Evergreen Solar bankruptcy IP sale may itself be bankrupt

At first glance, a patents-for-sale sign appeared to be hanging out of Bankruptcy Court as a result of the filing of Massachusetts company Evergreen Solar. Those patents include U.S. Patents Nos. 6,814,802, 7,022,180 and 7,507,291, the “Ribbon Patents,” which cover Evergreen’s PV (photovoltaic) manufacturing process known as String Ribbon technology.

The U.S. Department of Energy (DOE) has written a letter to Evergreen demanding that it assign title to the Ribbon Patents to DOE, and asked the court for permission to obtain the title to the IP.

“We believe the [patented] Method is a “subject invention” as defined by the Bayh-Dole Act and NREL subcontract ZDO-2-30628 . . . to which Evergreen Solar Inc. was a party.”

DOE’s motion states that the federally funded research led to the String Ribbon process, and that under Bayh-Dole, Evergreen had an obligation to disclose to DOE any and all inventions developed with federal financial assistance; that Evergreen failed to do so means DOE can take rightfully take ownership.

The first crucial element in due diligence in IP valuation is sorting out ownership. The Evergreen case serves to add to an already lengthy checklist.