Balancing innovation and IP protection in offshore energy testing

Patents in offshore energy

There are currently a significant number of competing designs for floating offshore wind foundations, in addition to hybrid generation systems combining wind with other sources such as wave and tidal energy, and associated control systems. Many of these systems (in whole or part) are likely to be considered novel and therefore may be protectable by patents, which is demonstrated by the large volume of patent applications covering this field. Once protected by a patent, the newly designed technology has the potential to provide the owner with a complete monopoly in relation to this technology for 20 years, allowing the owner to carve a niche in the market and prevent competitors from using the same or substantially similar systems and/or designs. Patents can therefore be incredibly valuable, particularly in the energy sector. Not only do they allow owners to protect their market share and create a barrier to entry for competitors, but they can also create a valuable revenue stream through licensing arrangements with third parties (which may include those same competitors) who want to access and utilise the technology protected by the patent.

However, testing inventions in public or otherwise disclosing them non-confidentially before a patent has been filed can lead to them being invalidated. Invalidation means that the patent becomes worthless: competitors can freely use the invention covered by the patent without having to pay for it and the large amounts of money invested into the patenting process will have been wasted.

The key principle is that, to be patentable, an invention must be 'novel'. In order to be novel, the invention must not have been previously 'made available to the public'.¹ There are two main ways that inventions can be made available to the public, thereby forming the ‘prior art’. The first is if an earlier identical or similar patent has been published or the invention somehow otherwise described (e.g. in an academic article). The second is if an invention is used in public. This prior use principle means that inventors can inadvertently invalidate their own patents by developing, demonstrating or exhibiting their inventions in public prior to the filing or priority date of the patent. Furthermore, an invention will be considered to have been made available to the public if it is made known to third parties (which can include to contractors or to persons online) in a non-confidential manner.

Some of the common causes for invalidity of a patent due to prior use include:

• Testing the invention in a publicly accessible or visible place (which includes leaving the invention in such a place);
• Installing a system which is then accessible to others (even on private premises);
• Exhibiting the invention at trade shows;
• Discussing or sharing documents relating to the invention with contractors where no confidentiality obligations exist; and
• Promoting the invention online or in marketing.

This article focuses primarily on the first of these situations, however the rest are equally important to consider when developing new technologies.

The testing conundrum

In the energy sector, testing and certification is obviously fundamentally important. In the case of floating energy generation, step changes in design have led to multiple competing systems being tested in controlled tanks and then in real-world marine environments such as nursery facilities. A key risk is, therefore, that testing can constitute the making of the invention available to the public if done before all relevant patents are filed or without proper precautions being made and therefore can lead to a later patent being deemed invalid.

When testing and developing such new technologies, two main situations need to be considered.

Where access to the invention can be controlled (e.g. behind closed-doors tank tests)

As noted above, for prior use to lead to the potential invalidity of a later patent, the invention must have been made available to the public. This means that use which is entirely internal to the business of the applicant (such as on private R&D facilities), or which is contracted out but where sufficient non-disclosure agreements (or 'NDAs') are in place, should not affect the patentability of an invention.

Where a potentially patentable invention is being tested in an internal environment it is, therefore, critically important that all employees and contractors with access to the invention are subject to NDAs and that the premises on which the testing is being carried out are private and have access limited only to such staff. In addition, it is recommended that any internal testing is carried out 'behind closed doors' in a literal sense to avoid third parties or those not subject to NDAs from viewing the testing from outside the test area or facilities.

Where there is any doubt about whether it is possible to put these protections in place, we recommended that applicants file for patent protection as early as possible and before any testing is carried out.

Where access to the invention cannot be controlled (e.g. in/offshore environments)

Marine environments pose more complicated problems because access to certain areas may not be restricted or may be observable from public land. In particular, certain test and 'nursery' sites can be relatively close to shore and theoretically accessible to the public.

There have been a significant number of disputes over the years as to how the term 'made available to the public' should be interpreted in the context of prior use. These disputes have involved the testing of, amongst other things, windsurf sail designs off the south coast of England, expanding garden hoses in a domestic garden and mechanical seed drills in a field which could be seen from a footpath.

Importantly, it is clear from the judgments in these cases that an invention will be considered to have been made available to the public if it is left in a public place in circumstances that would allow the relevant public to inspect or observe the invention and then make it in a manner consistent with the patent's claims. This is what is known as an 'enabling disclosure'; in other words the disclosure must enable the public to make the claimed invention. A classic case involving an enabling disclosure concerned a traffic light system which was left by the roadside; it was held in this case that the invention had been made available to the public because workmen were theoretically able to examine the traffic light system and derive the patent's claims. Importantly, however, the invention does not have to be actually seen by a member of the public for novelty to be destroyed. The test is whether a member of the public could have seen it.

When considering testing in the marine environment in the context of the case law on what constitutes an invention being made available to the public, there is a high risk that such testing could be considered to be carried out in public. For example, an inventor might file for a patent covering a wave dampening system. If the inventor had tested that system in a marine environment prior to the patent’s filing or priority date and the novel aspects of the system could have been derived from a hypothetical inspection by a member of the public, the patent would be vulnerable to an invalidity attack later on and may therefore be unenforceable. This could mean that the inventor would be unable to rely on the patent to stop competitors from using the same or substantially similar system or to license it to third parties. Caution must therefore be taken and we recommend that legal advice is sought before any real-world marine testing is carried out.

Conclusion

As with any technology, the testing of novel inshore and offshore technologies 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 that they will no longer be able to enjoy effective patent protection and that any later-granted patents could be deemed to be invalid.

To avoid such issues with testing, we recommended that:

• Where access can be controlled in an indoor environment (e.g. tank tests), firstly all testing should be done (literally) behind closed doors and secondly NDAs should be entered into with all parties, including in particular external contractors.
• 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.
• That patents are filed for before tests are carried out in any real-world environments; otherwise the testing may lead to the invention being made available to the public and therefore patent protection being unavailable and any later filed patent being vulnerable to invalidation.

If you have any questions relating to the issues raised in this article, or would like to discuss how they might affect the protection of your patents and other IP, please contact Rob Jacob or Josh Cunnington in the Stephenson Harwood IP team who would be happy to arrange a call or meeting to discuss further.

Rob and Josh are co-authors of the IP chapter in Offshore Construction, Law and Practice (2^nd end, Routledge)