23 June 2020
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The push towards a circular economy promises huge rewards for innovators able to develop commercially viable bioplastic products. It is vital for innovators to understand and engage with the patent system to safeguard their developments in order to realise those rewards.

Introduction

Patents are a powerful commercial tool. They represent a bargain in which an innovator is granted a monopoly over a technical invention for up to 20 years, in return for publishing details of that invention for public scrutiny.

Patents are generally dealt with on a national basis, with innovators obtaining and enforcing patents in their countries of choice. However, in Europe the most common route to a patent is a European patent application – a single application leading in effect to individual patents in up to 44 countries, via a single centralised processing procedure at the European Patent Office (EPO).

To qualify for patent protection at the EPO, it is necessary to satisfy an examiner that the patent application describes the invention with sufficient clarity and detail for others to do the invention, and that the invention is new and not obvious from what was known before: the prior art. Most other national patent offices have similar requirements, although interpretation and procedure vary greatly. With this in mind, taking the EPO as a test case, what kind of innovations can be protected in the bioplastics field?

The prior art

The prior art used to assess whether the claims of a patent application are new and not obvious at the EPO includes all of the information that was publicly available before the patent application was filed. This includes, for example, a written document (published anywhere, in any language), an academic talk, a product catalogue, or even a product whose details can be reverse engineered.

Crucially, the prior art at the EPO includes information released publicly by the patent applicant themselves – take care! It means that a pre-filing meeting, product launch, or press release can permanently compromise obtaining a valid patent. Try to speak to a patent attorney before such events, to decide whether a patent application should be put in place beforehand. If you are already too late, all is not lost! Some countries provide patent or patent-like protection with a grace period for disclosures from the applicant themselves, including the US, Japan and Germany [1].


What can be protected?

The most important part of a patent is the claims – the statements which define the invention. Patent claims can broadly be grouped into two types: products (e.g., polymers, articles of manufacture) and activities (e.g. manufacturing methods, specific uses of a polymer).

Protection for products generally provides the greatest commercial advantage. Product protection is easier to police – it is simpler to buy and analyse a competitor’s product for infringement than to uncover details of the product’s manufacture. However, obtaining product protection at the EPO is often complicated, because they must be satisfied that the product itself is new compared to all known earlier products.

Obviously, instances where the bioplastic is a completely new type of material don’t present these problems. However, in the more routine scenario where protection is sought for a bioplastic which is a new version of a known plastic, thought is required.

In a simple scenario, the innovation is the first biobased version of a compound/article traditionally derived from petroleum sources. It is possible to argue that a patent claim of the form “polymer X made from biobased monomer Y” is new, due to the measurably different 12C/14C ratio, or the presence of characteristic impurities [2]. However applicants might face pushback when arguing on this basis alone, with examiners doubting that these incidental differences are worthy of a patent [3]. Nevertheless, these arguments can succeed, and are certainly worth pursuing, since general protection for the bioplastic can be hugely powerful.

More often, the innovation is a new bioplastic version of a known bioplastic. In such instances it is necessary to identify a new chemical or physical characteristic of the plastic to persuade the EPO to allow a patent.

New plastics’ characteristics may be hard to define, but will often arise from a new manufacturing method. Can we simply protect “bioplastic X obtainable from starting materials P and Q through process Y”? Often yes, although there can be challenges with such product-by-process claims. Firstly, the EPO is naturally suspicious that such definitions are unclear for competitors, and prefer plastics to be defined in concrete compositional terms [4]. Secondly, the EPO must be satisfied that a product made by the defined method is always going to be identifiably different from known bioplastics. Finally, in some countries the patent would only protect products actually formed by the stated process, and not the same product arrived at through other processes.

Another approach is to define the bioplastic using new physical or chemical parameters; for example, “bioplastic X having a molecular weight Mw of at least Y”. These characteristics do not necessarily need to provide an advantage – it is enough to be a useful non-obvious alternative to the already known bioplastic X. Such parameter-based definitions are usually considered helpful by EPO examiners. However, the EPO requires the patent application to provide a clear protocol of how to determine the parameter [5] (particularly for unusual parameters), and deficiencies can be fatal. Later evidence may be required to demonstrate a difference from earlier polymers for which that parameter was not mentioned.

