Issue Date: October 17, 2011
DOE Demands Solar Patents
The Department of Energy is claiming ownership of three patents awarded to Evergreen Solar and plans to prevent them from being sold to non-U.S. firms. According to DOE, the technology was developed from 2002 to 2005 with funding from the agency.
When Evergreen filed for Chapter 11 bankruptcy in August, it said it would sell its assets at auction, including intellectual property related to its solar wafer manufacturing technology. Evergreen’s wafers are made with what it calls the string ribbon method, which is designed to minimize the use of crystalline silicon. DOE says the firm used a nearly $3 million government grant to refine the method, cutting manufacturing costs by 33%.
Even with the innovation, Evergreen—like U.S. solar firms Solyndra and SpectraWatt, which recently both declared bankruptcy—could not compete with lower cost crystalline solar modules made in China.
The Bayh-Dole Act requires Evergreen to inform DOE when grant-supported research results in an invention and whether Evergreen elects to retain title to any inventions. But Evergreen did not notify DOE about three patents resulting from the grant. In such a case, the Bayh-Dole Act says DOE can demand title to the inventions. On Oct. 7, DOE notified Evergreen Solar of its demand for title to the three patents.
In an accompanying filing with the bankruptcy court of Delaware, DOE worries that Evergreen has already entered into a joint venture with a Chinese company and established a manufacturing facility in Wuhan, China. It says DOE has a statutory duty “to use the patent system to promote the utilization of inventions arising from federally supported research or development, promote the commercialization and public availability of inventions made in the United States by United States industry and labor, and ensure that the Government obtains sufficient rights in federally supported inventions.”
Attorney Charles E. Miller, in the Intellectual Property Group of Dickstein Shapiro LLP, says the government has a good case for ownership rights under Bayh-Dole. Normally, a bankruptcy trustee would decide what to do with the company’s assets, but “the bankruptcy court cannot sell assets that belong to the government,” Miller says.
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