Helping Consultants Understand and Navigate the Complexity of Patent and Royalty issues: How Transitioning Ideas and Discoveries from Environmental Field Applications and Experiences into Defendable Patents May Expose Consultants and Their Clients to Infringement Litigation

Presenter: Michael Scalzi, President, Innovative Environmental Technologies, Inc.

As a leader in the field of environmental technology, Michael Scalzi has been performing biologically and chemically based remediations since the late 1980s. In 1998, he founded Innovative Environmental Technologies (IET), an international environmental technology company that operates throughout the United States and Africa. Throughout his career, Mr. Scalzi has performed remedial projects and designed and patented chemical, biological and mechanical processes, making him integral in expanding the application of in-situ remedial processes. His unique perspective relating to the integration of mixed technologies and delivery processes has allowed him to apply chemical oxidation, aerobic processes, anaerobic processes along with more traditional remedial approaches resulting in more affordable solutions. In addition to his work at IET, Mr. Scalzi has developed curriculum for training environmental professionals for colleges in New York and Pennsylvania, has sat on numerous state and federal roundtables and advisory boards and has published several articles relating to his experiences and expertise. Mr. Scalzi holds a Bachelor of Arts degree in Biology and a Master of Arts in Microbiology from the State University of New York.

Abstract:

Background/Objectives. Engineers, chemists, biologists and hydrogeologists active in the environmental industry frequently have occasion to observe, recognise or innovate environmental methods, processes and/or products.  The mechanisms in place to protect these innovations are governed by Patent Law.  Understanding the construction of a patent, its claims and disclosures is critical to the successful acceptance, promulgation and defense of the innovations.  The environmental field covers a very broad range of applications.  Through the numerous ideas, problems and opportunities that arise during these processes, the experts of the environmental field need at times to use their knowledge, educational skills, training and background to assess and evaluate the effectiveness of their work.  Literature review, as well as lab and field testing methods, are means of enhancing their findings and developing unique ideas that will help to address issues in the environmental field.  In order to preserve and protect their findings and methodologies, it may be necessary, or at least beneficial, to encompass them in patent applications. Once issued, for a patent to have value to the owner and licencees, the patent owner must rigourously enforce the intellectual property.

Approach/Activities Leading to a Patent Issuance. In order to proceed with patent protection, the inventors (e.g., engineers, chemists, biologists, hydrogeologists, researchers) spend time with a patent attorney explaining the problem, the current way the problem is solved and the proposed innovation for solving the problem.  The inventors and the patent attorney review the prior art and test results for the new innovations so that a proper patent application can be prepared.   The filed patent is then reviewed and commented on by the United States Patent Office.  The process, from filing to issuance, can take anywhere from two (2) to four (4) years.

The Relationship between a Patent Holder and their Licencees. When patent owners grant a license, the licensing company has an expectation of value.  The patent holder’s responsibility, usually contractually, is to maintain that patent’s value through enforcement of the intellectual property.  A patent holder must enforce the patent in order to satisfy its licensee’s expectations of value.  Infringers of patents generally are unaware of their infringement or choose to expose themselves to Federal litigation.