An article regarding Global Initiatives of Cleantech Patents written by Peter A. Jackman and Lori M. Brandes, Ph.D. of Sterne, Kessler, Goldstein & Fox P.L.L.C. appeared recently in The National Law Review:
In an effort to promote the development and commercialization of technologies that conserve natural resources or reduce negative environmental impact, patent offices around the world have adopted programs to expedite the examination of patent applications pertaining to clean technologies.
On September 15, 2009, IP Australia announced a fast-track examination program for patent applications directed to environmentally friendly technologies. Examination of applications under the program is expected to begin within four to eight weeks after filing the request for expedited examination and no additional fee is required.
The National Institute of Industrial Property (INPI) launched a program on April 17, 2012 to accelerate the patenting of green technologies in alternative energy, transportation, energy conservation, waste management, and agriculture. The goal of the program is to reduce the average prosecution time of an application from over five years to less than two years. The program is limited to the first 500 petitions granted and to applications originally filed on or after January 2, 2011 in the INPI or filed as a Paris Convention application in the INPI within one year of a priority application.
The Canadian Intellectual Property Office issued an initiative on March 3, 2011 to accelerate the examination of patent applications pertaining to green technology. Under the initiative, a patent applicant can request accelerated examination by submitting a declaration stating that the application relates to a technology that could help to resolve or mitigate environmental impacts or conserve the natural environment and resources if commercialized, with no additional fee required.
Effective August 1, 2012, prioritized examination of applications relating to energy conservation, environmental protection, or green technologies will be available in China. Applicants must submit a search report by a qualified entity or a translation of a search report issued by another country. Once a request for prioritized examination is granted, a first office action is expected to issue within 30 days and prioritized examination is expected to be completed within one year.
A new category of applications that could receive priority examination was created for “green patents” by the Israel Patent Office on December 27, 2009. To request priority examination, the applicant must provide an explanation as to why the invention helps advance environmental protection; however, the declaration and extra fees normally required for priority examination are not required. After qualifying under the program, these “green” patent applications will be examined within three months.
On November 1, 2009, the Japanese Patent Office implemented a program allowing for the accelerated examination of “green inventions” having a beneficial effect on the environment through low energy consumption or reduction of carbon dioxide emissions. Under the program, an applicant can receive a first office action in about two months.
The Korean Intellectual Property Office launched a fast-track examination program on October 1, 2009 for patent applications related to certain categories of green technologies. Under this program, an applicant must submit results of a prior art search along with a request for fast-track examination, and a first office action will be issued within one month of the request.
On May 12, 2009, the United Kingdom Intellectual Property Office created a “Green Channel” program whereby an applicant can request accelerated processing of an application by indicating (1) that the invention relates to a “green” or environmentally friendly technology, and (2) which actions the applicant wishes to accelerate (i.e., search, combined search and examination, publication, and/ or examination). The program applies to existing applications and applications filed after May 12, 2009. A searchable public database of published applications in the Green Channel program is available. As of August 3, 2012, the database contains over 500 applications.
The Green Technology Pilot Program for expediting examination of clean technology applications closed earlier this year, with over 1,050 patents issued under the program. However, other accelerated examination options applicable to all technologies are still available for clean technology applications. These options include the U.S. Patent and Trademark Office’s (USPTO’s) Prioritized Examination Program (Track I), the Patent Prosecution Highway, the Accelerated Examination Program, and a Petition based on Applicant’s Age or Health. Under the Track I program, an application is advanced out of turn for examination upon payment of a $4,800 petition fee, reduced by 50% for qualifying small entity applicants. The USPTO’s goal is to provide a final disposition of a Track I application within 12 months of prioritized status being granted. A maximum of 10,000 requests will be granted under Track I per fiscal year, and approximately 3,000 have been granted so far in fiscal year 2012. The average pendency of a Track I application from the grant of a Track I request to the issuance of a first office action on the merits is approximately 1.5 months, and the average pendency from the grant of a Track I request to a final disposition of the application is approximately 5 months.
In view of the numerous international opportunities for accelerated examination and the growing importance of clean technologies, patent applicants should carefully consider these expedited options as part of a global IP strategy to patent their environmental innovations and bring them quickly to market.
© 2012 Sterne Kessler