Part II:  Eilat, Israel

In my previous post, I discussed my observations regarding a current and future ‎Cleantech giant – China. As I noted in that post, I also spoke recently at an Israeli ‎Global Cleantech conference, held in Eilat in late November.

Israel has long been an ‎innovation leader in the Cleantech space, a phenomenon driven by the country’s ‎security needs and dearth of natural resources, coupled with a highly educated ‎workforce and established culture of technology innovation.

Interestingly, one of the ‎leading drivers of Cleantech innovation is the Israeli military, which is investing heavily ‎in developing renewable energy sources for its purposes. Of course, many of the ‎military-developed technologies can be easily adapted for civilian use. One example ‎is a portable water purification kit, originally developed for ‎military applications, but also useful for civilian hikers and campers. ‎

A major takeaway from the conference is that the Israeli focus on Cleantech innovation ‎is not wavering in the least. Conference attendees spanned the entire spectrum of ‎Cleantech technology areas, from solar to biofuels to wind.

Because of the start-up ‎nature of many of the Israeli companies in attendance, there was an unsurprising ‎focus on the financing of Cleantech innovation, whether via venture capital or through ‎strategic partnerships with larger corporations.

The importance of a robust patent ‎portfolio as an attractant for that investment was well-understood by the companies ‎exhibiting at the conference, irrespective of whether they were competing in a mature ‎market like solar, or looking to advance a disruptive technology in a less-crowded ‎Cleantech field.  Target markets for Israeli Cleantech products and services include the ‎USA, EU, China, Korea, and India amongst others.

In addition to the awareness of ‎intellectual property as a competitive mechanism, there was also a serious focus at the ‎conference on the importance of quality standards for implementation of Cleantech ‎products in the marketplace. One example discussed was a new Israeli electrical ‎standard applicable to electrical switchboards.‎

In many ways the conference reflected a mature Cleantech focus within the Israeli ‎business, government, and academic communities. While there was a definite ‎expressed interest in uncovering the next big thing in Cleantech, there was also a ‎decided interest in allocating money and brainpower towards tackling present and ‎solvable issues with existing technology.

Interestingly, there was a sizable Chinese ‎presence at the conference, and a spirit of potential future cooperation was in the air, ‎with China supplying the manufacturing capability and Israel the innovation.

And ‎while Israel rightly has earned its place as a net contributor of many promising new ‎Cleantech innovations, it was interesting to see how focused the domestic participants ‎were with also making sure that Israel keeps pace with the world in deploying existing ‎renewable energy technologies – to serve its own energy needs.

Whether that juggling ‎act is successful remains to be seen, but it was heartening to see and experience the ‎vast potential that a country classified as part of the developing world has to help ‎ensure a sustainable future for us all.‎

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

Part I:  Guangzhou, China

Cleantech innovation continues apace, despite the general economic malaise gripping ‎much of the world. Two countries that are heavily invested in renewable energy ‎development are China and Israel.

Despite their extreme differences in population, ‎size, and access to natural resources, these two countries have forced their way onto ‎the global Cleantech innovation stage. Not surprisingly, and as previously noted by ‎this blog, both countries have instituted expedited green patent programs, amongst ‎other policy initiatives aimed at fostering Cleantech innovation. ‎

Both countries recently hosted Cleantech conferences, where I was privileged to speak ‎on “Green” intellectual property issues, and advocate for increased awareness of those ‎issues on the part of the Cleantech business community.  

The first conference I attended was BIT’s 2nd New Energy Forum in Guangzhou, China, in mid-October.  One is ‎immediately struck by the tremendous economic vitality exhibited in Guangzhou, with ‎numerous ongoing construction projects neighboring a like number of recently ‎completed facilities.

With such rapid development on display, there clearly is a market ‎for sustainable products to use in construction in China. And at the conference itself, ‎numerous personalities from the academic and business worlds discussed the ‎importance of an engaged China in advancing the development and utilization of ‎sustainable products and services. ‎

Considering the number of attendees that I spoke to who were there on behalf of ‎various departments of the Chinese national and provincial government industries, it is ‎fair to assume that developing a viable Cleantech sector is an important initiative for ‎China.

