Expedited patent examination For “green” technologies
Published on 24 Apr, 2011
Unlike gene patents and computer software, there is a general acceptance that green technologies should patentable – the few dissenters who argue that such technologies should be in the public domain appear to overlook the basic quid pro quo of the “patent bargain” –being that without the prospect of patent protection, researchers would have no incentive to develop such technologies in the first place. In this respect, any patentability issues surrounding green technologies are more closely akin to those experienced 25 years ago in respect of superconductors – in other words, how can the patent system be poked and prodded in order to better accommodate these technologies?
Any special treatment for green technologies of course first requires a standard definition of precisely how ‘green’ any new technology must be in order to qualify. On the one hand, a technology that potentially mitigates an environmental problem or provides a solution “sets the bar” rather high – and excludes “net-red-relative-green” technologies that although ‘greener’ than existing competitor technologies, may still cause some degree of environmental damage. On the other hand, it could be argued that these technologies (for instance, a more environmentally-friendly method for manufacturing cement) are just as deserving.
Notwithstanding, the Australian Patent Office has recently offered to expedite examination of patent applications relating to green technologies. Of itself, this is nothing new – indeed, expedited examination has been offered for many years, irrespective of technology. However, as a reason need by given in order to have examination expedited, this platform has largely been the domain of applicants wishing to expedite grant of their application with a view to commencing infringement proceedings as soon as possible thereafter – or those requiring a granted patent as a condition of obtaining inventor funding. Expedited examination typically saves the applicant around 14 months of waiting for the first Official Report to issue from the Examiner – and the potential benefits are clear in this regard. With this new concession, a reason such as “this application relates to green technology” will be just as valid as those typically employed in the past.
On the other hand, proceeding in the ‘regular’ manner and not applying for expedited examination provides an applicant with additional time in which to determine whether their invention is commercially viable; this is important on a cost basis given that a decision to proceed with patent prosecution is often akin to a commitment to pay. Of course, as with everything in the patent game, how best to proceed is a delicate balancing act.
Australia is not the only country to offer expedited examination for greentech – indeed, the United Kingdom, the United States, South Korea, Japan, China, Israel and now Canada offer such a platform. Although the respective rules and eligibility criteria may be slightly different from those of Australia, the above-noted “pros and cons” are just as applicable in an international context.
In response to the increasing recognition being afforded to green technologies throughout the patent world, Shelston IP has in place a “Green IP Team” comprising professional staff from varying scientific, engineering and legal backgrounds. We are well placed to advise clients as to how best to prosecute their “green” technologies by making best use of the various facilities available under the Australian and the various international patent systems.