Vivian Alberts had a tough 2015. The University of Johannesburg (UJ) physicist faced a fierce European challenge to the intellectual property (IP) right to his life’s work – a brand of thin-film solar module (TFSM) technology – while also working to make his invention achieve the same efficiency on local glass as on imported German glass.
Luckily, he notes, he was able to make “major progress” on both fronts by the end of the year.
Photovoltaic Technology Intellectual Property (PTiP), a local technology development and intellectual property holding company, and Singulus Technologies, a listed German engineering company, opened a R180-million, 3 500 m2 demonstration plant in Stellenbosch in 2014.
The aim of the plant was to improve Alberts’ thin-film solar technology through the use of new-generation production equipment supplied by Singulus.
The plant was financed by UJ, as well as government’s Industrial Development Corporation (IDC) and the Technology Innovation Agency (TIA). The IDC also holds shares in PTiP.
Alberts’ work on thin-film solar modules at UJ dates back to 1993.
The thickness of the active materials in his locally developed thin-film module is 2 µm, compared with the traditional first-generation silicon technology with a thickness of more than 300 µm.
Compared with traditional silicon-based products, the main commercial advantage of Alberts’ technology relates to a substantial reduction in production costs, with much fewer active materials used in the module.
Alberts also believes that his invention has a “significant technology edge” over related thin-film solar technologies.
PTiP licensed its thin-film technology internationally in 2007, and today the processes and product characteristics are protected by worldwide patents in more than 100 countries.
Before PTiP’s joint venture (JV) with Singulus, there was another suitor at the door, namely Johanna Solar Technology (JST).
JST had seven shareholders, including South Africa’s State-owned Central Energy Fund, as well as private-sector investors Richmont-Venfin, Anglo Coal and German solar manufacturer the Aleo group.
PTiP granted JST a licence to manufacture its thin-film panels in Germany. JST also had the legal right to issue sublicences for the manufacturing and distribution of the PTiP technology anywhere in the world, excluding Africa and its offshore islands.
The JST JV completed a €72-million, 30-MW-a-year production facility in Brandenburg, near Berlin, in 2007.
Alberts was based in Germany at the time to assist with the successful start-up of the JST plant.
However, JST was acquired by engineering and electronics group Robert Bosch in Germany in 2009.
Bosch, one of the world’s largest car parts manufacturers, entered the solar market in an attempt to diversify from the troubled automotive sector during the global financial crisis that hit towards the end of the decade.In 2013,
Bosch launched a challenge on PTiP’s patent and IP in Europe.
European patent law allows a licensee to challenge the validity of the patent of a licensor, explains Alberts, in line with current anticompetitive legislation.
“This means a licensee can challenge the validity of the licensor’s patent to establish whether the payment of future licence fees and royalties is fair and enforceable.
“This allowed Bosch to institute proceedings at the European Patent Office (EPO) with the aim to revoke our patent in its entirety.”
Their arguments were based on broad allegations that the claimed invention lacked novelty and a so-called inventive step, notes Alberts.
They also alleged that key process conditions, such as temperature, time and pressure, were either not defined or could not be measured or controlled. Hence, the average skilled person could not reproduce the result in order to put the invention into practice.
After the respective parties had submitted volumes of legal and technical arguments over a period of more than two years, the EPO hearing took place in November last year in Berlin – a mere 50 km from the Bosch manufacturing plant, says Alberts.
The hearing lasted 13 hours before the EPO ruled against Bosch and rejected all its legal and technical objections.
Alberts regards the Bosch challenge as not only a challenge against PTiP, but also a vigorous attack on the integrity of South African IP.
“It is a major victory for South Africa- based IP.
At the end of the day, it also strengthened PTiP’s IP on a global level.”
Alberts believes Bosch would not “have put up this enormous fight if the patent was irrelevant and not of any use to them – obviously, they have a problem with the fact that it is in force”.
An interesting fact is that Bosch started to exit the solar market in 2013 by selling off its crystalline solar business on the back of what was reported as cheap Chinese imports and a decline in subsidies from the German government.
In October 2015, a media report said Bosch had announced its intention to also close its thin-film photovoltaic development site, Bosch Solar CISTech.
The report says the original plan was to bring the thin-film technology to market maturity and to then begin manufacturing operations.
CISTech originally operated under the name of Johanna Solar Technology.
Engineering News approached Bosch’s head office in Germany with a number of questions regarding the case, with spokesperson Christian Hoenicke noting that the company was unable to comment on the case as it was “an ongoing procedure”.
Alberts says he cannot comment on media reports regarding Bosch’s solar operations, as PTiP “had been unable to gather any credible information” from the group on production volumes, plant extensions or sublicences granted while the case was under way.
Apart from Bosch’s own operations in Germany, a Chinese company also has a sublicence to manufacture the PTiP product.
The licence was granted by JST in 2008.
“Bosch had an obligation to inform us about any changes in the status of their plants,” notes Alberts. “We will now take the time to study Bosch’s actions over the past two years with a view to protecting our commercial interest.”
It was also difficult to act on any possible infringement of PTiP’s patents until the EPO made its ruling, he adds.
Alberts also laments the damage the case may have caused PTiP’s global reputation, especially through the allegation that the invention lacked novelty and that key experimental conditions of the invention could not the reproduced in practice.
Alberts is keen for other South African inventors to learn from PTiP’s experience.