And I noticed an increasing awareness among conference attendees of the ‎importance of intellectual property rights in fostering innovation, and for allowing ‎China to continue to compete globally. Even Chinese manufacturers are become ‎increasingly aware of the need to provide a safe home for foreign know-how, so that ‎innovative Cleantech companies will look to China as a manufacturing partner for their ‎products. ‎

Of course, many in China are sensitive to the reputation of their country in the global business ‎community.

Some officials I talked to were very invested in the ongoing trade dispute ‎regarding solar panels manufactured in China, and the allegations of price dumping ‎that are being pursued in some of China’s target export markets, including the USA. ‎While that dispute looks like it will be an ongoing one, the conference made clear that ‎China is interested in developing its Cleantech sector, and increasing its presence in ‎the Cleantech community worldwide.

It remains to be seen how tightly China will ‎adhere to enforcing intellectual property rights domestically, and whether Chinese ‎companies will act responsibly regarding intellectual property rights in foreign markets ‎as well.‎

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

As readers of this blog know, green patent activity continues at a record pace.  Accordingly, Cleantech companies of all sizes need to stay aware of general trends in patent litigation, as the increasing number of green patents in circulation concomitantly increases the likelihood of litigation either now or in the future.

In a ruling whose implications are still unclear for patent litigation in general, Judge Posner of the Seventh Circuit Court of Appeals, sitting by designation on a very high-profile patent case involving Apple and Motorola in Chicago, completely dismissed the claims of each party with prejudice. 

In effect, the Judge found that Apple, as the party filing the case and with the burden of proving damages or a right to injunctive relief, had irrevocably failed in that effort. And because there was no remedy available to Apple, the Judge threw the entire case out and dismissed the action in total.

This decision, coupled with the increased rigor being applied by both District Courts and the Federal Circuit with respect to analyzing patentee damages claims, promises to impact both current and future patent litigations involving Cleantech companies.

While it is unclear at this point how much of an impact Judge Posner’s reasoning will have on other judges, or even whether the Federal Circuit will sign off on it after the likely appeal, it is not too early to start thinking about how current and prospective Cleantech patent litigants should react and proceed.

On the patentee side, this decision, if accepted by the Federal Circuit and other judges – together with the recent spate of other Federal Circuit decisions calling for patent damages to be based on sound economic principles and evidence – simply makes it harder to meet the burden of proof on damages. 

Judge Posner’s earlier orders, whereby he threw out the expert opinions on damages and canceled the trial just days before it was about to begin, contain almost-unprecedented hurdles for patentees to jump through in order to substantiate their damages claims. Accordingly, patentees will need to both budget more money to pay damages experts and be more realistic about going after damages that are provable.

For Cleantech companies currently involved in patent litigation as patentees, there should be an immediate expectation that the defense will undertake serious challenges to the asserted damages model. On that front, patentees may need to be flexible regarding their valuation of the case, and be willing to invest additional resources to buttress their damages claims. 

Future Cleantech patentee litigants will need to invest in a pre-suit damages analysis, and be prepared to face early challenges to the asserted damages model.  While not ideal, from an expense and risk standpoint, more Cleantech patentees will also need to consider moving for preliminary injunctions, particularly in competitor cases.

The defense perspective takes the above considerations and flips them. Cleantech companies currently defending themselves against allegations of patent infringement should immediately focus on the plaintiff’s damages model, and blast away at any infirmities with renewed vigor.

For example, if the plaintiff is acting wishy-washy in terms of even disclosing what its model is for damages, the court should immediately be made aware of this decision, together with a request for immediate disclosure of the damages theory being asserted.  

Likewise, defense counsel should consider pushing early in the case, particularly where no preliminary injunction is being sought, for a patentee disclosure of its preliminary damages contentions.

Needless to say, the usual attacks on the damages opinions of the experts employed by the plaintiff should be pursued, via Daubert motion, summary judgment, or motion in limine as appropriate. 

Meanwhile, potential defendants, including those engaged in license discussions with patentees, should highlight the difficulties and expense that patentees will encounter in proving their damages during litigation, and use that prospective litigation expense as a means of reducing the license cost if possible.

