The transition to renewable energy and the increasing demand for sustainable resource extraction have driven a surge in technological advancements across Australia’s energy and resources sector. As companies invest in new technologies to enhance efficiency, reduce emissions, and improve resource extraction and processing, the protection of intellectual property (IP) has become a critical business and legal consideration.
IP is often an afterthought in the sector, however failure to safeguard IP can lead to loss of revenue, competitive disadvantage, and potential for disputes. As innovation and advancement become crucial for sustaining the industry, IP protection must be a priority.
This article explores the key IP issues in the energy and resources sector, as well as strategies for businesses in the sector to protect the IP in their investments in technology and innovation.
Importance of IP in Resources and Renewables
Like other sectors, energy and resources is experiencing a surge in technological innovation. Whether driven by the push towards net-zero emissions, efficiency improvements, or supply chain pressures, it has become essential to innovate to avoid falling behind. This includes:
Critical minerals processing – advancements in refining and extraction technologies for essential minerals.
Renewable energy storage– improved battery technology, grid integration solutions and advancement in hydrogen energy systems.
Carbon capture – processes for reducing CO2 emissions in mining and energy production.
Digital transformation – use of automation and AI to optimise operations and supply chains.
With increased innovation comes the need for a robust IP protection strategy, to protect investments and prevent competitors from exploiting proprietary technology.
Types of intellectual property
Companies investing in innovation should consider a combination of the following intellectual property protections:
Trade secrets and confidential information
Many energy and resources companies rely on trade secrets to protect methods, techniques, and processes, particularly where patent protection is not available or is impractical (as once a patent is published, a patent will no longer be a secret). Trade secrets are a form of confidential information which have commercial value due to their secrecy. There is no separate statutory regime which protects trade secrets in Australia, unlike in the United States, United Kingdom and European Union.
Best practices to safeguard trade secrets is through maintaining and enforcing confidentiality:
- entering into non-disclosure agreements (NDAs) and ensure agreements contain robust confidentiality provisions, to provide contractual protection to confidential information;
- establishing security protocols and access controls to restrict access to confidential information to key personnel;
- educating employees and contractors on confidentiality obligations and monitoring compliance; and
- taking prompt action for breach of confidentiality.
Patents
Patents grant exclusive rights to new, inventive and useful processes, systems, and products. In the energy and resources sector, patents cover, for example, novel mineral processing methods that reduce environmental impact, and energy storage innovations that improve battery efficiency or lifespan.
Patent applications must meet strict novelty and inventive step criteria. Once granted, a patent is protected for 20 years from the date of filing the patent application.
Best practice in protecting patents includes:
- reviewing the patent landscape to ensure freedom to operate and identify any prior art which your invention could infringe;
- maintaining strict confidentiality of the invention – once an invention is publicly disclosed, the ability to obtain a patent is lost;
- ensuring the invention is not exploited or used commercially prior to filing a patent – take care to limit use to reasonable research and development; and
- considering a global strategy and filing patent applications in key markets – once a patent is published, it will not be a secret and will be prior art to any future applications in new markets.
Designs
Designs are a registerable right which can be used to prevent others from using the design without permission. A registered design can protect a product’s overall appearance and visual features (but cannot protect the function of the product).
Copyright in a design will cease to apply if a product is manufactured more than 50 times. To protect the design once it has been industrially applied, the design must be registered.
Best practice in protecting designs includes:
- identifying whether the design is new and distinctive and considering design registration;
- entering into NDAs or confidentiality agreements to keep the design secret before you file; and
- registering the design when it is secret and before it has been industrially applied.
Copyright
With increased digitisation, software and data analytics tools play a key role in renewable energy and mining operations. Software is protected by copyright (as a literary work). Copyright will also subsist in other original literary and artistic works, such as design documents, drawings, plans and reports. The owner of copyright has the exclusive right to copy, reproduce, distribute and exploit a copyright work.
Copyright exists automatically in an original work which is created by a human author. Copyright is generally owned by the author, subject to some exceptions. While an employer will own copyright work developed by an employee, this is not the case where a contractor or consultant has been engaged to develop the work, unless there is a written assignment of the copyright which is signed by the contractor.
Best practice in protecting copyright includes:
- entering into written agreements when collaborating with other parties to ensure there is a clear agreement around ownership of IP;
- conducting due diligence of material copyright assets to ensure ownership is held by the right party; and
- obtaining signed written assignments of copyright from consultants and other contractors.
Trade marks and brand assets
Trade marks are a valuable asset in protecting a company’s reputation and recognition in the sector. Trade marks distinguish a company’s products and services from those of its competitors. Unlike a business name which does not provide any ‘proprietary’ right, registered trade marks provide exclusive rights to the owner – the owner can prevent others from using a similar trade mark in respect of similar goods or services.
On the other hand, unregistered trade marks are not ‘property’ and are inseparable from the goodwill in the business that uses them. Unregistered trade marks cannot therefore be dealt with (such as licensed or assigned) separate from that goodwill.
Best practice for protecting your brand includes:
- conducting trade mark clearance searches in key markets to ensure there are no conflicting prior registered trade marks which your brand could infringe;
- registering trade marks in key markets to ensure you can enforce your exclusive rights to the trade mark;
- considering whether you should register a business name or company, or any domain name for your brand; and
- monitoring any unauthorised use of your brand and enforcing your rights, if necessary.
Strategies for the sector to protect intellectual property in technology
Intellectual property protection is a critical part of success in the evolving Australian energy and resources sector. Businesses must proactively safeguard their innovations to protect their investment in new technologies.
This article provides steps for the sector to protect their investment in new technologies and innovation.
In summary:
- use NDA’s and confidentiality agreements to keep innovations secret;
- enter into written agreements which clearly deal with ownership of and rights to use IP;
- do not exploit a patentable invention commercially, prior to filing;
- file early for IP protection, ideally conducting clearance searches prior to filing; and
- monitor for infringement and enforce IP rights when necessary.
For further guidance on IP protection in the energy and resources sector, please contact our Digital & IP team.
