Green Technology Patents: Protecting Innovation

In the ongoing aftermath of over a half-decade of floundering economies worldwide, few industries today present as much promise for the foreseeable future as green technology. Despite economic setbacks in recent years and despite the continued skepticism by some on the causes of climate change, a growing number of countries have been eager to accelerate their transition to a cleaner energy system and, to accomplish this, have been seeking access to green technologies on favorable terms and on a growing scale.

What has been documented and supported by mounting evidence is that global climate changes are unquestionably occurring. In recognition of the importance of the development and implementation of green technologies in mitigating climate change, governments around the world have, in particular, recently acknowledged the value of ‘green patents’ in furthering efficiency, climate protection, green businesses and competitiveness on a global scale.

Green Patents and Fast-Track Examination
While the definition of what constitutes a green patent varies across countries, in the US they are typically considered to encompass inventions which pertain to environmental quality, energy conservation, development of renewable energy or greenhouse gas emission reduction. To this end, in recent years many governments have enacted revised patent examination procedures in their respective patent offices to promote and stimulate green patents and hence, green innovation.

Indeed, the question of intellectual property in clean energy technologies was an important topic of negotiation during the United Nations Climate Change Conference, popularly referred to as the Copenhagen Summit, held from December 7-18, 2009 in Copenhagen, Denmark. The conference included the 15th Conference of the Parties (COP 15) to the United Nations Framework Conven­tion on Climate Change (UNFCCC) and the 5th Meeting of the Parties (MOP 5) to the Kyoto Protocol. Other key topics discussed during the Copenhagen Summit included frameworks for climate change mitigation and associated goals of developed and developing countries to reduce carbon emissions.

The first so-called green patent ‘fast-track’ scheme was launched by the UK in May 2009, as a preface to the Copenhagen Summit. The U.S. Patent and Trademark Office (USPTO) has been no exception to joining the wave of efforts to spur green technologies and launched the Green Technology Pilot Program on December 8, 2009, also intentionally timed to coincide with the COP15 United Nations Climate Change Conference, to accelerate the examination of certain patent applications related to green technology.

A number of other countries have also commenced green patent fast-track programs to accelerate examination of green patents, including Australia (September 2009), South Korea (October 2009), Japan (November 2009), Israel (December 2009), Canada (March 2011), Brazil (April 2012) and China (August 2012). In the USPTO, as with most other patent offices, patent applications are normally taken up for examination in the order that they are filed. Under the Green Technology Pilot Program, however, pending patent applications in green technologies were eligible to be advanced out of turn (accorded special status) and given expedited examination, without having to meet all of the requirements of the other programs offered by the USPTO, namely the accelerated examination (AE) program or the Track I Prioritized Examination (PE) program, and without requiring payment of additional USPTO fees.

This was expected to have the effect of reducing the time it takes to patent these technologies by an average of one year. Earlier patenting of these technologies would advantageously enable inventors to secure funding, create businesses, and bring vital green technologies into use much sooner.

“Every day an important green tech innovation is hindered from coming to market is another day we harm our planet and another day lost in creating green businesses and green jobs,” then- Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos remarked. He further stated that “Applications in this pilot program will see a significant savings in pendency, which will help bring green innovations to market more quickly.”

To qualify under the USPTO’s Green Technology Pilot Program, petitions for expedited processing of an application were required to state how the application was related to: (1) the development of a renewable energy source or energy conservation, or (2) the reduction of greenhouse gas emissions.

Unlike the green patent fast-track programs in other countries, the USPTO’s Green Technology Pilot Program was intended from the start to be a temporary program. Initially, the USPTO stated it would accept only the first 3,000 petitions to make request under the Green Technology Pilot Program filed before December 8, 2010.

Due to the program’s success, however, it was modified several times during its implementation to extend filing deadlines for applicants. The pilot program was ultimately extended until March 30, 2012, or the date that 3,500 applications were accorded special status under the program, whichever occurred earlier.

On or around February 15, 2012, the USPTO reached the limit of 3,500 applications and accordingly closed the Green Technology Pilot Program to further applications. However, applicants still have the option to fast-tracking examination of their green patent applications in the US via the Track I Prioritized Examination program or the accelerated examination program. Both the Track I and accelerated examination programs require payment of USPTO fees and adherence to different and very specific procedural requirements, and any careful decision of which to pursue requires taking into account a host of pros and cons for each. However, both options ultimately not only provide advancement of examination, but set a target of reaching final disposition within 12 months from the time advancement is initiated.

