Intellectual Property in the Energy Sector
Challenges and Opportunities for an Industry in Transition
This Special Report looks at the challenges and opportunities that intellectual property issues present for different areas of this broad and rapidly changing sector, including upstream, downstream, renewables, digitalisation, Standard Essential Patents and brand and reputation.
This Special Report looks at the challenges and opportunities that intellectual property issues present for different areas of this broad and rapidly changing sector, including:
Upstream: exploration and production of hydrocarbons across the full lifecycle of oil and gas fields.
Downstream: oil and gas processing technology and resulting differentiated fuel and lubricant products.
Renewables: a look at the role of IP in supporting renewables businesses, with a spotlight on a solar start-up.
Digitalisation: the transformational impact of artificial intelligence and machine learning on the sector as a whole and how IP rights underpin this.
Standard Essential Patents: how patents on wireless interoperability, at one time solely the domain of the telecoms industry, are increasingly applicable in the energy sector, and the licensing challenges this raises.
Brand and reputation: how energy businesses seek to protect and exploit their brands and reputations as well as their technology, in order to differentiate themselves in an intensely competitive market.
This report is essential reading for legal advisers and anyone in a commercial role dealing with the energy sector who is seeking a deeper understanding of the vital role intellectual property plays in shaping and achieving business objectives.
Table of Contents
|Table of Contents||3|
|I. Energy joint ventures: upstream||11|
|1.1 Data acquisition||12|
|1.2 Data processing and interpretation||14|
|3. End of field life||22|
|4. Intellectual property management||22|
|II. A downstream perspective||25|
|1. Process technology||25|
|1.1 How can process technology be protected?||26|
|1.2 What protection is offered by process patents?||26|
|1.3 In which circumstances will competitor activity be outside the scope of protection of your process patent?||27|
|1.4 How do you ensure that the claims of your process patent provide commercially useful protection?||30|
|1.5 Will you be able to prove infringement of your process patent?||32|
|1.6 What is the value of your process patents?||32|
|2. Differentiated products||35|
|2.1 How should I protect products resulting from collaborative development?||35|
|2.2 How do I protect innovative products resulting from open innovation?||36|
|2.3 What are the IP challenges when considering freedom to operate for a large portfolio of differentiated products?||38|
|III. Renewables: solar – spotlight on BNRG||43|
|2.1 The technology||44|
|3. Project development and asset management||49|
|3.1 Site selection and design optimisation||49|
|3.2 EPC and partnering||51|
|4. Reputation and brand management||52|
|1. Digitalisation and artificial intelligence are rapidly changing the energy industry||55|
|2. Potential intellectual property issues facing AI and digital innovations||57|
|2.1 Patent eligibility||57|
|2.2 Patent inventorship||59|
|2.3 Trade secret protection||60|
|3. Patents: common issues and strategies||62|
|3.1 Strategies for overcoming patent-eligibility challenges||62|
|3.2 Strategies for avoiding inventorship issues||66|
|4. Trade secrets: strategies for navigating common pitfalls||67|
|V. Standard essential patents: licensing challenges for energy companies||75|
|1. Standards in the energy industry||76|
|1.1 Smart meters||76|
|1.2 Autonomous driving||77|
|1.3 Electric vehicle charging||77|
|2. What is the standards-setting process?||77|
|3. What SEP issues arise in the standards-setting process?||79|
|4. What does FRAND (fair, reasonable and non-discriminatory) mean?||80|
|5. Why are these telecoms issues relevant to the energy industry?||83|
|5.1 Example: a ‘smart’ water flow meter||84|
|6. What can be done?||86|
|VI. Brand protection||89|
|1. Introduction: the value of brands in the energy sector||89|
|2. How the energy sector protects its brands||90|
|2.1 Trademarks (registered)||90|
|2.2 Trademarks (unregistered)||97|
|2.3 Designs (registered and unregistered)||99|
|3. Enforcement issues: jurisdiction, remedies and online enforcement||101|
|3.3 Online enforcement issues||103|
|4. Advertising disputes||106|
|About the authors||108|
|About Globe Law and Business||112|
Charles T Collins-Chase
Partner, Finnegan LLP
Charles T Collins-Chase focuses on district court patent litigation and appeals before the US Court of Appeals for the Federal Circuit, where he served as a clerk. He uses his chemical engineering background to help clients protect innovations across the energy sector. In addition to his work in traditional oil and gas, Charles has also handled numerous matters involving renewable diesel fuel, solar installations, pollution control systems and bio-based polymers. Charles has extensive experience at the Federal Circuit, where he has argued cases and assisted clients in dozens of appeals from district courts and the Patent Trial and Appeal Board (PTAB). He has particular experience in appeals involving patent eligibility under 35 USC §101 and he was a member of the team representing the petitioners in Bilski v Kappos before the US Supreme Court.
