More on Gratis Greentech: A Proposal for Expanding the Eco-Patent Commons

IP consultant Nancy Edwards Cronin has an interesting suggestion for the Eco-Patent Commons (see my previous post on this new initiative to share patents having environmental benefits).  In her Strategic Thinking column on Greenbiz.com (which the editors at Blawg Review brought to my attention through this post on Securing Innovation), she recommends expanding the Commons beyond donated patents to include “enabled invention disclosures,” written descriptions of inventions having the same level of detail as patents, inventions which companies wish to practice but do not want to patent because of the expense of the procurement process.  In her article, Cronin explains enabled invention disclosures this way:

Many companies successfully use enabled invention disclosures as part of their intellectual property (IP) strategies. Companies frequently have inventions that they do not wish to patent because the patent process is so expensive, including invention development costs, legal preparation and patent prosecution fees. However, companies also wish to prevent competitors from patenting those same inventions.

By using enabled invention disclosures to publish the invention, companies accomplish both goals: they save the cost of patenting but they also establish a “prior art bar” to obtaining the patent and make it impossible for competitors to claim it the invention as their own. Several Web site forums exist for publishing inventions, including www.ip.com and www.researchdisclosure.com.

Adding these disclosures to the mix, she says, would address what she sees as a critical shortcoming of the Commons, i.e., patented technology is no longer “cutting edge” by the time a patent issues because of the lengthy application process in the U.S. Patent & Trademark Office (PTO).  Of course, this observation has ramifications for all patents, not just those in the Commons repository, and she has a point that much patented technology becomes less relevant over time.  But I’m not sure I buy the premise that issued patents become substantially de-valued during the admittedly long journey through the PTO.  Patents often retain their value throughout the patent term and beyond.  Indeed, many patents are successfully enforced against infringers at the tail end of the patent term. 

Whether or not you agree with her argument about issued patents, her idea of adding invention disclosures to the Commons would almost certainly benefit the initiative and its participants by increasing the value and utility of the available green technology.  Of course, no independent or targeted donations to the Commons would be necessary because enabled invention disclosures are by definition in the public domain and available to everyone.  Instead, to make the technology available to greentech firms, it would just need to be made accessible via the Commons.  Broadly, Cronin’s idea could be implemented in one of three ways.  Either companies who publish environmentally-beneficial technology in these disclosures could provide the publication information or citations to the Commons, the Commons itself could monitor the disclosure publications, or the publications could alert the Commons of relevant published disclosures.  However it’s done, I can’t argue with increasing green idea and technology sharing.

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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.