Making use of expedited examination for Greentech
Published on 21 Jun, 2013
We have reported previously on the increasing importance of green technologies in the world of intellectual property. In recent years, IP buzzwords have included superconductors, gene patents, business methods and computer software. Society’s ever-increasing environmental awareness now dictates that greentech is the latest vogue.
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 a quarter-century 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. Accordingly, at least in the patent world, the term greentech is interpreted fairly broadly.
Notwithstanding, the Australian Patent Office has 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 must 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 a first Examination 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 sometimes akin to a commitment to pay. Of course, as with everything in the patent game, how best to proceed is a delicate balancing act.
Another feature that must be considered when deciding whether or not to request expedited examination of a greentech patent application – especially in Australia, relates to claim scope. Australian patent Examiners frequently draw upon the prosecution history of any US or EP counterpart applications. Accordingly, there is the potential to obtain relatively broad coverage in Australia by first requesting expedited examination – and then relying on the possibility that the corresponding US/EP prosecutions are not yet significantly advanced. Of course, this must be counterbalanced against the likelihood – and with it, expense, of later needing to file post-acceptance voluntary amendments to the Australian claims in order to keep them valid in view of prior art later uncovered elsewhere.
Australia is not the only country to offer expedited examination for greentech – indeed, the United Kingdom, United States, South Korea, Japan, China, Israel and now Canada offer (or have offered) 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.
There is evidence – both anecdotal and tangible, that patent applicants are making good use of the expedited examination platform. For instance, the United Kingdom Intellectual Property Office has granted well over a hundred patents under the Green Channel Patent Examination Acceleration scheme, which is purported to reduce the average pendency of a UK patent application from around 36 months to less than eight.
Another way in which expedited examination of greentech patents may be attractive to a patentee comes by way of the various Patent Prosecution Highway (PPH) agreements that exist between certain countries. For instance – and in theory, one may look to invoke the AU-US PPH by using a quickly-granted Australian greentech patent as the basis for expedited examination in the USPTO. However, anecdotal evidence suggests that proceeding via the dedicated route for greentech patents is likely to be the quicker option. Nonetheless, the various PPH mechanisms remain useful supplementary options for the expeditious grant of a greentech patent in certain foreign jurisdictions.
*Our 14 month estimate is pre-Raising the Bar. As readers will know, prior to the provisions of the new legislation coming into effect on 15 April 2013, the Australian Patent Office was flooded with a deluge of examination requests (thereby capturing any such application as an old Act case). A likely consequence of this is that in many cases, the usual 14 month wait for a first Examination Report is likely to double or even triple while the backlog is cleared. The benefits of being able to request expedited examination are therefore clear in this regard.