Intellectual Property (IP) and sustainability in the chemical industry: best practices for maximizing value and reducing risk
By: Zayd Alathari | Partner, Head of Intellectual Property – MENA, Norton Rose Fulbright
The oil, gas, chemical and petrochemical industries are under considerable pressure from both governments and interest groups to implement major reforms and restructure their existing assets, resources and manufacturing. The impetus behind this mandate is to meet global environmental demands, ambitions, and goals for reducing carbon emissions and to create a more sustainable economy based on the principles of circularity. Technology will play a critical role in realizing sustainable solutions to the existing infrastructure inefficiencies.
Some degree of positive change can be achieved in the near-term by deploying existing, proven and scaled up technology, with some customization. However, it will be imperative to develop new, disruptive solutions, to achieve long-lasting sustainability success.
Regardless of the innovation path, each will require a sizeable investment of time, resources, and money to customize, develop, and deploy. The cost is not just in the technology, but also more importantly, in the operations and eventual market and environment impact. The innovators and leaders will reap the rewards and recognition but also carry the risks and burdens. To protect and maximize the benefits and value, and to reduce and mitigate the risks, sound intellectual property (IP) protections are a must.
The purpose of this article is to offer IP strategies to guide manufacturing companies that are looking to revamp their existing assets to meet demanding regional and global regulatory and global efforts to create a more sustainable environment. The methodology can be applied and conducted internally by the technology and IP/legal teams, or it can be outsourced depending on existing resources.
Having the right policies, procedures, workflows, and methodologies in place can help to optimize data and IP/Technology protection and management, and also to determine the best way to invest, implement, and commercialize technology and innovation in alignment with the company’s vision, business activity, structure, and technology and IP needs. This approach will also help to make the best use of limited technology resources and personnel as well as existing assets and capabilities. It may require buying or licensing-in third party technology and obtaining external technical support, or it may involve developing your own technology and utilizing internal support. Often, it is a complex combination of all options.
As a first step, it is essential that your company identifies and maps out its existing infrastructure, systems, legal framework and existing agreements, and then recognizes, documents, and grasps the restrictions and obligations. This will help the organization identify what can and cannot be done with respect to technological approaches to sustainability issues. This task may be complex because your infrastructure may include joint venture partners, technology licensors, technology services providers, joint technology partnerships, etc., with agreements that carry a wide variety of benefits but also restrictions and obligations. In the end, though, the effort will have been worth it.
For example, a single technology in-license agreement can include confidentiality, trade secret, and patent obligations that will restrict what can and cannot be done in relation to the use of the licensed technology, including whether you are permitted to improve or optimize the technology (and if you do, who will own the improvements), as well as whether, and under what circumstances, you are permitted to disclose the technology with others. Violation of these obligations can lead to financial damages and injunctive relief, both of which will create detrimental impediments to your business.
Once the above analysis is completed, employees should be trained and made aware of these obligations for compliance purposes. In addition, this analysis can enable your company to develop a “roadmap” that will show your employees how they should go about developing, and implementing technology and solutions while remaining in compliance with those obligations. In order to free up additional space for innovative activity, you may also consider negotiating better terms with your company’s partners. The roadmap should also make clear what rights your company holds in relation to its partners or the marketplace as a whole, which can then be leveraged to maximize your company’s competitive advantage.
The organization should also map out and comprehend its own technology, whether implemented or in development, and understand the advantages, rights and freedoms, for maximizing its business impact internally as well externally with others. This can be part of a broader technology review, as discussed in the following section. In a system in which your company uses both externally-sourced and internal-developed technology in a single technology space, it is critical to set up a partition between the two in order to avoid contamination of internal technology with elements from the external technology, which can create a host of difficulties.
Protect Internally Developed Innovation
Once the assets and current obligations are mapped and understood, then a review needs to take place to identify any company innovation that supports past, current, and future business objectives. This innovation may be developed through new combinations of existing technologies, improvements on those technologies, and know-how developed in the course of your employees’ day-to-day work. After this review is completed the company should develop IP strategies to protect the various innovations identified, and to evaluate existing IP for alignment with the company’s business objectives. This review process can also result in cost savings when existing IP is identified that is not needed and can safely be abandoned.