In sum, Judge Posner’s order serves as a good reminder of the centrality of damages to patent litigation. 

Cleantech companies, whether they be patent owners or just likely targets for infringement claims, need to be aware of the current legal landscape regarding patent damages.  Armed with this knowledge, they can be more effective litigants, and even if not in litigation, be better prepared to evaluate the potential value of their patent portfolio, or their infringement exposure vis-a-vis other patentees.

Of course, this area of the law has been action-packed recently, so there should be no surprise if additional earthquakes along the lines of Judge Posner’s recent handling of the Apple v. Motorola case shake the patent litigation landscape even further.

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

How the long arm of the law could reach clean tech investors when their portfolio companies become embroiled in green patent litigation

This blog’s readers are well aware of the critical role private-sector funding, whether through venture capital, investment banks, or other funding mechanisms, plays in furthering Cleantech innovation.  And followers of this blog are increasingly being regaled with dispatches from the burgeoning world of Cleantech patent litigation. 

While the natural temptation of those on the “money” side is to leave the “legal” side to the lawyers, a recent decision in a decidedly non-Cleantech patent litigation serves to put the folks on the “money” side on notice that their Cleantech investment activities may be subject to potentially costly and disruptive ediscovery in current and future patent litigations.

 

A Model Order for Discovery Cost Management in Patent Litigation

By way of background, a few months ago a new Model Order (available here) for conducting ediscovery in patent litigations was announced to great fanfare by Chief Judge Rader of the Court of Appeals for the Federal Circuit.  The Model Order seeks to “promote economic and judicial efficiency by streamlining ediscovery, particularly email production…”  

Importantly, the Model Order is directed to the parties in the litigation, which in a typical patent case would include the patentee or patent owner and the alleged infringer or infringers. 

 

A Recent Decision Extends the Model Order’s Ambit to Non-Party Discovery

In a recent Order (Google_Order) Magistrate Judge Paul Grewal of the U.S. District Court for the Northern District of California’s San Jose Division granted-in-part a Motion to Compel Production of Documents from a non-party in the pending In Re Google patent litigation. 

In that case, the patentee, a company called Software Rights Archive LLC (SRA), filed a patent infringement lawsuit in 2007 accusing technology companies, including AOL, Google, and Yahoo, of patent infringement. 

As part of the festivities in the case, SRA subpoenaed venture capital firm Kleiner Perkins (KPCB) for 34 categories of documents related to KPCB’s investments in AOL and Google, as well as KPCB’s analysis of the technology and valuation of its portfolio companies now named as patent infringement defendants.

KPCB objected to the subpoena, and after SRA filed a motion to compel, KPCB undertook a limited search of its email archives for documents it felt were sought by the subpoena. 

In deciding the motion, the Court was not persuaded that KPCB should be forced to look for and turn over responsive documents in all of the requested categories, but did find merit in SRA’s general claim that KPCB’s limited initial search was inadequate. 

Importantly, the Court looked to “pertinent portions” of the Model Order discussed above, and decided that the “objective of appropriately scaling the burden of electronic document production to its legitimate benefit” extended to non-party discovery – even as the Model Order is “directed to discovery from parties.” 

Having looked to the Model Order for guidance, and upon deciding that it was applicable to non-party discovery, the Court then ordered KPCB to undertake an immediate search of its “email and electronic document files of the five persons most involved in the (sic) KPCB’s investments in Google and AOL”, using targeted search terms to be supplied by SRA. 

And KPCB was to absorb the cost of that search, unless SRA’s search terms were found to be “beyond the limits”, in which case SRA would need to bear the fees and costs of that additional discovery.

 

The Implications for Cleantech

It is uncommon for investors in alleged infringers to be named as a party in a patent case (although one clean tech exception was discussed in a previous post). 

However, as the Order from In re Google demonstrates, what is becoming increasingly common, particularly in industries such as software/ecommerce and biotech that are heavily-driven by private-sector funding, is for those investors to become the target of subpoenas seeking information regarding their relationship with their portfolio company that is ensnared in a litigation, as an alleged infringer or even as a patentee.  

And the Cleantech investment community is sure to join those other industries as a subpoena target as patent litigation involving investor-backed Cleantech companies increases.