“Millons of rands were spent to secure worldwide patent protection and to prevent third-party infringement. “Ultimately, this was not enough and we had to defend our IP against a licensee – a major, major German company with unlimited resources. “This negative action obviously wasted a lot of time and money, which could have been spent on refining and commercialising our technology.”
Alberts admits there was a loophole in the commercial contract that allowed Bosch to challenge the validity of the patent within three months of the patent being granted in Europe.
“We were aware of the clause, but did not expect or contemplate that our own licensee would file opposition against our patent.
“Our patents, or any part of the IP, have not been challenged by any company in the world, except by Bosch in Germany.
“We provided the German company, in good faith, with a technology licence, provided training in our laboratory in Johannesburg and even played a key role in securing strategic shareholders in the company. I lived in Germany for a year; we set up the facility in Germany together, we transferred all our technology and know-how, and they went ahead and used all of that against us.”
Alberts says he had learned that the technology and the product must both be 100% protected before one becomes engaged in licensing.
“Then you must choose strategic partners with relevant commercial experience and a genuine desire to implement the technology.
“Obviously, this goal poses the highest risk, as it is difficult to find within a large company a champion who will enthusiastically support a new technology that is not his or her own, especially when it runs into the inevitable problems during the implementation phase.”
There have been numerous opportunities in the past 12 months to license PTiP’s technology outside South Africa, but the company is taking its time to ensure “that all legal and technical risks are covered”, says Alberts.
Is he uneasy about PTiP’s current German partner, Singulus?
“No,” he affirms.
PTiP and Singulus Technologies are in a JV called Singulus CIS Solar Tech, which has the right to license PTiP’s technology internationally. This JV structure provides the necessary protection during commercial roll-out, especially with respect to international licensing and technology transfer, explains Alberts.
PTiP has a 34% shareholding in the JV, with Singulus the majority shareholder.
Following a difficult 2015, PTiP is keen to focus on its core business, which is the continuous improvement of its TSFM technology and product, in order to facilitate the establishment of a viable local photovoltaic (PV) industry in South Africa.
“Our strategic goals are to strengthen the IP and to reach certain product and technology milestones in the next six months, inside and outside South Africa,” says Alberts.
“We remain convinced we can manufacture high-quality modules, with 85% local content, at internationally competitive prices. The potential for job creation, transfer of technology and know-how, and the development of much-needed skills in the green economy is very real.”
The most important technological advance during the past 12 months has been the replacement of imported German glass with South African glass as substrate material for the thin-film modules.
“We want to have the entire value-chain in South Africa. We want to go from the raw materials to a complete operating PV system,” says Alberts.
He says a “very committed technical team” has made steady progress to manufacture PV modules using South African glass.
This is not as easy as it may sound.
Alberts originally developed the TFSM technology using German glass. (The glass is also called the raw material, or substrate.)
South African glass has a higher iron and nickel content than German glass, which is why it often appears darker than German glass.
“Iron, from a technical point of view, is a killer for the electrical functioning of semiconductor materials,” explains Alberts.
“The semiconducter material is very carefully doped to get the optimum electrical and optical properties for conversion into solar power, and the iron somehow destroys this controlled doping process.”
Alberts and his technical team had to change the process technology by coating the South Africa glass substrate with a barrier coating that blocks the iron from diffusing into the semiconductor material.
“However, in the glass, there is also an element required to reach the optimum conversion efficiency, namely sodium. If you block all the iron, you also block the sodium.”
This means that the semiconductor also has to be doped with sodium (in a process called postdoping), in order to reach maximum efficiency levels.
“Basically, it means you block all the sodium and iron, and then you have a controlled process by which you reintroduce the sodium into the semiconductor,” notes Alberts.
“This technical intervention has proved to be successful. Initial production data has proved that we can, in principle, achieve the same solar module efficiency using local glass.
“Our current efforts around the local glass are focused on outdoor stability tests and external certification.”
PTiP closely cooperates with glass manufacturer PG Glass, based in Springs, Gauteng, to ensure the continuous supply of high-quality glass substrates that are a prerequisite for high module efficiencies.
Using local glass ensures that the local content on the PTiP solar modules is 85%, compared with the 25% local content on the imported modules that are assembled in South Africa, says Alberts.
Recent activities in the demonstration plant in Stellenbosch have been focused on using new-generation vacuum equipment, and transferring the patented chemical reaction process from a batch furnace to an in-line furnace.
This progress was made possible through Singulus’s engineering contribution.
“We did manage to successfully reproduce the material quality of the semiconductor films within the in-line furnace,” says Alberts. “The in-line furnace is really designed for mass production, so this was important.
“These various developmental stages underline the importance of the demonstration plant to qualify the equipment and raw material during actual production conditions,” he adds.
The plan is not to close the demonstration plant should any megaplant(s) come into production, but to use it for continuous research, development and product refinement.
Alberts confirms that the PTiP-Singulus JV is indeed looking at establishing a large commercial plant in South Africa, most likely in Gauteng, as the glass substrate is the most expensive part of TFSM technology.
“You want to be close to the raw material supplier and close to the market”.“[
However],” he warns, “it would be inappropriate to make any announcements on the timeline for such plants yet. We can only confirm that we are in high-level discussions with local and national government to commercialise the technology in South Africa.
“We also have interest from China, but we first want to commercialise the technology in South Africa.”
Alberts says the design and construction of a 150 MW to 250 MW plant will take around 18 months to complete.
During the time it will take to launch such a project, the current product will be evaluated in demonstration projects across the country to ensure compatibility with the harsh South African environmental conditions.
This process will be conducted in parallel with international certification.