Senior associate, Bristows LLP
Sean Ibbetson is a senior associate in the brands, designs and copyright team at Bristows. He specialises in soft IP disputes and his recent litigation experience includes acting for: Vectura in passing off proceedings brought by GlaxoSmithKline; Fidelis in trademark infringement proceedings brought by Fidelity; Blizzard in liability proceedings and a subsequent account of profits for the sale of unauthorised ‘cheats’ and ‘bots’ for Blizzard’s online games; luxury brands in disputes relating to the manufacture and sale of infringing items of jewellery; and Thomas Pink in High Court trademark infringement proceedings against Victoria’s Secret.
Sean also advises brands and publishers on compliance with advertising regulations, disputes with competitors and investigations by the UK’s advertising regulator, the Advertising Standards Authority.
Kathryn R Judson
Associate, Finnegan LLP
Kathryn R Judson is an associate in Finnegan Henderson’s Atlanta, GA office, with experience in design patents, trademarks and patent litigation. Kathryn has an environmental science degree, as well as a law degree, and she has previous experience working on energyrelated projects during her undergraduate studies.
Kathryn’s work experience focuses primarily on pharmaceutical products, but she also has experience in renewable energy technologies.
Head of legal, BNRG Renewables Ltd
Eoin Langford is head of legal at the Irish solar development company, BNRG Renewables Ltd
Eoin holds a degree in law and a masters in European Integration and has specialised in Energy and Renewables projects and regulatory matters for nearly 20 years while based primarily in Dublin. He has held senior in-house legal roles in companies such as EirGrid, OpenHydro and BNRG advising on a variety of legal topics, with a particular focus on project development, EPC contracting and project financing.
Partner, Keystone Law
Jon Moorhouse is an intellectual property and commercial law partner at Keystone Law. He has over 20 years’ international experience advising businesses of all sizes on a wide range of IP and commercial contractual matters, helping his clients to protect and commercialise their technology and to support this via IP strategies and IP governance and compliance programmes.
Jon has spent many years in-house with global corporations and has a keen focus on the energy sector having advised Shell for over 10 years as one of their senior lawyers, providing legal support to a range of projects, from large joint ventures to advising on spin-outs and investments in third-party ‘new energies’ start-ups and scale-ups via its strategic venture capital arm, Shell Ventures.
Partner, Finnegan Europe LLP
Maeve O’Flynn is a European and UK patent attorney and is a partner at Finnegan Europe LLP. Maeve has more than a decade of in-house experience, having worked at some of the world’s largest multinational corporations in the oil and chemical industries. She has worked for a range of clients, from start-ups to multinationals, covering diverse technologies such as cosmetics, sustainable chemistry and catalysis. Maeve has helped clients develop commercially relevant intellectual property strategies. This includes: developing and managing global patent portfolios; provisioning advice regarding trade secrets and defensive publications; and negotiating collaboration and licensing agreements.
Maeve has extensive experience preparing and prosecuting patent applications, from the initial invention harvesting sessions through to achieving allowance. She works with clients to assess and value their patent portfolios, and to develop filing strategies that support their commercial aims. She also represents clients at oral proceedings before the European Patent Office, representing both patentee and opponent.
Consultant solicitor, Keystone Law
Robert Pocknell is a consultant solicitor with Keystone Law and has specialised in intellectual property matters for more than 30 years. Robert has advised multinationals and SMEs on IP strategies and has worked both in-house and in private practice.
Robert was the founding chairman of the Fair Standards Alliance, a Brussels-based organisation advocating for fairer and more reasonable licensing practices for standard essential patents. The alliance is the leading industry voice for standard essential patents, and has grown to more than 50 members, across, up and down the telecoms and IoT supply chains.
Robert has been listed as a Top 300 World IP Strategist by IAM Media for several years.
Associate, Finnegan LLP
Paul Townsend is an associate in Finnegan Henderson’s Washington DC office, with experience in both patent prosecution and litigation. Paul has a chemical engineering degree, as well as a law degree, and he has previous engineering experience in the energy industry. Paul’s work experience extends across a broad range of subjects, including energy-related technologies, polymers, coatings, catalysts, speciality chemicals and pharmaceutical products, with a particular interest in technologies relating to the energy industries.