Patentes Permanentes Verdes in Brazil; Battery Battles at the Board and Border

Before turning to 2017 news, we’ll first briefly catch up on a few stories from December.

In early December, the Brazilian green patent priority examination program (see my original post here and a subsequent critique of the program here) became a permanent service.

Started as a pilot program by the National Institute of Industrial Property in April 2012, Resolution No. 175/2016 made the program permanent on December 6, 2016.

The requirements to participate in the program remain the same:

The application is a utility patent application;

The application is a national application (resident or non-resident);

The application was filed with INPI on or after January 2, 2011; and

The application contains a maximum of 15 claims in total, with up to three independent claims.

Eligible green technologies fall under the following categories: alternative energy, transportation, energy conservation, waste management and agriculture.

During the pilot phase, 325 of 480 applications were accepted and expedited with an average prosecution time of about two years.  The Clarke Modet law firm reported on this here.

LG Chem logo

Previous posts (e.g., here and here) discussed the litigation between Celgard, a North Carolina company that manufactures specialty membranes and separators for lithium ion batteries, and LG Chem.

The patent at issue is U.S. Patent No. 6,432,586 (’586 Patent), entitled “Separator for a high energy rechargeable lithium battery” and directed to a separator including a ceramic composite layer and a polyolefinic microporous layer.  The ceramic layer has a matrix material and is adapted to block dendrite growth and prevent electronic shorting.

After the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office invalidated claims 1-11 of the ‘586 patent in an inter partes review, Celgard appealed.

In a one-line per curiam order handed down December 13, 2016, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB decision.


There was a major development in the litigation between chemical giant BASF and UChicago Argonne LLC (Argonne), on the one hand, and Belgium-based Umicore and Japan-based Makita Corporation involving two patents relating to cathode materials for lithium-ion batteries.

As reported in a previous post, BASF and Argonne filed a complaint in the U.S. International Trade Commisson (ITC) in February 2015 asking the ITC to investigate whether Umicore, Makita and their U.S. subsidiaries imported and sold in the United States lithium ion cathode materials and batteries that infringe U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent).

In a December 16, 2016 order, the ITC found that Umicore induced infringement of the asserted patents through conduct relating to imports of the battery materials.

The order expanded upon a prior determination by an ITC administrative law judge that Umicore was liable for contributory infringement of the patents.  The ITC also issued a limited exclusion order banning importation of Umicore’s lithium ion cathode materials into the United States.

The ‘082 and ‘143 Patents are both entitled “Lithium metal oxide electrodes for lithium cells and batteries” and directed to a lithium metal oxide positive electrode for a non-aqueous lithium cell.

Read BASF’s press release about the ITC decision here.

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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.