Green Patent Blog®

David Kappos, the Director of the U.S. Patent and Trademark Office (USPTO), recently authored a guest column for Law360 in which he discussed the role of the USPTO and green patents in addressing climate change.

The piece, entitled “Patents Key to Fighting Climate Change,” reads like a mini-state of the union address for the USPTO and green technology.  In it, Kappos stresses the important role that the patent system plays in fostering clean tech innovation and touts USPTO initiatives relating to green technologies.

The article cites the following USPTO green technology programs:

the Green Technology Pilot Program that allows accelerated examination of patent applications relating to environmental quality, energy conservation, renewable energy resources or greenhouse gas emissions reduction (see my post about this program here)

an initiative to generate empirical data on the relationship between patents and international tech transfer

research on green technology innovation and diffusion in  China

development of a green technology web site to link inventors who want to license their their inventions with companies that want to develop them;

development of IP policies for R&D collaborations between the U.S. and other countries such as India and China

Mr. Kappos says that all of the initiatives are based upon a “deep understanding that timely and properly issued patents foster green technology innovation and promote widespread access to the benefits of such innovation.” 

According to Kappos:

the United States Patent and Trademark Office is committed to doing its part to ensure that the patent system fosters and incentivizes the creation, development and diffusion of green technology.

The Computer and High Technology Law Journal (CHTLJ) at Santa Clara University School of Law is hosting a symposium next week on legal issues in clean technology, including a panel discussion on international IP issues.

The event will be held on Friday, January 29, 2010 at the Computer History Museum in Mountain View, California, and California MCLE credit is available for those who attend.

The event is entitled “The Clean Technology Revolution:  Developing Solutions for Tomorrow’s Legal Challenges” and consists of four panel sessions, including a discussion with in-house counsel and venture capitalists about the issues affecting their businesses, legal issues raised by the smart grid, issues in international IP and technology transfer, and the impact of government regulation and access to government funding. 

The keynote speaker will be Paul Dickerson, former COO of the U.S. Department of Energy’s Office of Energy Efficiency and Renewable Energy and current partner at the Haynes and Boone law firm.

I will be participating in the panel session on international IP issues along with Todd R. Miller of Jones Day, Cal - Berkeley Economics Professor Bronwyn Hall and Santa Clara Law Professor Colleen Chien.

More about the symposium and registration info are available online at the CHTLJ web site here.

Last week the U.S. Patent and Trademark Office (PTO) announced an expedited examination procedure for clean tech patent applications. 

The Green Technology Pilot Program allows applications relating to improving environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions to be advanced out of turn for substantive examination.

Applicants that wish to participate in the program need to file a petition with the PTO requesting participation and indicating that their patent application complies with the program requirements. 

The window of opportunity is nominally one year:  the program launched on December 8, 2009, and petitions must be filed before December 8, 2010.  However, only the first 3,000 petitions will be accepted.

The basic eligibility requirements are as follows:

the application is a non-reissue, non-provisional utility application filed before December 8, 2009 for which a first office action has not been issued;

the invention is classified in one of the specific technological classes approved as a “green technology” class;

the application has three or fewer independent claims, 20 or fewer total claims and no multiple dependent claims (the applicant can file a preliminary amendment to bring the application in compliance with this requirement);

the application claims a single invention directed to environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions; and

the applicant must request early publication of the application.

Compared to the established procedure for expedited examinations, the pilot program has the tremendous advantage that it does not shift much of the examination workload to the applicant by requiring submission of prior art analysis in an onerous Examination Support Document.

The PTO joins at least the U.K. Intellectual Property Office and the Korean Intellectual Property Office in creating a procedure to expedite green patenting.

The Korean Intellectual Property Office (KIPO) recently announced that green patent applications are now eligible for “super speed” examination that provides examination results in just one month.

The special examination procedure applies to patent applications directed to several categories of technologies relating to the environment or “low-carbon green growth.”

To qualify for the super speedy examination, green patent applicants must request that a prior art search be conducted by one of the three search agencies officially sanctioned by KIPO.

According to the KIPO press release (see 10/20/09 item), the super speed system was to start on October 1 and will cut the already quick Korean timeline “from application to acquire a patent” from an average of 18 months (or three months for preferential examinations) to a stunningly short period:

Using the superspeed examination system . . . the period can be slashed to less than a month, the fastest examination period in the world.

Thanks to Stu Soffer for bringing this news to my attention. 

There’s some catching up to do on green patent developments.  First, the 2009 second quarter report of the Heslin Rothenberg firm’s Clean Energy Patent Growth Index (CEPGI) came out last month.  CEPGI tracks clean tech patent filings in the U.S.

According to CEPGI, 274 clean tech patents were granted in the U.S. in the second quarter of 2009 - the highest quarterly total ever. 

Fuel cell patents led the pack with 156 granted patents, followed by wind power technology (43) and solar (36).  All of those categories saw increases from the first quarter of 2009.

Although hybrid/electric vehicle patents fell from 30 in the first quarter to 20 in the second quarter, automotive companies still obtained the most clean tech patents.  Honda led with 17, GM had 15 and Toyota 12.

What happens to all of these green patents after they are granted?  The European Patent Office (EPO), along with the U.N. Environment Programme and the International Centre for Trade and Sustainable Development, is trying to find out.

To better understand the role of patents in transfer of and access to clean technologies, the EPO is conducting a survey on licensing practices in the area of environmentally sound technologies (ESTs).  ESTs are defined as:

technologies that protect the environment, are less polluting, use resources in a more sustainable manner, recycle more of their waste and products, or handle residual waste in a more acceptable manner than the technologies they substitute

The survey was launched in early August and information collection is set to close on September 25th.

The EPO hopes the results and findings of the study will provide guidance for the U.N. Framework Convention on Climate Change Conference in Copenhagen in December, where IP rights and transfer of clean technologies is likely to be a hotly contested topic.