In light of the recent Order in the In Re Google patent litigation, the Cleantech investment community should prepare for a limited ability to completely quash discovery subpoenas in current or future patent litigation involving their respective portfolio companies as litigants. 

Investors should be proactive in confronting an inevitable future of increased Cleantech patent litigation, which is sure to be accompanied by increased attempts at procuring discovery via subpoena from non-parties like Cleantech investors. 

Cleantech investors and their in-house counsel should take steps now to review their document retention and retrieval policies, and evaluate their subpoena response strategies in light of the Model Order governing ediscovery in patent cases, and its recent extension to non-party discovery by at least one Court in an ongoing patent dispute.

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

 

Cleanovation 2011

Building on the success of an energetic premier conference held last year in Austin, this year’s Cleanovation again promised an interesting dynamic, where Israeli Cleantech startups travel to Texas to pitch for investment from a community of experienced energy-sector investors. 

More structured, and less free-wheeling than last year’s event, this year’s offering spotlighted water technologies, a timely issue as Houston itself was encircled by wildfires while dealing with protracted near-drought conditions.  Israeli technology to deal with water scarcity issues has a well-earned reputation in the marketplace, and that expertise certainly seemed welcome by the Texas audience.

On the flip side, as the energy market matures in Israel, particularly as Israel looks to exploit its natural gas and oil resources, there is a lot for the country to learn from Texas energy expertise – across a variety of fronts, including legal, regulatory, and M&A. 

Showcasing a U.S.-based clean initiative was an excellent presentation by a Waste Management executive, discussing how that company continues to look for ways to generate renewable energy from its operations. 

On a Green IP note, it was also heartening to hear that attendees were considering and utilizing the green patent incentive programs exhaustively covered by this blog for their technology.  All in all, a stimulating event, and illustrative of the global Cleantech economy in action.

Rice Alliance for Technology Cleantech Event 2011

Held on Rice’s idyllic campus, this event featured a large contingent of Cleantech companies, presenting on their technology to an audience of venture capitalists, solo investors, and professional services folks. 

In an interesting twist on the typical conference format, the afternoon session saw company presentations of intermittent lengths, with some companies giving rapid-fire 90 second or less type elevator pitches, while others presented in 4-minute increments.  The back-and-forth between presentations of various lengths help hold audience interest, while allowing a large spectrum of companies to present. 

As a Cleantech-focused IP lawyer, it was heartening to see the scope of innovation being presented, and more importantly, that the stakeholders in fostering that innovation spanned academia, government, and the private sector.  While investment dollars may be under pressure, the opportunities for start-ups to at least get an audience for their innovations persist. 

In the current environment, a focus on building an actionable IP portfolio is critical, and companies in the Cleantech sector simply must consider taking advantage of the various incentive programs, previously chronicled in this blog, in order to effectively accumulate those IP assets with limited spend and business disruption.

Other interesting takeaways from this event include confirmation that the U.S. government continues to take a leading role in driving the direction of innovation in the cleantech space.  In the morning keynote, led by Dr. Eric Toone of Duke University and the ARPA-E initiative of the Dept. of Energy, it was apparent that companies hoping to secure government-investment would do well to align themselves with the focus areas that the Dept. of Energy has delineated. 

 An open question, not addressed during the interesting presentation that spotlighted some of the companies and technologies that have received ARPA-E investment, remains concerning the IP implications of these kinds of grants.  As winners and losers emerge from those subset of Cleantech companies that have taken government funds, the consequences of utilizing that investment source on future licensing and enforcement activities will be interesting to watch.

Finally, while the Rice Alliance does an admirable job of promoting technology start-ups across sectors as diverse as nano-technology and life sciences, it was interesting to hear that Cleantech companies, particularly those targeting the energy sector, have received the lion’s share of financial support.  While perhaps not surprising considering the locale, that factoid, delivered as it was with relish by the conference director, reinforces the tremendous challenge and opportunity in energy for both established and start-up companies. 

And there is no doubt that IP will play a major role in driving future solutions, particularly in light of the confluence of the declining domestic manufacturing capability, globalization, and the still-unresolved political and economic ramifications of the climate-change debate. 

