Patenting catalyst technology: activating change and overcoming challenges

AuthorJennifer H. Roscetti - Jessica M. Lebeis
PositionFinnegan, Henderson, Farabow, Garrett & Dunner, LLP, USA

Energy companies, in particular, have recognized the importance of advanced, high-performance catalysts. Strategic alliances between these companies and those that produce catalyst technology are on the rise. Such partnerships can help energy companies achieve greater efficiency in energy and raw-material usage, satisfy environmental standards and develop cost-effective technologies to produce clean and renewable fuels such as the conversion of biomass into biofuels.

Against this backdrop, it comes as no surprise that patenting activity in the field is on the rise. Patenting of fluid catalytic cracking (FCC) technology – one of the most important processes for converting crude oil into high-octane gasoline and fuel oils – rose significantly between 2000 and 2012. A 2013 study by Mitchell, Michels and Perez-Ramirez in the Chemical Society Reviews revealed that fewer than 10 patents featuring a new or improved preparation of an FCC catalyst were reported in 2000, rising to more than 80 in 2012. Similarly, according to a recent paper in the Renewable and Sustainable Energy Reviews by Faba, Díaz and Ordóñez, patenting of catalytic methods in the area of biofuels is also on the rise.

But as the patent landscape for catalyst technologies grows more crowded and becomes more complex, companies may find it more difficult to obtain patent protection for their innovations. They may also find existing patents ripe for attack by competitors.

Opportunities and challenges under US law

In the United States, recent changes to patent law may offer an attractive way of resolving such disputes. The America Invents Act (AIA) of 2011 introduced a new inter partes review procedure, overseen by the Patent Trial and Appeal Board (PTAB), to address challenges to the patentability of one or more claims in a US patent.

The procedure offers a quicker and cheaper alternative to district court proceedings, and the PTAB, from a statistical viewpoint, appears to provide a favorable forum for patent challengers. As of August 2015, statistics from the United States Patent and Trademark Office show that in 68 percent of all the final written decisions issued, the PTAB had found all instituted claims not patentable. These data suggest that the inter partes review process is an effective mechanism for eliminating competing patents.

Activating an inter partes review challenge, however, requires a strategic focus and a targeted approach. A challenger needs to understand a...

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