In this article for Intellectual Property Magazine, Partner Martin MacLean and Trainee Patent Attorney Lionel Newton explain how innovators are responding to the increased demand for clean tech solutions, as well as understanding the importance of seeking protection for their innovations.
Chemical pesticides have been used for decades by commercial growers and home gardeners alike. By way of example, use of DDT (an insecticide) and 2,4-D (a broadleaf herbicide) date back to the 1950s, whereas use of glyphosate (a broad-spectrum herbicide) dates back to the 1970s.
Indeed, increasing commercial and domestic demand for chemical pesticides has seen several proprietary brands achieve household recognition (eg, Fly Jinx for DDT, Weedone for 2,4-D, and Roundup for glyphosate).
The environmental concerns over DDT and 2,4-D are well documented, and flow from greater awareness and understanding of how these chemical entities behave in terms of half-life and toxicity profiles when released into the ecosystem. Indeed, the history of DDT could hardly be more spectacular: a Nobel prize in 1948 followed by a global ban in 2004.
DDT has an estimated half-life of up to 150 years, and due to its lipophilic properties will accumulate in fat (bodyfat of animals). With regard to 2,4-D, ester (more potent) versions have been banned in the US and Europe for more than 20 years, whereas less potent versions have more general approval. The estimated half-life for 2,4-D is in the region of up to one year. More recently, glyphosate has been linked with potential carcinogenicity issues. Glyphosate has an estimated half-life of up to 200 days.
Whether we like it or not, we are now part of a growing eco-conscious population, which is becoming more risk-averse to the use of chemical pesticides. In parallel, regulatory control over the use of pesticides has become much tighter.
Keeping up with this ever-shifting mindset, governments and companies globally are promoting, investing in and protecting ‘green innovation’ with a view to creating economic growth around the technologies that help protect and sustain the environment. Widely known as clean technology, such green innovations are designed to reduce pollution, truncate the production of hazardous waste substances, and encourage renewable energy generation (moving us away from a dependency on fossil fuels).
Green innovators: protecting the environment and their innovations
In a well-known case providing a successful environmentally friendly (green) pesticide, Iowa State University (Iowa) discovered and patented a 100% natural corn gluten meal (CGM) composition (a recycled by-product of corn milling) for use as a green ‘pre-emergent’ herbicide, setting an early example for others to follow. Iowa received large exposure from this in the 1990s, and CGM continues to be a widely marketed pre-emergent herbicide. This demonstrates the commercial success of a green pesticide originating from more than two decades ago.
To track filing trends in this area since then, we performed a limited ‘google patents’ search for Patent Cooperation Treaty (PCT) applications describing ‘environmentally safe’ or ‘eco-friendly’ pesticides/herbicides, which returns greater than 1,000 published PCT applications. Identified applications are directed to both compositions of matter (demonstrating the fundamental R&D efforts of many companies to manufacture new pesticide products) and methods of pesticide control (often through the re-purposing of components known to be environmentally compatible, such as natural oils).
The results of this search suggest that, while there was an appreciable amount of relevant patent activity in the ‘90s, the turn of the millennium was a key period for green pesticide patents, with a noticeable ‘jump’ in PCT filings describing green pesticides occurring in the period between 2001 and 2003. Consistent with this jump, the number of relevant filings appears to have been increasing virtually year-on-year ever since.
Key players (applicants) include Syngenta (Syngenta Participations Ag) and Du Pont (EI Du Pont De Nemours And Company), having a 21% and 3.4% share of the identified applications, respectively. Interestingly, Monsanto (the makers of Roundup, and generally considered more interested in the chemical pesticide market) is the proprietor of a number of the identified applications.
Case study 1 – Neudorff
W Neudorff GmbH KG (‘Neudorff’) is a manufacturer of natural/green pesticides and provides products for both commercial agriculture and home garden use. A broad patent estate has enabled Neudorff to establish products such as Sluggo (a biodegradable slug killer) and Fiesta (a selective herbicide, comprising a safe form of iron as a key active ingredient). They did this as market leaders in territories such as North America, Europe, Japan and Australia, were bringing their green pesticides toe-to-toe with the chemical/recalcitrant pesticides manufactured by giants such as Monsanto and BASF.