Conferences like the Rice Alliance and Cleanovation underscore the centrality of those issues, while providing fertile ground for spotlighting potentially disruptive technologies that one day may move the needle in remaking our economy and lifestyles.

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

 

In an important development on the intellectual property front, but with particular import for Israeli clean tech companies targeting the U.S. market for strategic partnerships and licensing, the Israel Patent Office (ILPO) and the United States Patent and Trademark Office (USPTO) recently announced a Patent Prosecution Highway (PPH) pilot project between the two offices.  

The PPH provides that an applicant receiving a ruling from the ILPO that at least one claim in an application is patentable may request that the USPTO expedite examination of corresponding claims in corresponding applications and vice versa (see USPTO PPH info here). 

This pilot project, like other PPH agreements already in place between the USPTO and patent offices in other countries, promises to accelerate and improve the patent prosecution process for patent applicants with interest in procuring both U.S. and Israeli patents on their inventions.

While the potential benefits of the program are not limited to clean tech innovations, this pilot project provides a particular potential boon to Israeli clean tech companies and their investors, especially if such companies also leverage the existing “green patent” programs in force in both the USPTO and the ILPO.  Israel remains a hotbed of clean tech innovation and development, while the US market continues to be one of the markets of choice for Israeli technology, along with China and India.

Combining the PPH pilot project with existing “green” patent programs in the ILPO and USPTO opens up exciting possibilities for clean tech innovators. 

Savvy Israeli clean tech companies, and the burgeoning Israel clean tech venture capital (“VC”) community that finances those companies, should work with patent counsel and determine whether their innovations qualify for inclusion in either the ILPO’s “green patent” program (allowing priority examination from the ILPO for applications classified as “green” via applicant request by letter, without the need for extra fees) or the USPTO’s Green Technology Pilot Program (offering successful petition filers expedited first Office Actions for “green” inventions). 

For strategically important inventions, inclusion in either program could allow for quicker patent issuance, thereby increasing the attractiveness of the technology to later-round investors, strategic partners, and potential licensing or enforcement targets. 

As an example, a hypothetical Israeli clean tech company could accelerate an existing pending patent application in the ILPO, by requesting classification in the “green patent” program, and then see that patent issue with reduced pendency.  The company could then take the newly-issued “green patent” and utilize the PPH pilot project to get expedited examination and potential issuance in the USPTO. 

This approach could shave years off the patent prosecution lifecycle for such a company, and thereby open up intellectual property monetization opportunities earlier in the investment lifecycle as well. 

The USPTO has not been shy about touting the benefits of PPH agreements, like the one it just entered into with the ILPO.   Among the benefits highlighted by the USPTO for these types of arrangements are: (1) cost savings to applicants, on the legal and administrative fee front at least, because of shorter pendency and fewer Office Actions, (2) quicker examination of PPH applications, usually within a few months of acceptance of the PPH request, and (3) a much higher allowance rate (>90%) for PPH applications over that of non-PPH cases (<50%). 

Israeli companies, of all stripes, including clean tech companies, targeting U.S. patents can now avail themselves of the aforementioned benefits, subject to the minimal requirements of the PPH pilot project. 

The pilot project started July 1, 2011 and is scheduled to run for one year.  If successful, there is a possibility that the term of the pilot project will be extended.  Alternatively, if the pilot project is underutilized or proves a burden on resources, it can be terminated early at the discretion of the respective patent offices. 

Clean tech companies interested in procuring U.S. and Israeli patents would do well to consider use of the PPH, and where possible an expedited “green” patent examination scheme, in order to obtain those patents in a shorter time at reduced cost.  Similar strategies have been discussed with respect to other patent offices that host both PPH agreements with the USPTO and “green” patent programs – it is now Israel’s turn to get in the game. 

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

In a previous post, this author provided background on the UKIPO’s “Green Channel” for expedited examination of patent applications drawn to environmentally-friendly technologies. 

As noted in that post, the program’s two-year anniversary recently past.  To mark the occasion, and in recognition of the 100th green patent granted “under the Green Channel acceleration scheme,” the UKIPO recently issued a press release highlighting the program’s success. 

