In a recent article published by Innovation News Network, Donagh Cagney - Policy Director of Ocean Energy Europe - stated that:
“it is clearer than ever that Europe’s future depends on its transition to a 100% renewable energy system. We need to act now to reach that goal, by developing a range of innovative renewable energy sources to complement the already well-established wind and solar sectors. One of those innovations is ocean energy – the next big thing in energy.”
To encourage innovation, particularly in emerging fields, protecting intellectual property (IP) is crucial. IP protection ensures that businesses will be able to commercially exploit their inventions and protect them from exploitation by others, giving them the confidence to invest substantial amounts of money in research and development. IP protection also attracts investors and other types of funding.
Patents are traditionally seen as the most suitable form of IP protection for new technologies, because they can provide comprehensive protection for a new or improved device, and its method of operation. But there are other forms of IP protection which can be used alongside patents, one example of which is registered design protection.
Registered designs protect the appearance of the whole or a part of a product, rather than its method of operation. In a UK design application, up to twelve views of the product from different angles can be filed, and these can be colour images, photographs, CAD views, black and white line drawings, etc. There is no requirement for the design to be aesthetically pleasing, but it must be new and have individual character. Additionally, it is not possible to protect features of a product that are chosen solely for performing a technical function, or necessarily for the product to fit or connect with another product.
Having said this, in the UK the Intellectual Property Office does not carry out a novelty search as part of the examination process, although it will consider whether the design falls foul of the “technical function” or “must fit” restrictions (and any third party can of course apply to invalidate a design registration if they believe it not to be new or not to have individual character). As a result, barring any formality issues – such as a lack of conformity between the different views – in the UK a design can often be registered within a few weeks. Payment of renewal fees every five years will keep the registration in force for up to 25 years, if needed.
In this respect, registered designs have some advantages over patents: they offer intellectual property protection which is quick and relatively inexpensive to obtain; in the UK, multiple designs can be filed in a single application; each design can be accompanied by a short description and, if required, a written disclaimer which allows protection to be claimed for only a part of the design. Additionally, in both the UK and the EU, there is a 12-month grace period in which you can disclose your design and still obtain valid registered design protection. And with some careful planning, the same product can be protected – in different ways – by both a patent and a registered design.
Many innovators in the field of ocean energy – such as Minesto, Orbital Marine Power, Havcraft and Mocean - already have patent portfolios covering their devices. In fact, inventive activity in ocean energy technology has led to 24,000 patent applications being filed over the last twenty years.
Some companies are also taking advantage of registered design protection to protect their wave or tidal energy generators, as shown in the following examples:
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Norway-based Havkraft has a GB design registration for its Powerbarge Catamaran wave power plant, as shown in this perspective view. Here, the device is shown in a black and white line drawing, so that the protection is not limited to any specific colour or material. |
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Korean company Ingine, Inc. has a GB registration (right) for a buoyant object for a wave power generator. Again, line drawings have been used, and this view illustrates the components of the device in a separated state. |
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French company Guinard Energies Nouvelles has protected its tidal turbine with a GB design registration. Again, this simple line drawing provides the broadest possible scope of protection, avoiding colour, texture and unimportant technical detail. |
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Aberdeen-based EC-OG Holdings Ltd (now Verlume) has a GB design registration for a Marine Current & Tidal Energy Conversion Device. In this case, the device is shown in colour, which will form part of the scope of protection of the registered design. |
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Of course, registered designs, like patents, are jurisdictional and can be obtained in most countries in the world, including in the US where they are known as design patents. However, examination and formality requirements may be very different to the UK and Europe.
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This US design patent for a rotor for a wave energy converter was registered by the University of Texas. The views submitted in US design applications typically include shading, as illustrated in the view on the right. Additionally, unlike GB and EU designs, US design applications are examined for novelty and non-obviousness, so may take longer to obtain. |
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This horizontal ocean energy power generation device is protected by a registered design in China, filed by Hangzhou Linhuangding New Energy Research Institute Co., Ltd. In China, there is no general grace period for designs and so care is required to ensure that disclosure in another country does not occur before the Chinese design application is filed. |
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The Indian Institute Of Technology Madras (IIT Madras) has a design registration in India for a floating mechanical wave energy converter. Multiple design applications are not permitted in India, so the application must relate to a single design only. |
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Korean company Ingine, Inc. also has an international design registration for a buoyant object for a wave power generator. International (Hague) designs may be useful in securing design protection simultaneously in multiple countries through one international application. |
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The examples of registered design protection shown above illustrate the wide variety in the design of “blue energy” devices around the world. As innovators continue to develop and test technology capable of extracting clean and reliable energy from different ocean environments, it is encouraging to see companies making use of all forms of available intellectual property protection, including patents and registered designs.
Marks & Clerk have a dedicated Energy & Environment sector group, with experts who can help organisations in renewable energy use their intellectual property to achieve their commercial ambitions.
