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February, 1st, 2021

By Wesley W. Whitmyer, Jr.

Patent litigation can be a powerful tool for improving the environment and protecting the planet.  Read on if this sentence sounds crazy.  Read on if you think patent litigation only fills the coffers of large companies by eliminating competition.

Yes, corporations tend to bring patent litigations seeking near term financial returns to benefit shareholders–often to the detriment of the planet and environment. Yes, patent litigation, as currently understood and implemented, is particularly capitalistic.  Companies sue competitors to prevent them making/selling the same or similar products in order to retain or gain marketshare and profit.

So how can the standard patent litigation script be flipped so that patents can be used to protect the planet?  Most litigation related to protecting the planet and environment is brought by not-for-profit organizations.  The remedy they seek is often focused on health and ethical benefits for all humanity, but especially future generations.  There is often no immediate financial benefit.

But the minimum monetary damages for patent infringement are a reasonable royalty for the infringing sale/use.  And in an appropriate case, a court-ordered stoppage of the infringing activity is available.   So with an appropriate patent claim, infringing conduct that damages the planet can not only be stopped, but it can also be compensated.  This twin damage ability permits self-funded environmental litigation and is ripe for exploitation.

Traditional patent portfolios are built around protecting or attacking corporate profits.  But what if patent portfolios where assembled specifically to protect the environment?  Infringement of such patents could be compensated and the conduct potentially enjoined in federal court.  This type of environmental protection could be self-funding, but requires a completely new way of thinking about how to assemble a patent portfolio.

Most commercial patent portfolios focus claims on apparatus because it is generally easier to prove infringement of a thing than a method which might be used in secret.  Things you can take apart and analyze.  In addition to secret steps, eg performed during manufacture, methods may involve steps by customers or vendors which further complicates infringement proofs.

In an environmental patent portfolio, however, method claims can be very powerful.  The apparatus or equipment may well have good and bad uses in terms of the environment, such that method claims directed to the environmentally harmful uses can be used to discriminate infringers whose uses harm the environment.  The manufacturer of the apparatus which may have good (from an environmental perspective) uses can be left undisturbed, or even licensed to make the claimed product.

Another advantage to using patents in environmental litigation is that there’s no requirement to show harm to the planet.  Infringement is the only necessary proof–with the conduct compensated and stopped.  Note, too, that the patent owner who brings an infringement litigation need not themselves use or commercialize the patents.   Indeed, why would they use the patent and cause the very harm to the planet they are trying to halt?  Environmentally useful patents could be easily assigned to parties willing to pursue the infringement claim.

 

WHIPgroup is leading counsel for U.S. and international companies. We specialize in patent and trademark law. Our attorneys do both prosecution and litigation, providing a unique, wholistic perspective for solving business and legal problems.

© 2021 Whitmyer IP Group, Stamford, Connecticut.

© Copyright 2021 Whitmyer IP Group