1. Two Questions Every Wind Energy Company Should Ask Itself
Peter A. Socarras, Esq.
In the past twenty years, nearly 500 U.S. patents have issued with the words “wind
turbine” in the claims; 123 patents issuing in 2008 alone. The technologies covered vary from
improvements in blade design to methods for detecting ice on a wind turbine.
Patents are government validated assets. For those who do not own the assets, patents
become economic roadblocks. Companies in the wind-energy industry must face the reality:
You either own the assets, or are subject to the roadblocks.
Before bringing a new product to market, every wind energy company should ask itself
two important questions:
1) Does someone have a patent that can stop me from selling my product?
2) Can I prevent someone else from selling my product?
The first question is one of “freedom-to-operate;” i.e., identifying the roadblocks. A
proper freedom-to-operate analysis requires: i) a complete review of the final product; ii) a
review of the pool of enforceable patents; and iii) consideration to pending patent applications.
It is important to note that a patent can cover only a sub-system or component of the whole.
Further, ignorance of another’s patent is not a defense to infringement. Therefore, it is important
to consider the freedom-to-operate of every aspect of the final product before going into
production. A wind turbine manufacture, for example, should consider the freedom-to-operate
of individual system components such as the design of the blade, the pitch control system, the
drive train, the cooling system, etc. For a manufacture to begin production of a turbine blade, for
example, to later learn that the blade design infringes an enforceable patent, could be a costly
mistake. For an early-stage company, with little room for error, this mistake could be fatal.
Evaluating freedom-to-operate prior to production may avoid infringement liability with only
minor modifications to the final product.
An important distinction is made here between enforceable and unenforceable patents.
Typically, a patent is enforceable for twenty years from the date the patent application was filed.
If the patent claims priority to one or more earlier filed U.S. patent applications, the term of the
patent is typically twenty years from the filing date of the earliest filed application. Further,
throughout the term of the patent, the patent owner must pay maintenance fees at three separate
occasions; namely four, eight, and twelve years from the issuance of the patent. If the patent
owner does not pay the requisite maintenance fees, the patent expires and is unenforceable.
Once a patent is unenforceable, the teachings therein are part of the public domain and are
therefore free to practice. While a patent is enforceable, however, the patent owner can prevent
the unauthorized practice of the claimed invention.
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2. In addition to the pool of enforceable patents, consideration should also be given to
pending patent applications. There is a significant risk that a patent application may issue as a
patent after your product has gone to market. There is also a risk that a competitor, after seeing
your product release, may file claims in a pending application to cover your newly released
product. The question to ask when reviewing pending patent applications is: Can a creative
patent attorney take the disclosure of the patent application and draft allowable claims that cover
your product? If so, a defensive strategy should be developed to prepare for this potential
roadblock.
After conducting a freedom-to-operate analysis, the next question is whether you can
prevent others from selling a product similar to yours. Again, a proper analysis requires a
complete review of the final product. All sub-systems and components that are novel and
nonobvious, as well as the system as a whole, should be considered for patenting. The patenting
process is the means for a company to set roadblocks for its competitors.
Novelty and nonobviousness have very specific meanings in the patent law. For an
invention to be novel, the invention must not be known, used, patented, or described in a printed
publication by another person. To be nonobvious, the invention, although not exactly described
in the prior art, must not be obvious to a person having ordinary skill in the art to which the
invention pertains. In other words, the invention must be more than merely an obvious
combination of known elements, combined in a predictable fashion.
In addition to patenting the final commercial product, consideration should also be given
to patenting modifications of the product. Patents are more effective roadblocks when they
cover more than just the commercial embodiment of the invention. Patenting various
modifications of the invention can prevent a competitor from “designing around” the patent
claims.
In sum, the questions of freedom-to-operate, i.e., identifying roadblocks, and patenting,
i.e., setting roadblocks for competitors, should be at the forefront of any new product
development.
Sterne, Kessler, Goldstein & Fox P.L.L.C. : 1100 New York Avenue, NW, Washington, DC 20005: 202.371.2600: ww.skgf.com
The opinions expressed herein reflect the present thoughts of the author, and should not be attributed to Sterne,
Kessler, Goldstein & Fox P.L.L.C., or any of its former, current, or future clients. The content is for purpose of
discussion and should not be considered legal advice. The author can be reached at psocarra@skgf.com.