For example, patent no WO2007031561 is directed to an environmentally safe, non-phytotoxic insecticidal and miticidal composition comprising an admixture of spinosyns (organic insecticides derived from naturally occurring soil fungi) and organic fatty acid. This application has led to patents in Canada, Europe and the US, and helped pave the way for the commercial success of Spinosad, an OMRI-listed insecticide product approved for organic gardening.
Patent no WO2003073856 is directed to an environmentally safe, selective weed killer comprising a transition metal (iron) chelate as a key active ingredient and has been central to the success of Neudorff’s Fiesta weedkiller for lawns. The underlying invention is based on an eco-friendly iron chelate (previously used as a fertiliser), which provides a selective (for weeds) herbicidal effect when applied at a defined (herbicidal) rate. An enhanced version of the products/methods described in WO’856 is encompassed by patent no WO2018041916, which describes use of salts for enhancing said selective herbicidal effect of an iron chelate.
Noting the success for Iowa around their CGM patents, a drawback for CGM compositions has been their relatively low efficacy, requiring large amounts to be applied to the ground to achieve the desired pre-emergent herbicidal effect. Addressing this, patent no WO2018041916 (Neudorff) describes an improved CGM composition having (significantly) enhanced pre-emergent herbicidal activity due to the presence of a transition metal chelate – the composition has greater efficacy, and thus can be used in lower amounts (thus reducing the packaging and transport burden of CGM).
These published patents/applications owned by Neudorrf are indicative of their success in generating new and improved pesticides based on ‘re-purposing’ natural/organic agents known to be safe for people and the environment, and by significantly improving the efficacy of green pesticides, thus overcoming certain drawbacks (in terms of effectiveness) of green pesticides over the harsh chemical pesticides.
Case study 2 – Evolution Biotech
Representing earlier stage companies developing new eco-friendly ways to combat pests, UK-based Evolution Biotechnologies (Evolution Biotech) has developed a 100% natural product for combating the ubiquitous house dust mite (HDM), which is widely recognised as a major source of the allergens responsible for asthma.
Patent no WO2017025732 encompasses methods (and products for use in the same) for treating and preventing HDM infestations with a transmissible (replicating) natural agent, which is transmitted from mite-to-mite within an infestation before biodegrading upon eradication of the infestation. This invention will contribute to reducing our reliance on recalcitrant chemical anti-HDM agents (such as organophosphates and carbamates), the importance of which was highlighted by a large-scale recall of a major chemical anti-HDM product after the US Environmental Protection Agency (EPA) documented more than 400 cases of adverse side effects among users. Evolution Biotech already has a granted European patent for this invention.
Naturally, the speedy implementation of green technology requires support and commercial incentives, which is something recognised by many patent offices around the world who have developed bespoke ‘fast-track’ prosecution programmes for green applications to reach grant quicker. In more detail, seven of the major intellectual property offices around the world have implemented programmes to accelerate the prosecution of ‘green’ patent applications (i.e. in Australia, Canada, Israel, Japan, Korea, the UK, and the US), and a recent study reported that, over the period of 2010-2013, more than 5,000 patent applications requested accelerated examination under the various programmes.
The Green Channel was the first of the major green fast-track schemes set up in May 2009. Since then, 20% of the average annual number of green UK applications were filed with a request for accelerated prosecution, with Green Channel applications enjoying a 75% reduction in time-to-grant (3.3 years on average for regular examination v 0.8 years on average for fast-track applications). A glance at the directory of published Green Channel patent applications shows that the number of publications has reached the impressive number of 2,116 at the time of writing. Demonstrating the increasing popularity of the scheme, the number of applications requesting entry into the Green Channel more than doubled from 107 in its year of inception, to 273 in 2017.
While only a proportion of the total number of green patents have undergone accelerated prosecution by request (likely driven by alternative incentives to keep applications in the prosecution process for longer), the green fast track programmes are generally considered to have been a success, and a powerful commercial tool for green innovators.
Driven by heightened awareness of the inherent dangers of recalcitrant chemical pesticides, the willingness to keep using these will likely continue to decrease, with a concomitant increase in the need for green
alternatives. Based on our analysis, green innovators are responding to this increased demand and understand well the importance of seeking protection for their innovations. In light of this, we can confidently say the future is looking bright green!
This article was first published in the June 2019 edition of Intellectual Property Magazine.