Many of the things that I see, particularly in the mechanical space, are really just building off of, previous technologies. And that's kind of actually the point of the patent system is that you get a patent, you get a monopoly for, 20 years and in exchange you disclose what you've done and dedicate that to the public after the 20 year term. And then folks are free to build on that. Good morning, good afternoon, or good evening, wherever you are in the world. Welcome to episode 216 of the Climate Confident Podcast, the go-to show for best practices in climate emission reductions and removals. I'm your host, Tom Raftery, and if you haven't already, be sure to follow the podcast in your podcast app of choice, so you never miss an episode. Before we get going, a huge thank you to this podcast's, incredible supporters. Your backing keeps this podcast going and I truly appreciate each and every one of you. If you'd like to join our community, You can support the podcast for as little as three euros or dollars a month, which is less than the cost of a cup of coffee. And all you need to do is click the support link in the show notes or visit tiny url.com/climate pod. Now, today's episode is a little bit different and very timely. You know how we keep saying we need to scale up climate tech fast? Well, it turns out there was a little known shortcut for clean tech inventors to speed through the notoriously slow patent system. It was free. It worked, and then it vanished. Today's guest, Ryan, is one of the few people who actually helped companies use that system, getting patents granted in months instead of years. He's here to explain what happened, what inventors can do now, and why patents matter more than ever in the climate fight. And just so you know, in the coming weeks I'll be speaking with alice Chun, CEO of Solight, Alexi Beloff, co-founder of United Fuel Technologies, and Avi Greenstein, CEO of Bamboozle. But back to today's show, and as I said, my special guest today is Ryan. Ryan, welcome to the podcast. I should actually say welcome back to the podcast, but listeners to the podcast won't be aware of that. We'll get into that in a sec. So we'll stick with, welcome to the podcast. Would you like to introduce yourself? Thanks Tom for having me back and, and nice to have, meet everyone, virtually. My name is Ryan Schermerhorn. I am a partner at the intellectual property law firm of Marshall, Gerstein and Borun based in Chicago, Illinois. I primarily practice patent prosecution, which means that I help companies, startups, individuals, universities, obtain patent protection for technologies in the mechanical and industrial technology space. That includes a number of, green tech, climate tech related inventions. And I practice both in, in the United States and help clients obtain patents around the world in Europe Japan, China, Korea, you name it. Okay. And in that space, what has been the most surprising patent or innovation that you've come across? Oh, that's a, that's a really good question. I didn't fully appreciate until I started, back in 2010 and I think a number of folks, don't appreciate if they're not in the patent world is that, a lot of the patents are for fairly incremental improvements. And so I think we tend to think of things in terms of groundbreaking inventions internet being a good example. AI I guess now, which is, you know, sweeping the world, but many of the things that I see, particularly in the mechanical space, are really just building off of, previous technologies. And that's kind of actually the point of the patent system is that you get a patent, you get a monopoly for, 20 years and in exchange you disclose what you've done and dedicate that to the public after the 20 year term. And then folks are free to build on that. Okay, this is the first time, Ryan, that we've had an episode with someone from the legal profession on, and, and anyone from the IP space as well, so just for people who might not be aware, myself included. What's the process of getting a patent? Let's say I come up with an idea for, to use that old cliche, a better mouse trap. How do I go about getting a patent for that, and how do I ensure that my idea for that better mouse trap is unique? Hasn't been thought of by anyone else before. Yeah, that's a good question. So, one thing that we often do for folks particularly that are new to the patent system, is we recommend that they conduct a patentability search. And by that I mean either we do it or we, outsource it to someone who will review existing patents, patent applications, other publications, whether that's academic articles, research journals. And we look to see whether your mousetrap has been patented or, discussed in one of these publications before. And the easy analysis is whether it's truly new or not. And the, the more difficult analysis is whether it's obvious or not. And without going too far into the weeds basically we, we look at, if you've got parts of your mousetrap in one document and other parts of the mousetrap are in another document, would somebody who is what we call a skill in the art, basically, someone who practices in that industry. Would they have thought to put those together to make your mousetrap? That's something we, we can do for fairly, you know, it's, it's fairly cost effective and it really can inform you whether you are wasting your money and your time or, or not. And if that search goes well then, you know, we would embark on the actual patenting