to remove ownership and enforcement issues as obstacles to sharing research work among participants.  Also, in circumstances where multiple parties collaborate to develop and optimize different parts of a complex system, such as occurred in the development of digital television and microprocessors, allowing component developers to be licensed under collective IPRs for the whole system can remove the legal friction that might otherwise occur from the assertion of IPR rights between contributing parties.

It is also important to remember that IPR rights are territorially based.  That is, the legal monopoly granted by a patent obtained in a given country under its patent laws only apply within the territorial jurisdiction of that country.  Practice of an IPR-protected technology in the ocean EEZ of a country would technically occur outside of the country’s jurisdiction, and therefore IPR rights obtained in that country could not be enforced to prevent deployment and use of the IPR-protected technology in the ocean EEZ outside of that country’s jurisdiction.

Another consideration weighing in favor of IPR benefit sharing in ocean resource technologies is that the patent systems of almost all countries of the world are “first-to-file” systems in which a patent can only be obtained if a patent application is filed before a first publication of the invention from or through another source.  Under the “America Invents Act” enacted in September 2011, the U.S. also reformed its patent system to become a “first-to-file” system like the rest of the world.  In multi-lateral or international research efforts, it has become common for joint research parties to publish research data for access by participating parties and/or by sponsoring research institutes, companies, and government agencies.  Such publication of research information before a party has filed for patent on any invention(s) contained therein could preclude a valid patent from being obtained under “first-to-file” patent systems.  Therefore, ocean resource technologies developed through multi-lateral or international research might inherently preclude patenting anywhere unless total secrecy from prior publication can be enforced.

Finally, as a broad international protocol under UNCLOS, international waters beyond designated ocean EEZs up to 200 nautical miles from shore are deemed to be “the common heritage of humanity", which no nation or entity can appropriate for its exclusive use.  Effluents and other effects of ocean resource production technologies practiced in one country’s ocean zone can easily flow and create impacts in international waters.  Therefore, benefit sharing of IPRs in ocean resource technologies with all countries of the world might be considered equitable compensation for any entity’s use of IPR-protected ocean resource technologies that may affect international waters.

In summary, benefit sharing of IPR rights in ocean resource technologies for production of food, water and energy from the oceans for humanity’s needs may become an important new paradigm in the Blue Revolution.  Such IPR benefit sharing would be promoted by the shift from land-based use of technologies and territorial-based IPR systems to the use of ocean resource technologies in the oceans, as well as consistent with international protocols for use of the oceans as the common heritage of humanity.

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[1] United Nations Convention on the Law of the Sea, adopted December 1982, ratified by 166 countries, see UN Convention website: http://www.un.org/depts/los/convention_agreements/convention_overview_convention.htm

[2]  "Access to Climate Change Technology By Developing Countries", by Cynthia Cannady, IP*SEVA, ICTSD Global Platform on Climate Change, Trade Policies and Sustainable Energy, Issue Paper No. 25, Sept 2009.