A patent is awarded as a legal monopoly to the holder for 20 years from the application filing, provided the filing meets two criteria. The first is novelty, which means the idea has never been openly published before. Second is the inventive step, referring to some genuine invention or improvement has been made to the product or process. This explanation is an oversimplification of a complex topic but will serve the purpose of this article.

There is no need to invent a completely new base oil in order to get some protection for an improvement in the processing or performance of an existing one. If this were the case, the millions of dollars spent on research and development for base oils, and lubricants, would attract little or no return on investment if genuine incremental improvements were not rewarded by an exclusive gain for a given period, i.e., the duration of the granted patent.

The attraction of getting a patent is that it usually has an impact on any finished lubricant blended with the base stock covered by that patent. But this only applies in the countries where there is a current granted and supported version of that patent. Patents are broadly country or region specific.

When looking at specific types of base oil patent that can be considered in any company IP strategy, base oil compositional patents are amongst the most powerful. They are also the least likely to be circumventable. If a base oil meets all of the compositional and performance parameters described in the granted patent – such as degrees and length of branches, saturates to aromatics types, boiling range or other properties – so too do the lubricants blended from it. Some granted base oil compositional patents can effectively close off an entire area of chemical structures.

Therefore, it is worth attempting to scope out as thoroughly as possible the likely compositional and performance variants of any new base oil type.

Even if the researchers decide not to attempt to patent these variants for exclusive use, which can be costly, it can be worth putting out some fairly detailed chemical structural and physical information as public document disclosures. Even conference proceedings will do.

Some companies even decide to publish a patent application only, and not invest in the costly international filings and further prosecution. Such publications will probably be novelty-destroying (remember the first test of patentability) for competitors younger patent applications. The patent examiners will likely find these documents, especially patent publications, during the application phase. So, although the researcher cannot then patent the base oil, neither can any competitor who might lock your company out.

It should be mentioned that the patent process has at least two parts: the application phase and the granted patent phase. Many applications are filed but relatively few go through unmodified by the examiner to the granted patent phase. Indeed, many applications are rejected outright by the examiner for a variety of reasons, but often due to lack of novelty. This usually means the examiner has found some earlier public-domain document or patent that effectively already discloses the claims.

Patents can be granted for specific uses of a base stock in a lubricant application and are so-called use patents. Broadly speaking, these are less helpful to the patent holder than compositional patents, since if the use for the base stock is changed, say from a crankcase lubricant to a process oil, then that specific patent no longer applies.

When a researcher is looking at existing IP as part of the due diligence of any research and development project for a base oil development, they will need to be aware of whether the patent document they are looking at is in the application phase or is granted, or if the yearly maintenance fees have been paid, since quite different responses are required.

Even if a base oil or lubricant laboratory is not proactive in filing its own patent applications, it is still necessary to monitor and be aware of what third parties are doing, and in what countries. Infringement of a third partys valid base oil patents can cover all lube developments using that base oil and attract substantial damages for infringement. This is on top of wasting precious research and development funds on base oil developments and the finished lubes using them, that may then not be brought to market or maybe even have to be removed from the market.

However, it is often the case, but not always, that the patent holder will grant a licence for some financial consideration, that both parties can live with. This is the process of monetizing IP and should be sorted early in the base oil research and development process.

There is one golden rule when performing a patent search, either before a base oil development starts or maybe as part of the final checks towards the end of development. The final say on whether a new development has IP freedom of action – that is, it is uninfluenced by third-party patents – can only be made by a patent attorney. The scientists or product developers, no matter how well qualified, should not attempt this. Patent law is extremely detailed and varies significantly between say the United States and Europe, to name two jurisdictions. What matters in one jurisdiction may not matter in another and vice versa.

DAVID WEDLOCK

retired from Shell Lubricants after more than 10 years as global technology manager for finished lubricants and base oils. Before that he worked in R&D for Shell Additives International. He is now an independent consultant.
He can be contacted at david.wedlock@live.co.uk