20 | Brendan Serapiglia & Jason Feldmar — Partners, Gates & Cooper LLP

💡 Can you trademark a sound? Why can you only patent "non-obvious" inventions? Who decides what is non-obvious? What is Enablement and how does the Supreme Court's ruling on it affect cleantech?! For answers to these questions and lots more, today's episode features Brendan Serapiglia, PhD and Jason Feldmar—partners and intellectual property (IP) attorneys at Gates & Cooper LLP—in discussion with BioZen's CEO Nate Kirchhofer. Brendan's technical background is in Materials Physics and he focuses on high-tech and university clients, whereas Jason's technical background is in Computer Science with a focus on software inventions as well as Gates & Cooper's Trademark portfolio.

Tune in to learn first what exactly a patent or trademark is, how they are different, reasons to apply for them, and how they're strategically valuable especially in the context of high-tech and clean energy sectors. A recent Supreme Court ruling in a case with Amgen has influenced Enablement ("to enable any person skilled in the art . . . to make and use the [invention]," or describing how to make and use the full scope of what is claimed). From this ruling, patent applications will likely have more stringent requirements for describing how to make and use the full scope of claimed inventions, especially in fields like chemistry and alternative energy where you're dealing with an "unpredictable art." The discussion also touches on so-called "101 issues" (35 U.S.C. 101 requirements), also known as what constitutes patentable subject matter; patenting abstract ideas or natural phenomena is difficult, as is defining and claiming cleantech and software inventions in ways that satisfy these legal requirements.

The human art of crafting patent claims is another focal point of the discussion. Defining claims in a manner that convinces a patent examiner and captures a wide range of potential infringements without overstepping the actual scope of the invention is vital for both enforcing and making them sufficiently broad to be commercially valuable.

Often seen as controversial players in the IP landscape, Non-Practicing Entities (NPEs) hold patents but don't necessarily implement the technologies themselves, often agressively litigating. Patents serve as both a "sword" and a "shield" in business strategy, offensively to sue for infringement or defensively to deter lawsuits and encourage cross-licensing.

Recent market trends have shifted focus in patent and trademark filings toward battery technology: In 2023, over 1000 Li-ion patents were published, whereas long duration energy storage (LDES) mechanisms like flywheels, flow batteries, supercapacitors, thermal storage, etc were all at ~100 per year—an order of magnitude less. Read: non-lithium energy storage is a potential greenfield market opportunity.

The discussion highlights that IP is a critical component of business strategy, especially for startups and universities: IP assets can be crucial for attracting investment and establishing a competitive edge in the market.

Additionally, the conversation covers the implications of H.R.4346 Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act, 2022 legislation aimed at boosting technology de