Meanwhile, the green patent fast-track programs implemented in most other countries continue to be in effect as of this writing.

Looking back, there have been a number of empirical studies analyzing the outcome of the USPTO Green Technology Pilot Program. It was found that in the US most of the green patents issued were in the field of renewable energy technologies, with wind power taking the lead.

In fact, the 500th patent issued through the Green Technology Pilot Program was for a “Wind Turbine Rotor Blade with Aerodynamic Winglet” to General Electric Company (US Pat. No. 8,029,241). That patent wasthe 116th patent secured by General Electric through the USPTO’s Green Technology Pilot Program. Most of the remainder of the green patents issued under the US program involved transport-related technologies (though interestingly most of these patents covered energy-efficient technologies for internal combustion engines and not electric and hybrid vehicles), followed by solar, lighting, efficiency and biotech.

As far as time-to-grant comparisons, overall program statistics showed that participants in the Green Technology Pilot Program obtained patents much more quickly as compared to patent applications filed under the standard examination process. In many instances, applicants had their green technology inventions patented in less than one year from the application filing date.

Nevertheless, some studies showed that while the fast-tracking system works, it remains underutilized. However, this is likely due to the various considerations which must be taken into account by an applicant before deciding to accelerate examination of a patent application.

Strategic Considerations for Pursuing Fast-Track Patent Examination
To illustrate, as noted above, there are several advantages to an accelerated examination process. First, it may allow patent applicants to start licensing their technologies sooner, thereby increasing their revenue. Second, having a granted patent can help those in the clean technology sector raise private capital. Finally, an issued patent may justify taking legal action where infringement is suspected.

However, there are some notable disadvantages in accelerating the granting of a patent, and indeed this could be the reason why in retrospect only a relatively small number of patents eligible for fast-track examination actually are entered into accelerated programs.

First, requesting fast-track examination typically adds increased upfront costs with respect to the initial application filing due to the time and effort involved to ensure compliance with the specific procedural requirements applicable to either Track One Prioritized Examination or Accelerat­ed Examination. Significantly, it is not always in the applicant’s best interest to have a patent published or granted as soon as possible for other more strategic reasons. Often, patent applicants must dance between the need to secure patent protection as early as possible, and the incentive to keep the design of the approved patent open as long as possible. While inventors have strong incentives to file a first (“priority”) application as early as possible because this essentially freezes relevant prior art at the date of application filing, they also must consider the advantages in delaying when their patent will be issued. For example, one important advantage of a long examination period is providing patent applicants with as much time as possible to determine whether it is worth continuing with pursuing the patent in the first place. For certain technology fields, a lengthy patent prosecution period affords the applicant valuable and much-needed time to make sure a patent would be commercially viable by enabling the application to conduct market evaluation and research, product design and development, etc.

In fact, a long ‘wait’ period is one of the key benefits of filing an international patent application under the Patent Cooperation Treaty (PCT) as it provides patent applicants with a total of thirty months from a priority filing to decide whether they want to proceed towards pursuing patent protection in one or more countries worldwide.

Another major advantage of a long examination process is that it provides applicants with more time and hence more opportunities to amend the patent application – in particular the language and/or number of the claims – during the examination process. A patent which is granted early can result in patent protection for an invention that is not yet finalized and for which a market has not yet matured. That is, if granted too early, the design of the patent may not perfectly match the final version of the invention, thus providing an opening for competitors to circumvent the patent.

There are still many who are skeptical of any definitive positive effects to be gained from green technology, much less patent protection allotted to green inventions. Certainly, it can be agreed that there is no single solution that would address all of the complex environmental challenges in our current state of the world, problems which are further compounded by their often intricate connections with socio-economic factors. Indeed, it is argued by some that technology will not and cannot solve our problems, but only prolong the inevitable.

However, environmental problems know no political or geographic boundaries and affect us all, rich or poor, supporters or skeptics, human or non-human. Uncertainty as to causes of a given problem should not condone inaction. Thus, regardless of the differences of opinion over the merits of green technology, over any benefits to be gained therefrom, or even if there is any hope or time left to mitigate climate change, it seems that these worldwide governmental efforts to provide avenues to accelerate examination of patent applications which can offer society concrete solutions to develop renewable energy, improve energy efficiency or reduce greenhouse gases is a sure step in the right direction. Thankfully, it looks like these efforts are here to stay.

Susan Paik is a patent attorney at Tutunjian & Bitetto, P.C. in Melville, practicing in all aspects of patent, trademark and copyright law.