As well as protecting the bioplastic itself, it is also important to consider protecting articles incorporating the bioplastic. The commercial advantage of having a patent to a new bioplastic X can quickly be stymied if a competitor patents a killer product made from that bioplastic X. Therefore, even for companies who do not intend to sell end products themselves, it is worth protecting key products and/or making a defensive publication related to such products (a public disclosure made as prior art to block others from obtaining a patent). Bioplastic manufacturers should note that patents can be enforced not only against those who directly infringe the patent, but also against those who provide the means for others to infringe.

Finally, innovators should explore protecting relevant activities connected to the bioplastics. Processes of manufacture for bioplastics and end products are obvious candidates. Innovators should also be aware that they can protect uses of bioplastics for specific new purposes. For example, if it is already known to use bioplastic X as an additive to reduce UV transmission in packaging, it might still be possible to protect use of bioplastic X as an additive to reduce air permeability in packaging applications.

Speeding things along

The patenting process can be slow. The EPO normally takes 3-4 years to reach a decision as to whether to grant a patent. This is fairly typical of patent offices in general. In most cases, this timescale is beneficial – spreading costs, prolonging uncertainty for third parties, and allowing flexibility to adapt to product developments. However, on occasion applicants will want a granted patent quickly – e.g., to secure investment or to enforce the patent against a fast-moving competitor.

Bioplastic innovators can be at an advantage over others in such situations, since a number of patent offices allow acceleration of patent applications for green technologies.

The UK Intellectual Property Office were the first to establish such a scheme. Their green channel allows applicants to accelerate processing of patent applications that are of ‘environmental benefit’. The environmental benefit is loosely defined, and the bar is set low (available statistics suggest a rejection rate of only ~1%). The acceleration is significant, often reducing the time to grant the patent to under a year [6].

Other countries offer options for accelerating environmentally-friendly technology, including Japan, China, South Korea, Australia, Israel, Canada, Brazil and Taiwan, although the specific details vary.

While not all countries provide fast-track protection for green technologies, most major countries allow processing to be accelerated based on a patent granted in another country (via a scheme called the Patent Prosecution Highway [7]). Therefore, applicants wishing to quickly obtain patents in several countries should consider patenting quickly in a country offering fast-track protection for green technologies (such as the UK) to use as the basis for speeding up processing elsewhere.


Conclusions

From all of this, it is clear that there are a multitude of options for protecting innovations in the bioplastic field, and that careful thought is needed to obtain the fullest protection possible. Therefore, with every new development, it is important to explore (ideally with a patent attorney) whether there is a commercial advantage worth protecting via a patent, in case the workbench curio of today becomes the workhorse material of tomorrow.



References

[1] www.mewburn.com/law-practice-library/grace-periods-for-disclosureof- an-invention-before-applying-for-a-patent

[2] European Patent No. 2668105 (as an example)

[3] Comments during examination of European Patent No. 2365017 (as an example) [4] EPO examination guidelines, www.epo.org/law-practice/legal-texts/ html/guidelines/e/f_iv_4_12.htm

[5] EPO examination guidelines, www.epo.org/law-practice/legal-texts/ html/guidelines/e/f_iv_4_11.htm

[6] Statistics released under a Freedom of Information request showed an average time of only 11 months to grant using green-channel processing between 2009-2013

[7] www.mewburn.com/law-practice-library/patent-prosecutionhighway



This article was originally published in bioplastics MAGAZINE. View the original article (page 58).

Paul is a Partner and Patent Attorney at Mewburn Ellis. His work is spread broadly across patent preparation, prosecution, and opposition work. Paul regularly handles opposition and appeal hearings at the EPO, where he has an excellent track record of obtaining successful outcomes for clients. He handles the coordination of third party observations against 3rd party patent applications in both Europe and the US. Paul also has particular experience, and a personal and professional interest, in the field of “green” polymer materials.
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