Testing novel technology for floating wind turbines is an essential part of development, but could put patents at risk
Legal experts at Stephenson Harwood have warned of the need to protect intellectual property (IP) relating to floating wind while it is being tested.
In a recent article*, Stephenson Harwood partner Rob Jacob and managing associate Joshua Cunnington highlight many different types of floating wind technology are being developed, and tank testing is usually an important part of the development process.
“While essential in the development of novel technology, testing in public can cause serious problems when it comes to protecting IP from competitors,” they note. “If done incorrectly, testing can lead to an invention being unpatentable. It is therefore vital to ensure testing is undertaken in a way that maintains the patentability of designs.”
They highlight much floating wind technology being tested is likely to be considered ‘novel’ and may be protectable by patents. “Patents can be incredibly valuable, particularly in the energy sector,” they state. “However, testing in public or otherwise disclosing them non-confidentially before a patent has been filed can lead to them being invalidated. Invalidation means the patent becomes worthless.”
They note some of the common causes for invalidity of a patent due to prior use include testing an invention in a publicly accessible or visible place; installing it in a way that is accessible to others; exhibiting at trade shows; discussing or sharing documents relating to an invention with contractors where no confidentiality obligations exist; and promoting the invention online or in marketing.
“In the energy sector, testing and certification is fundamentally important,” they state. “In the case of floating wind, multiple competing systems are being tested in tanks and then in real-world marine environments. A key risk is, therefore, that testing can constitute making the invention available to the public, if done before all relevant patents are filed or without proper precautions being made.
“As with any technology, testing novel offshore technology before filing for patents poses a serious risk to the validity of the patent and therefore the value of such patents and the underlying technology itself. In particular, testing without certain safeguards in place can cause inventions inadvertently to be made available to the public, meaning they will no longer be able to enjoy effective patent protection and any later-granted patents could be deemed to be invalid.”
To avoid issues with testing, Stephenson Harwood’s experts recommend firstly, that all testing should be done – literally – behind closed doors; and, secondly, NDAs should be entered into with all parties, in particular, external contractors. They also recommend no details or information concerning novel aspects of the technology should be released online or otherwise to third parties, before patent(s) have been filed; and that patents are filed for before tests are carried out in any real-world environments.
*www.shlegal.com/insights/balancing-innovation-and-ip-protection-in-offshore-energy-testing
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