IP and the bioeconomy

September 2019

IP and the bioeconomy

The bioeconomy covers economic activity derived from bio-based products and processes, and contributes to sustainable and resource-efficient solutions to such challenges.

The bioeconomy is underpinned by research and innovation. Intellectual property (IP) has a key role to play in enabling innovation and development of technological solutions. For example, the effective protection provided by patents is a key enabling factor in the diffusion of new technology. By temporarily conferring exclusive rights, patents incentivise and allow companies to capture the value of new technologies by developing and scaling them.

Identifying opportunities

A wide range of international organizations and regional development agencies act to promote innovation for the bioeconomy.

The World Intellectual Property Organization (WIPO) provides an online marketplace for sustainable technology [1]. The WIPO GREEN database allows identification of collaborations and funding or licencing opportunities across the world. It also provides licencing checklists for those involved in negotiating technology transfer agreements in this sector.

The Enterprise Europe Network (EEN) helps small and medium-sized enterprises (SMEs) innovate and grow on an international scale thorough partnerships and support programs that may be tailored to industrial biotechnology [2].

Regional networks in the UK promote and develop the bioeconomy. For example, BioVale provide specialised support, information and contacts in the rapidly expanding bioeconomy across Yorkshire and the Humber [3].

Patent Office incentives

Patent Offices around the world have developed incentives to encourage the development of green technology. For instance, early grant of patents can be crucial for SMEs in order to attract investors and secure funding. The UK Intellectual Property Office (UK-IPO) have introduced a Green Channel to fast-track green technologies. This is available in any area of technology that provides an environmental benefit. The Green Channel is straightforward and free, and can result in a UK patent being granted in as little as nine months from the application filling date. Similar incentives to accelerate prosecution of green technologies are available in patent offices around the world including Japan, China, South Korea, Canada and Brazil.

Patentable Inventions in the bioeconomy

The opportunities for developing patentable inventions are vast in the bioeconomy. Like any other sector, a patentable invention must be susceptible of industrial application, be new and involve an inventive step. A patent application must also disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Patent claims in this sector may focus on methods of processing biological material and/or the resulting bio-based products themselves. Product claims are sometimes preferred to method claims, as it can be easier to show infringement. Under European Practice, however, method claims also confer protection to products directly obtained by such processes (Article 64(2) EPC). It may also be possible to claim products defined in terms of a process of manufacture (so-called “product-by-process” claims) if the product cannot be defined in any other way and the product itself is new and inventive.

Under European practice, a product is not rendered novel merely by the fact that it is produced by means of a new process (T 150/82). Under certain circumstances, however, it may still be possible to draft claims to the known product itself. For example, if a new method achieves a higher degree of purity of a compound it may be possible to establish at least novelty for claims directed to the compound itself at this higher purity (T 1085/13). In such a scenario, it may be necessary to provide data to the EPO showing that prior art methods do not inherently lead to this higher degree of purity.

Whether or not a process or product is commercially suitable for patenting may depend on how easy it is to reverse engineer or invent around. It may also depend on whether the process or product is being developed in-house or licenced to other parties. In certain circumstances, trade secrets may be preferred to patents.

For example, explicit non-disclosure and not-compete clauses may be included in employee contracts to try to keep details of a process or product confidential. However, trade secrets may be difficult to enforce, and do not provide any protection against reproduction through inadvertent disclosure or independent discovery.Typically, trade secrets may be used for complex processes that are difficult to reverse engineer and/or prove infringement. Patents may be more effective when the innovative product is a physical good. In practice, innovative companies often use both patents and trade secrets to protect their innovations. The intellectual assets of a company can therefore often be seen as an iceberg, where patents are the visible part with trade secrets submerged underwater.

Case studies

To help illustrate the range of inventions arising in the UK bioeconomy, a few example patent applications are highlighted below:

* Improvements in and relating to plant protection (EP2066176). Lancaster University’s research into plant-herbivore interactions led to the development of seed treatments that enable crops to respond more rapidly when attacked by insects. This seed coating technology is licenced to BASF for the more sustainable production of a range of major crops around the world.

* Bioresins (EP2500378). Biome Bioplastics Limited are developing naturally-based biodegradable and compostable plastics that challenge the dominance of oil-based polymers.

* Biomass Processing Method (EP3129346). Plaxica (now acquired by Sappi Biotech UK Ltd) have developed processes that enable the use of sustainable plant biomass in the production of lactic acid and other high-value materials which can be used to make biopolymers.

* Methods of dyeing fabric using microorganisms (EP3280811). Colorifix Limited are developing a natural biological process to help the textile industry dramatically reduce its environmental impact.

How can we help?

We are based in Yorkshire and the North East of England, which enjoy world-leading bioeconomy assets including applied research excellence, translational expertise and industrial capability.

Our attorneys have a special interest in the bioeconomy, with a wide-range of expertise including drafting and prosecution of patents relating to extracting high-value compounds from waste, advanced fuels from microbes and CRISPR improved crops.

We can help characterise new potential inventions in the bioeconomy and determine how best to protect them. We can advise on suitable patent filing strategies to help create and extract maximum value in the UK and around the world. We can also provide freedom to operate (FTO) opinions in connection with products or processes already under commercial development.

If you would like any further information, please contact Huw Jenkins (hjenkins@secerna.co.uk) or Charlotte Watkins (cwatkins@secerna.co.uk).

1. https://www3.wipo.int/wipogreen/en

2. https://een.ec.europa.eu/

3. https://www.biovale.org/

4. https://www.gov.uk/guidance/patents-accelerated-processing#green-channel

Back to articles

Discover more

We have a reputation for excellence, deep sector experience and a passion for meeting the business goals of our clients.

Contact us today to discuss how we can help your organisation.

')