process with you. And basically what that entails is we sit down with you and, try to understand what the mousetrap is, why it's better, how it works, what are existing mousetraps that are out there, that you're aware of, mousetraps maybe we found in this patentability search? And try and craft this story about why your mousetrap is deserving of a patent. And then from there we will file that story, that patent application. You can file it in the US you can file it around the world. There are different timing restrictions that we could certainly get into. But that's kind of the, process in a, in a nutshell I should add, you don't have to do a search. You don't have to do a patentability search. Some folks, you know, that are very well versed in the industry, are aware of what's out there already. We have folks that come to us confidently and say, I've, I've never seen this. I've been in the industry for 30 years. I'm confident this is new. It doesn't mean I'm gonna get a patent on it, but I don't need to spend the, couple thousand dollars to do this, this search. So important caveat there. And what determines whether you are awarded the patent or not? Yeah. So it, it really comes down to a couple different criteria. The, the first being whether something is, new. So what is your mousetrap new and even if, if your mousetrap is the same as an existing mousetrap, but for the fact, let's say your mousetrap is green since I'm wearing green today. But the existing mousetraps are yellow. Well, your, your green mousetrap is new. It's not been, made in, in the exact form. But the next hurdle then would be the obviousness question that, is really kind of the most difficult question. Would it have been obvious to, change that yellow mousetrap to a green mousetrap? Is there some reason why this color is significant, why it hasn't been done before? Those are the types of questions we're thinking about. Chances are you're probably not gonna get a patent on the green mousetrap because of the yellow mousetrap. Another piece that is maybe not so relevant to this group, but is relevant to more of the financial world. The patents have to contain eligible subject matter. And the, the United States Supreme Court and Congress have, and other jurisdictions around the world have set forth certain, you know, restrictions on what is and what is not eligible subject matter. So in some countries, for example, you can't get patents on methods of treatment, on methods, you know, diagnostic methods. Certain pharmaceutical drugs. In the US it's more limited to you can't get patents on certain methods of kind of transacting business. So, you know, checking someone's credit using a computer as opposed to by hand. So, without boring the audience too much, those are the three main criteria that the patent offices will look at to determine whether you should get a patent or not. And kind of what goes into that. Basically, we file this patent application and there's a section called the claims, and it's written in legalese. If you ever need a way to help you go to sleep, this is a perfect thing to, to read. But basically it defines the scope of your rights. And so if you get a patent that's gonna spell out what your rights are. And oftentimes when we start the process, we will have very broad claims. We, you know, we're trying to get not only what you've invented, but broader technologies. And oftentimes the patent office will come back to us and say, no, no, no, no, that's too broad. We found patents and patent applications that are are close. So we need you to change the claims. We need you to be more specific, more narrow. We think of it kind of like a negotiation with a, like a car, a car negotiation, right? Where, okay, well what if I change this to this? And anyway so that's the kind of process we go through, with the patent offices to hopefully get you a patent. Okay. And how many hours or days from the time you put in the application does it take for you to get back the patent? Yeah, that's a great question. It varies wildly by technical area and by jurisdiction. So in the United States, actually the, the US Patent Office has a large backlog at the moment. it's kind of ebbed and flowed over the years. But the backlog, I believe, is around eight or 900,000 applications at the moment. And what that means is typically you can expect to wait two to four years from when you file your patent application until when it's first picked up, and examined by someone at the patent office. Now other countries have shorter or longer backlogs actually, you know, India has a long, really long backlog for many years, Brazil did, although they've, they've made some strides in the last few years. And it also varies by technology. So, the software space with AI that tends to be a larger backlog.'cause that's where a lot of the innovation is right now but on, you know, the mechanical side and the industrial technology area. You might be looking at a little less. So maybe, maybe a year to two years. But regardless, it's still, it's a long time. Okay. And I mentioned at the start, Ryan, that that you were coming back on the podcast Now we recorded an episode of this podcast last year and we were talking about the US PTOs Climate Change Mitigation Pilot program. And we had a great discussion about that, all the reasons why it was so important, particularly for people in the climate space. Then what happened? Yeah, you know, I think we talked in the fall, right? And at that time, I'll just