Algae Blooms at the Patent Office
By: TODD A. TAYLOR & PHILIP M. GOLDMAN
February 2009
Has algae finally arrived? Maybe, and if the rising number of patent applications for algae technologies is any indication, then the answer is a resounding “yes.” The growth in algae has been spurred by the potential for algae to provide an abundant and sustainable feedstock for fuels, biomaterials, feed, and other products. Major investments in algae technologies have been made by the U.S. Government, research universities, and venture capital firms, driving algae from a backwater topic just a few years ago to a major player today.
In 1988, there were only four international (Patent Cooperation Treaty, or “PCT”) patent applications published containing the word “algae” in their abstract, as compared to 37 in 1998, and more than 90 during 2008. Similarly, only three U.S. patents were issued in 1988 containing the words “algae” and “bioreactor” somewhere in their text, as compared to 22 in 1998, and 51 in 2008. In 2008, there were also 208 such applications that were published in the United States.
What can this mean to your company? Longer processing times and higher costs. Why? Because all of these new filings in a field that was previously uneventful adds to the inevitable backlog that develops in the course of getting patent applications to the point of actually being examined and issued. For instance, a new “art unit” dealing with chemical separation and purification, including algae bioreactors, was recently formed in the Patent Office in order to coalesce what had been several different examination groups. Though this reorganization might make sense in the long run, the immediate result will likely further delay the examination of new applications concerned with algae and similar technologies.
And what are people trying to patent in the world of algae? Bioreactors, algae strains, open pond designs, harvesting, separation, and processing equipment are among the things being patented. Indeed, one can potentially patent a variety of things, living and non, from a variety of perspectives, and it is important to realize that you might be able to patent more than you think. For instance, if an inventor develops a new bioreactor-based method of growing algae, she would be wise to consider “claiming” as her invention not only the method itself but also any equipment that might need to be customized in order to perform the method, as well as novel intermediates or reagents that might arise. She could also claim the resulting algae biomass, per se, as well as downstream products that might be derived from or based upon such biomass—all in the course of a single application.
Here are some strategies you need to consider:
- File early and often. There are considerably more advantages than disadvantages in being first to the patent office, and it is far easier to later let an application go than to kick yourself for not having filed at all. You can use the long examination backlog to your advantage, by deciding whether the application you first filed is indeed still worthy of time and effort down the road.
- Expedite patent examination when necessary. There is generally no urgency to getting a patent issued, unless it is needed to attract investors or pursue infringers. Yet there are ways in which the inevitable lag time in the patent process can be curtailed from on the order of several years to on the order of several months or longer.
- Don’t assume that your product or process could not possibly be patentable. While the final steps in solving a technical problem can often seem “obvious” and unpatentable to the inventor herself, a good patent attorney can often help you step back to look at the overall problem that initially existed in order to find ways in which the eventual solution can indeed be considered inventive—and potentially patented.
Having strong patent protection is a key to attracting investors and ultimately helping establish and protecting your place in the competitive environment. Do it right, and you could grow as fast as an algae bloom.
Phil Goldman is a shareholder at Fredrikson & Byron, focusing on intellectual property matters throughout the life sciences, after having served in a similar capacity for more than a decade at 3M. He is particularly skilled at finding ways to provide counsel in areas such as patent protection, freedom to operate, and technology transfer, in a cost-effective manner, and for the benefit of clients ranging from small and medium-sized companies to nonprofits, including universities. He can be reached at pgoldman@fredlaw.com or 612-492-7088.
Takeaway
Having strong patent protection is a key to attracting investors and ultimately helping establish and protecting your place in the competitive environment.