In addition, an IP system needs to be set in place, ideally for each business unit, for an innovation and IP review for the company’s ongoing work. This review should include business, technology, and IP personnel. The group needs to review each innovation, determine its fit with the company’s business objectives and priority in relation to other innovations, and then decide whether, and if so how, to protect them. The review team should consider patents as well as confidentiality and trade secrets coverage. Additional workflows will be needed for trademarks and copyrights, as well as disclosure, publication, and presentation clearance. As a rule of thumb, everything should be treated as confidential unless patented or cleared for disclosure.
Review of the innovation needs to align with the strategy of the company, business, and technology units. Each innovative idea or improvement should be captured in an invention disclosure form and channeled through the IP system so that appropriate protection can be sought. For mature IP portfolios, an analysis should be performed to identify what IP should be maintained and what IP can safely be abandoned. Proper management of IP assets requires considerable resources and budgets, and there needs to be vigilance in balancing the costs and value of the IP. These systems need to be consistent and adhered to throughout the organization. In addition, routine invention capture campaigns and researcher training is a must.
Besides managing the patent portfolio, the company can also carry out competitive patent alerts and patent oppositions, and to continuously monitor third party publications, patents and activities for enforcement and commercialization opportunities.
Internally and independently developed technology can be extremely beneficial and valuable to the business as it can be implemented internally or licensed-out (or even cross-licensed), or it can be leveraged and commercialized directly in the marketplace.
A proper data classification and protection infrastructure with an up-to-date digitalization plan and information technology (IT) system is needed for data storage, processing, sharing and use, and cybersecurity. Proper IP policies, procedures, workflows, tools and templates, and a comprehensive training plan is essential as well. These systems need to be transformative and agile to adjust to changing business priorities.
Not having the right systems in place and not knowing the rights associated with technology, or not protecting technology in the right way, will cost the organization money and business opportunities. It can also result in reputational harm to the organization.
Beware of Third-Party IP Rights and Conduct Clearance Searches
In general, no technological innovation stands alone. It is built on a complex web of pre-existing technologies that are often intertwined with each other, and which are protected by a similarly complex web of IP rights. Therefore, in addition to the reviews previously mentioned, it is also crucial to consider external 3rd party IP rights that can have the potential to create obstacles and impediments to commercialization plans.
Before committing significant resources towards commercialization, it is essential to conduct the proper clearance, landscaping, and due diligence towards freedom-to-operate to know what blocking patents exist to avoid any third-party technology or IP rights obstacles, encumbrances, or challenges.
This analysis entails identifying your likely commercial embodiments, conducting patent searches on global databases, reviewing the patent claim coverage in strategically interesting jurisdictions, and clearing any infringement, patent validity or design around issues, or even possibly considering licensing opportunities.
If you do consider licensing or even acquiring third party technology, a due diligence exercise should be conducted to ensure ownership and chain of title are clear and appropriate.
Not doing any of the above could result in significant financial, reputational, and image damages or injunction/stoppage of commercial and business activity.
Collaborate with the Right Partners
Depending on the availability and skill sets of your internal resources, your organization may need to collaborate with other players in the market in technology development. In fact, it may be more cost-effective to collaborate in order to co-develop technical solutions that are of commercial interest, rather than make the long-term commitment to hire the necessary internal resources. Those collaborators may have specific expertise or resources, can be suppliers or customers, or sometimes may be even competitors where it is necessary and there are aligning synergies.
It is important for both sides to conduct due diligence in order to evaluate freedom-to-operate and potential business and technical conflicts, as well as consider competition issues and avoid any contamination issues with respect to partner technology.
These collaborations bring benefits but they can also bring risks. It is important to clearly align and agree on what each party wants from the overall collaboration and to set current and future expectations and ensure a cooperative relation that brings business success to all.
Companies continue to compete under new global environmental pressures, rules, regulations, and social mindsets. Having the right innovation and IP protection strategy in place can help evaluate, invest in, and implement new and existing technologies, innovation and digitalization to meet global demand but also to improve performance and value, while maintaining a culture of integrity, honesty, and transparency to protect your organization, personnel, and business.