give folks a quick primer on what that program was. It was a program that expedited the examination of patent applications for technologies that basically addressed climate change in some way. And so whether that's reducing emissions, monitoring emissions, tracking emissions, preventing emissions. It, it was actually a fairly broad program. So a number of technologies qualify. Well, you, you received expedited examination, which at no charge, which is, savings of anywhere from two to $4,000 over what expedited examination normally costs. And we, you know, we were able to get patents within five, six months on qualifying technologies. Now, at the time when we discussed I think we did talk about what could happen, before this would air and, and, of course, president Trump was, was elected in November and took office in January. Just a few weeks later, the US Patent and Trademark Office indefinitely suspended the program. And actually it really kind of happened without much fanfare. I did not realise it for about a week I. And many of the blogs I subscribe to that discuss patent related matters, follow the, the US Patent Office. They did not pick up on this. The website actually just says, it says everything that it did before January, but it just says suspended at the top. It almost looks kind of middle school esque. But in any case, the program was apparently suspended in response to the president's executive orders to end funding for activities that address climate change. Okay. that's, where we're at at the moment. And what does that suspension mean in practical terms for clean tech startups and inventors? Are they kind of back in the slow lane again? Yeah. basically any, applications that had been filed prior to this end date, which I think was January 27th or, or 28th. I'm not sure anybody completely knows exactly what date it was. But any applications that were part of the program before that date are still part of the program and still received the accelerated examination. Anything that's filed after is no longer eligible for the program. And so, yes, climate related innovation can no longer use this program. That said, there are a number of other options that folks can still use to expedite their applications. It does not seem as though, at, at least maybe anecdotally, that it has had much of an effect on cleantech innovation yet on, on a larger scale, but we will see. Okay. And, how unique was this program globally? Are there similar fast track patent pathways for climate tech in other countries? Yeah. So, there are believe about 10 other countries that offer a similar program. And actually six of the top 11 jurisdictions by patent grants as of 2022, have some sort of accelerated examination program for clean technology. Now in particular, the patent offices in Australia, Brazil, Canada, China, Japan, and South Korea have a program. And so, that is a group that represents large you know, a large block of the worldwide market, and so those, those options are are very much available. Okay. do policy shifts like this in the US ripple outward to the rest of the world, do you think? Should international innovators be concerned or just kind of shrug? Yeah, that's, that's a million dollar question, I suppose. I think the uncertainty with tariffs is a it makes that question difficult to answer. But, I do not believe that the, the PTOs, the US PTOs suspension of this program or the administration's general turn away from climate change, what, what the president calls the Green New Deal, the turn away from that does not seem to necessarily affect other countries. And you know, I, I, I believe that there's still strong pushes in many of those other countries, to continue supporting clean tech. That could change, of course, as elections happen over the next few years in those countries. And, and I don't know whether, those countries will swing wildly, you know, one direction or the other. I haven't seen any changes yet, but, but I think it's, least in the US it's hard for me to, say whether that will, or will not happen. What are some alternative routes for clean tech founders in the US now that this particular path has closed? Are there state level or international options? Yeah. So there, there are a few options for Cleantech innovators to consider. I guess first of all I should say, you, you of course do not have to expedite the examination of your applications, but then you're looking at waiting for potentially two to four years. And at a time when perhaps you're trying to raise funding, garner support, build your company, scale it, expediting can be important there. But there are a few options. So one, you can just pay for accelerated examination. It is 2 to $4,000 approximately, depending on the size of the company. So smaller, companies, can, pay for it for $2,000. Larger companies, it's, it's more like 4,000. And the program works the same way as the climate change program did otherwise with the exception of the fee. The second route, which is much more cost effective, is you can actually obtain a patent in another country, and you could use one of those countries that I mentioned, Australia, Brazil, Canada, China, Japan, south Korea and leverage their accelerated examination programs for clean technology and actually use a program that is adopted by most of the major patent offices around the world. I'm gonna throw out another, another long bureaucratic name here, acronym. It's called the Patent Prosecution Highway, or PPH