As discussed in a previous post, the Brazilian National Institute of Industrial Property (INPI) recently announced a Green Patent Fast Track designed to provide accelerated examination of patent applications related to “Green” technology in Brazil. 

At first glance this looks like an admirable step towards incentivising the development and commercialisation of Greentech in Brazil.  Unfortunately, the reality is that the INPI has implemented a restricted programme that appears to be of limited use in accelerating technologies owned by non-Brazilian applicants.

The programme is restricted because it is limited to only “National” patent applications.  By this, the INPI means a patent application that is not a “PCT national phase” application.  

More particularly, the programme only covers applications originally filed in the INPI, or filed as a Paris Convention application in the INPI within one year of the original priority filing. 

It is likely that the vast majority of patent applications for green technologies would be made internationally via the PCT International system and therefore excluded from Brazil’s fast track programme. 

The programme therefore appears to be directed more at developing the domestic Greentech industry rather than assisting with the protection of green technologies in general. 

It is an open question whether the boost to the domestic Greentech industry outweighs the economic benefits that could have been provided by also encouraging commercialisation and investment from the overseas Greentech industry. 

That being said, any expedited examination in Brazil is a welcome development.  There is a large backlog of unexamined applications in Brazil and the average time before a patent is examined by the INPI is over five years.  This is the slowest average examination period of any of the major economies.  

Additionally, Brazil has one of the lowest patent grant rates in the world – just 2 percent of Brazilian basic patent applications were granted between 2001 and 2010.  When compared with China (22 percent) and India (19 percent), it is clear that grant of your patent application is Brazil is far from a foregone conclusion. 

The delay and difficulty in obtaining a patent in Brazil is likely to be a major turn-off for overseas Applicants.  A Greentech pioneer from overseas is unlikely to seek to introduce its product to a market where the possibility and degree of protection is so uncertain. 

By considering only national applications, it is likely that the delays at INPI will continue to discourage the development and commercialisation of overseas Greentech in Brazil.  Also, local competitors seeking to commercialise similar technology may be discouraged by the uncertainty of whether their product will infringe any patent that is finally granted.

As mentioned above, applicants from abroad do have the opportunity to make use of the programme if they file a Paris Convention application in Brazil prior to 12 months from the priority application filing date.  This option could lead to a surge in Convention applications into Brazil but would only be practical if sufficient funds are available and Brazil is known to be a viable future market for the invention at this early stage. 

While cynics may argue that INPI’s new Green Tech Fast Track is more about domestic economics than saving the planet, even a small step towards development of green technologies is better than no step at all. 

*Dr. Tim Stirrup is a Patent Attorney with Baldwins Intellectual Property in New Zealand and represents a number of clients in the Greentech sphere.

 

Green Patent Blog is on vacation.

 

 

 

There have been several green patent complaints filed in the past several weeks in the fields of biofuels, LEDs, lithium ion batteries, and industrial water purification.

Biofuels

Gevo, Inc. v. Butamax Advanced Biofuels, LLC and E.I. DuPont De Nemours and Co.

On April 10, 2012, Gevo filed suit against Butamax and DuPont in the United States District Court for the District of Delaware alleging Butamax and DuPont are infringing one of its patents related to the production of isobutanol.  This suit is the latest salvo in litigation between Gevo and Butamax.  (see previous posts here, here, here, and most recently here.)

The asserted patent is U.S. Patent No. 8,153,415, entitled “Reduced By-Product Accumulation for Improved Production of Isobutanol” (the ‘415 Patent).  The ‘415 Patent issued on April 10, 2012, the same day Gevo filed this latest suit against Butamax. 

According to the complaint (Gevo-Butamax_Complaint-4-10-12), the ‘415 Patent describes “recombinant isobutanol-producing microorganisms containing a disruption in the expression or activity of an endogenous 3-keto acid reductase activity and methods for producing isobutanol using such organisms.”

Gevo’s complaint alleges Butamax makes infringing microorganisms to produce isobutanol through deletion or inactivation of the YMR226c gene.  Gevo claims Butamax describes its infringing process in PCT Publication No. WO/2011/159853, entitled “Recombinant Host Cells Comprising Phosphoketolases”, and PCT Publication No. WO/2011/159998 entitled “Production of Alcohol Esters and In Situ Product Removal During Alcohol Fermentation”.

Gevo is seeking preliminary and permanent injunctions and damages.

 

LEDs

Whelen Engineering Company, Inc. v. CPS Emergency LED Lighting & Equipment

Filed March 29, 2012 in the United States District Court for the District of Connecticut, Whelen’s complaint (Whelen Complaint) alleges CPS infringed U.S. Patent Nos. 6,641,284, entitled “LED Light Assembly”, and D500,384, entitled “Reflector for Light Assembly”.

