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SKGF_Advisory_Two Questions Every Wind Energy Company Should Ask Itself_2009
SKGF_Advisory_Two Questions Every Wind Energy Company Should Ask Itself_2009
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SKGF_Advisory_Two Questions Every Wind Energy Company Should Ask Itself_2009

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  • 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. Sterne, Kessler, Goldstein & Fox P.L.L.C. : 1100 New York Avenue, NW, Washington, DC 20005: 202.371.2600: ww.skgf.com
  • 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.

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