for short. It is something that I believe there's about 30 or 40 patent offices around the world. Basically came together, formed an agreement to improve patent equality and reduce the workload by allowing a patent application that was granted or allowed in another country to basically form the basis for an allowance in the US or another participating country. I hope what I just said made sense 'cause that was a lot there. So for example, let's say you developed a new mousetrap that somehow, It's solar powered. Solar powered. There you go. Thank you. I was gonna say maybe the mousetrap reduced carbon emissions you know, carbon capture or something. The solar powered mousetrap. You obtain a patent in Australia using Australia's accelerated examination program for clean tech. You could actually then take, those claims from that patent and file them in the United States using this PPH program. It's a free program and as long as you're comfortable with basically identical patents in the US and Australia, you can leverage what you did in Australia to hopefully get a patent in the US that is exactly the same. And so what you have to do is you submit everything that you submitted in Australia that was considered in Australia, to the US patent office, and they will consider it. And in many cases, they will actually just follow what the Australian patent office did. Not always, but so that's a way you can leverage, you can use a free program, leverage that program using another free program. And then ideally you, you end up with two or more patents in, you know, Australia and the US or, or other countries. Okay. What would it take to revive something like this program and do you think we'll see that happen in the future? Yeah. You know, so this program, the, Climate change program that was created by the Biden administration was actually a follow up or follow on to a program that was initially debuted during the Obama administration. I can't remember the, the name or the acronym for that program, but 2010, 2011, that program was created and it lasted for several years. So I expect that a future Democratic administration would revive this program or consider reviving this program. I think it's highly unlikely that the Trump administration would resuscitate this program regardless of the executive orders ending funding for climate change. I suppose it's conceivable that a future Republican administration could, that one that is perhaps more favorable to addressing climate change. But I do think that you're very likely to see a future democratic administration reinitiate a similar program. Okay, good. Taking a step back, how do you think we could or should balance IP protection with the urgent need to scale climate solutions far and wide? And can these goals coexist? Yeah. That's a really good question, and, and it's something we deal with all the time. Certainly innovators deal with all the time. There is a natural rush to discuss innovation with with folks, with potential partners. There's a natural excitement that people have when they innovate. It's, you know, a lot of times it becomes their baby. I, I would just stress that the importance of trying to protect yourself as much as possible at, as early of a, state as you can. And there's a couple ways you can do that, that are fairly cost effective. Recognising that many times, you know, innovators when they're just starting out don't have the resources to spend a lot of money on patent protection. You know, one, I would just recommend that folks rely on non-disclosure agreements, confidentiality agreements. When you're talking with partners, make sure there's a, confidentiality agreement or a non-disclosure agreement in place. There's a lot of templates for those agreements that are out there available free. You know, most attorneys have them and you can obtain those fairly inexpensively, but at, at a baseline that protects you. If someone were to take your concept and, and then go file a patent application themselves, which does happen. The second option, which is, better and, and is not necessarily an alternative to number one, is you know, at least in the United States, you can file what's called the provisional application, which is basically just a patent application that can serve as a flag planting, and in some cases I have filed something as simple as a one page picture, of the new concept of the new mousetrap, maybe with a few paragraphs describing the mousetrap. And you actually then have a year from that point to go ahead and file subsequent patent applications that would turn into patents. And so those are two routes that people should be mindful of. You know, the second route is also not very expensive, and can really end up saving you if, this concept that you share with others ends up being commercially valuable down the road. What about in general, is the patent system, as it stands today, still fit for purpose in the race against climate change? Yeah. You know, I think that this is perhaps my own personal opinion on, on some level I think that the only way we are going to truly I, I don't wanna say solve this problem because I don't, I don't know if it's completely solvable, but address the consequences that we've already seen and, and reduce those, going forward, I think the only way to do that is through innovation. And I think, carbon capture, for example, I think is a, an area that is primed for innovation. And we've already seen a number of situations of companies that