Whelen also alleges CPS has infringed several of its trademarks.  The marks at issue are Whelen’s LINEAR-LED, FREEDOM and VERTEX marks.  Whelen claims CPS has either used identical marks or confusingly similar marks.

Whelen is seeking treble and punitive damages and injunctive relief.  They are also seeking CPS’s alleged infringing products be destroyed.

Lektron, Inc. v. iLight Technologies, Inc.

Lektron, Inc. v. Philips Solid-State Lighting Solutions, Inc.

Lektron, Inc. v. The Sloan Company, Inc. dba SloanLED, Inc.

On April 6, 2012, Lektron filed three separate suits in the United States District Court for the Northern District of Oklahoma alleging that iLight, Philips and SloanLED have each infringed U.S. Patent No. 6,361,186 entitled “Simulated Neon Light Using LED’s” (‘186 Patent).  (Each complaint can be viewed here: (Lektron-iLight Complaint) (Lektron-Philips Complaint) (Lektron-Sloan Complaint)).

The ‘186 Patent describes a product designed to replace traditional neon lights with a more durable product that consumed less energy by replacing fragile glass tubes with energy efficient LED lights.  The Lektron product is sold under the LEON trademark.

Lektron is alleging direct infringement and is seeking injunctive relief and damages from each defendant.

Everlight Electronics Co. Ltd., and Emcore Corporation v. Nichia Corporation, and Nichia America Corporation

On April 19, 2012, Everlight filed suit against Nichia (Everlight-Nichia Complaint) in the United States District Court, Eastern District of Michigan, Southern Division, seeking declaratory judgment for patent non-infringement, invalidity, and unenforceability of two of Nichia’s patents, and alleging Nichia is infringing one of its patents.

Everlight is seeking declaratory judgment for patent non-infringement, invalidity, and unenforceability of two patents owned by Nichia:  U.S. Patent Nos. 5,998,925 entitled “Light Emitting Device Having a Nitride Compound Semiconductor and Phosphor Containing Garnet Fluorescent Material” (‘925 Patent), and 7,531,960 entitled “Light Emitting Device with Blue Light LED and Phosphor Components” (‘960 Patent).

Nichia recently filed suit against an Everlight customer in a Tokyo District Court asserting the Japanese counterpart to the ‘970 Patent (Japanese Patent No. 4350094).  Nichia also filed suit against Everlight in Germany asserting the European counterpart to the ‘925 Patent (European Patent No. EP 0 936 682). 

According to the Everlight complaint, Nichia has threatened litigation over several other patents in Japan, and Everlight prevailed in a patent infringement action initiated by Nichia in Taiwan.  This suit, filed by Everlight, is in response to the suits Nichia has filed and the threats Nichia has made to Everlight’s potential clients.

In addition to seeking declaratory judgment for non-infringement and invalidity, Everlight is seeking declaratory judgment that the ‘960 and ‘925 patents are unenforceable due to fraud and inequitable conduct during prosecution by Nichia.

Everlight is also asserting that Nichia infringes U.S. Patent No. 6,653,215 entitled “Contact to N-GaN with Au Termination” (‘215 Patent).  Everlight is seeking damages, attorney fees and costs.

 

Lithium Ion Batteries

Energizer Holdings, Inc., Eveready Battery Company, Inc., v. Wahl Clipper Corp., and Wahl Clipper Ningbo Ltd.

Filed April 11, 2012 in the United States District Court for the Northern District of Illinois, Eastern Division, Energizer’s complaint (Energizer_Complaint) alleges that Wahl infringes several of its patents.  The patents in dispute are U.S. Patent Nos.:

5,290,414 entitled “Separator/Electrolyte Combination For a Nonaqueous Cell”;

7,923,138 entitled “Housing for a Sealed Electrochemical Battery Cell”;

7,968,230 entitled “High Discharge Capacity Lithium Battery”;

8,007,940 entitled “Separator/Electrolyte Combination For a Nonaqueous Cell”; and

RE41,866 entitled “Nonaqueous Electrochemical Cell with Improved Energy Density”.

Energizer claims Wahl makes, offers for sale, imports and is selling products containing the asserted patents in its Lithium Pen Trimmer.  They are seeking preliminary and permanent injunctions, treble damages and attorney fees.

 

Water Purification

Aquatech International Corp., and Debasish Mukhopadhyay v. N.A. Water Systems, LLC, and Veolia Water Solutions & Technologies Support

On April 4, 2012, Aquatech filed suit in the United States District Court for the Western District of Pennsylvania against Water Systems and Veolia Water seeking a declaratory judgment that U.S. Patent No. 7,815,804, entitled “Method for Treating Wastewater or Produced Water” (‘804 Patent), owned by N.A. Water and Veolia ( a subsidiary of N.A. Water), is invalid and unenforceable and that its products do not infringe the ‘804 Patent. (Aquatech Complaint)

Aquatech is a licensee of U.S. Patent Nos. 5,925,255 entitled “Method and Apparatus for High Efficiency Reverse Osmosis Operation” and 6,537,456 entitled “Method and Apparatus for High Efficiency Reverse Osmosis Operation” (though these patents are not asserted in this complaint). 

Aquatech’s patents related to its HERO water purification process.  The HERO process uses the patents in a high efficiency reverse osmosis water purification process which is used in many industries including power generation, petrochemical, and microelectronics.  The HERO technologies have been licensed to companies such as General Electric and Intel.

Aquatech claims N.A. and Veolia have coerced and intimidated potential customers into using Veolia’s OPUS water purification process (described in the ‘804 Patent) under threat of patent litigation – claiming the HERO process infringes upon the OPUS process.  Aquatech claims Veolia knew, or should have known, that the HERO process does not infringe the OPUS process and that such claims of infringement were false.

Aquatech is seeking a declaration that the HERO process does not infringe the OPUS process, that each claim of the ‘804 patent is invalid, and that the ‘804 Patent is unenforcable due to inequitable conduct.

 

As readers of this blog know, the Korean Intellectual Property Office (KIPO) offers a “super speed” fast track program for patent applications directed to green technology inventions.

However, to qualify for this program the invention must have received funding or a green certification from the Korean government, and only Korean corporations are eligible to petition for the certification. 

In other words, if an applicant from the U.S. or any other country wishes to receive the benefits of the one-month fast track program and has not received Korean government funding, the applicant would have to register as a business entity in Korea to petition for the certification.

Since a patent applicant is required to submit the green technology certificate to apply for the one-month fast track program, a non-Korean patent applicant who cannot petition for the certificate before registering as a Korean business entity is, in effect, forbidden from applying for the one-month fast track program.

This different treatment of non-Korean applicants may be a violation of certain international treaties relating to trade and intellectual property, particularly Trade-Related Aspects of Intellectual Property (TRIPS) and the General Agreement on Tariffs and Trade (GATT).

Members of the World Trade Organization (WTO) such as Korea are bound by TRIPS and other multilateral treaties, e.g., GATT, which constitute an integral part of WTO agreements. 

Under Article 3.1 of TRIPS, the national treatment obligation, a member “shall accord to nationals of the other Members treatment no less favorable than it accords to its own national with regards to the protection and enjoyment of intellectual property.”

Article III:4 of GATT lays out a similar national treatment obligation.  According to the jurisprudence of GATT Art. III:4, if there is a detrimental effect on an imported product resulting from a procedure implemented by a member state, and that detrimental effect is not explained by factors or circumstances unrelated to the foreign origin of the product, the procedure implies less favorable treatment to imports.

Although patent applications and IP rights are not “goods” the basic principles of GATT are applicable to TRIPS.  Furthermore, since the national treatment obligation has long been a cornerstone of the WTO and a fundamental principle underlying GATT, the jurisprudence on GATT Art. III:4 is useful in constructing the national treatment obligation of TRIPS Art. 3.1.

The recently signed U.S.-Korea Free Trade Agreement (UKFTA) may also be relevant here as it mimics the language of TRIPS Art. 3.1 in UKFTA Art. 18.6 (“In respect of all categories of intellectual property … each Party shall accord to nationals of the other Party treatment no less favorable than it accords to its own nationals with regards to the protection and enjoyment of such intellectual property…”).   

Here, applicants for the KIPO’s one-month fast track program who are foreign nationals must go through the additional hurdle of registering with the Korean government as business entities (e.g., individual business owner, or corporation) to petition for green technology certification. 

Arguably, KIPO’s implementation of the one-month fast track program constitutes less favorable treatment to non-Korean applicants, since they cannot apply for the program due to their status as foreign nationals, while Korean business entities can apply for the program and receive the benefits of early patent grants. 

KIPO’s practice of subjecting foreign applicants to the additional procedure of registering as a Korean business entity before they can receive the benefits of the one-month program may constitute “less favourable treatment” accorded to foreign nationals. 

Accordingly, current KIPO practice of requiring a green technology certificate in order to apply for the one-month fast track program may be a violation of TRIPS Art. 3.1 and UKFTA.

*Ji Young Park is a J.D. candidate at Notre Dame Law School, Senior Article Editor for Notre Dame Journal of Legislation, and a Korean patent attorney.