have developed novel processes for capturing carbon and, either burying it underground or injecting it into cement. Nuclear power is another area that I think is ripe for innovation. We've already seen some smaller modular reactors get patented and I think that's a way that we can address climate change by reducing our reliance on fossil fuels. So I think innovation is really critical to, this problem. And I think the patent system is a necessary, partner with that because folks are not going to invest in the innovation that is needed in, in scaling up those technologies, if they don't have some sort of patent protection that they can, prevent others from basically stealing or copying their ideas. And what would you say is giving you hope right now when it comes to the intersection of innovation, policy and climate action? Yeah, I think, it's just that, you know, seeing just recently I helped co-author an article about some of the developments in the nuclear space. It's something that I've always been interested in. I, going back to college, I studied abroad in Italy and we actually toured some decommissioned nuclear power plants. And I just happened to, to pull up a couple patents that, were for nuclear related technologies. One was a small. Modular reactor, and I believe another was for a containment system basically to, prevent radio, you know, active leakage. And so, we're still seeing plenty of examples of this and of innovation that is occurring. And you know, the interesting thing, just maybe on a political level in the United States is there seems to be this, I dunno, there's this tension because some of the more conservative states in the United States Texas for example, have been tremendous beneficiaries of, climate change, clean tech you know, investing and building and, you know, solar, for example, has taken off down there. And so you, you have this, this tension between conservative politicians, you know, on one hand who maybe attack climate change, but don't want to lose the benefits that the technology has provided for them, for their constituents, for their state. We've already seen just in the last couple weeks, several republican legislators that have, come out against reductions to some of the climate change initiatives that, President Biden enacted. So, as, as tempting as it is to, feel gloomy right now with this, the state of the world you know, I, I think there's just this natural political tension that is, is probably going to prevent you know, a widespread, I'm trying to think of the right word here, but step back I guess would be the, maybe the best way to say that. So I hope, I hope that answered your question, of a political diatribe there. a left field question, if you could have any person or character, alive or dead or fictional a champion for climate related patents, who would it be and why? Yeah, that's a great question. So I'm gonna go back to thinking along the political lines since I'm already there. I'm gonna think of Abe Lincoln and couple reasons. First, I'm from Illinois, the land of Lincoln. Second, he was I believe the only president to ever obtain a US patent. He obtained a patent on some sort of farming technology back in the 1840s, 1850s. I, I, I've looked at the patent in the past and I can't remember exactly what, it covered. Okay. But you know, we consider him to be one of our greatest presidents and a great orator and defender of humanity. So I, I think it would be interesting to have him, know, picturing him with his top hat at a press conference discussing, you know, climate change and what we can do to, to address it Four score years ago and.dot. you go. Exactly. Great. We're coming towards the end of the podcast now, Ryan. Is there any question I didn't ask that you wish I did or any aspect of this we haven't touched on that you think it's important for people to think about? No, I, I think you pretty much covered it. You know, should anyone have any, any, any further questions, I assume you'll, you'll provide listeners with my bio. Happy to discuss further. It's, it's definitely an area that has grown tremendously since I started practicing in 2010. I expect that to continue, despite whatever uncertainties exist at the moment. I do think it will continue and perhaps that's overly optimistic and, and I have to be optimistic because I'm still young enough, but yeah, I'm happy to, happy to discuss, answer any questions anyone, anyone might have. Great. And if people would like to get in touch, Ryan, what's the best way? Yeah. So, you can go to, my firm website, it is www dot marshall, M-A-R-S-H-A-L-L-I p.com, and you can find me there, Ryan Schermerhorn, S-C-H-E-R-M-E-R-H-O-R-N. My email address is listed on my, bio. Perfect. I'll put those links in the show notes as well, Ryan, so people have easy access to them. Great. Ryan, that's been fascinating. Thanks a million for coming on the podcast today. Oh, thank you so much Tom, and thank you everyone for listening. Okay, we've come to the end of the show. Thanks everyone for listening. If you'd like to know more about the Climate Confident podcast, feel free to drop me an email to tomraftery at outlook. com or message me on LinkedIn or Twitter. If you like the show, please don't forget to click follow on it in your podcast application of choice to get new episodes as soon as they're published. Also, please don't forget to rate and review the podcast. It really does help new people to find the show. Thanks. Catch you all next time.