In addition to noting that the 100th green patent had issued, the press release notes that since the initiative was launched in May 2009, the UKIPO had received over 450 green patent applications.  The average patent in the program was granted just eight months after the request for acceleration was entered, a measurable improvement from the UKIPO’s 36 month pendency for normal applications.

In prior public statements, the UKIPO has indicated that it is pleased with the positive reception the “Green Channel” initiative has obtained from both users and the media.

One of the stated goals of the program is to “spread the message that patents can be of assistance in dealing with the challenges of climate change,” a message reiterated in the UKIPO’s recent press release.

Because the UK government has taken a public and leading stance worldwide with respect to climate change issues, it has an interest in encouraging other patent offices to adopt similar programs – and it has made efforts in that direction.  The UKIPO’s lobbying efforts have resulted in either expressions of interest or actual implementation of similar schemes from a number of other countries, including China, Brazil, Australia, Japan, and South Korea. 

And in order to make information about applications accepted into the program easily available to the public, the UKIPO created a publically-accessible “Green Channel” database.  This searchable database allows users to view published applications and granted patents which have been accelerated under the “Green Channel”. 

Ambitiously, the UKIPO hopes that future innovation of “green” technologies will be spurred by allowing businesses and inventors “easy access to green ideas and inventions” and claims that “green patents provide innovative businesses to develop green products that can be brought quickly into the marketplace” – particularly if those green patents are “fast tracked.” 

In the interest of obtaining some additional perspective on the usage of the “Green Channel” by applicants to date, the database was accessed by this author.  As noted in the recent press release the “Green Channel” is being utilized, and search of the database shows that it is being used in a variety of technology areas, and by geographically diverse applicants. 

A search of the “Green Channel” Database on May 17, 2011 yielded 208 hits, or 208 published applications or issued patents that have been processed through the UKIPO’s “Green Channel.”  So far in 2011, there have been 7 additions to the database, or about one entry a month. 

Most of the utilization of the “Green Channel” appears to come from the EU, with Great Britain providing the vast majority of applications.  As of this writing, the United States was the owner’s country of residence for about 10% of the applications listed in the database, with a few frequent users like Protean Holdings, iGo Inc., and others.  

In fact, Protean received the 100th patent granted under the “Green Channel,” that is directed to a “regenerative braking system for electric and hybrid vehicles.”  Other countries represented in the database are Singapore, Taiwan, and Mauritius.  

As noted above, the range of technologies represented in the database is diverse, ranging from compostable toilets to headlamps to floating recycling plants.  These data points indicate that the UKIPO’s “Green Channel” is being used as a viable alternative for patent applicants seeking a forum for expedited examination on the basis of environmental benefit. 

In this author’s opinion, there is little doubt that the UKIPO’s “Green Channel” initiative is off to a good start.  Compared to the well-chronicled fits and starts of the USPTO’s Green Technology Pilot Program, the “Green Channel” appears to be a smooth-running program operating as intended, with relatively low barriers of entry to interested participants.  

Protean Holdings’ Intellectual Property Manager, one example of an interested participant, is quoted in the most recent press release speaking very favorably of the “Green Channel,” mentioning the importance to his “young company” in getting its green patents issued quickly (“as soon as 10 months after filing”) so that Protean can “attract new investment and prospective customers.”    

While not every prospective patentee will be assured of a similar outcome, sophisticated patent counsel are well-urged to consider the “Green Channel” as a resource for mission-critical and time-sensitive patent applications, irrespective of whether the applicant is a sole inventor, a start-up, or a multinational corporation. 

Hopefully, utilization of the program will increase, and applicants will begin to leverage the “Green Channel”, in conjunction with patent cooperation agreements, e.g. the Patent Prosecution Highway, to get “green” patents issued faster and thereby spur additional innovation of environmentally-beneficial technologies.

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

 

As readers of this blog are aware, there are a number of patent offices worldwide that currently offer expedited examination regimes for patent applications directed to inventions that promise to deliver environmental benefits. 

As chronicled by this blog, the United Kingdom Intellectual Property Office (UKIPO) has had such a program in place since May 2009. 

So how has the program performed as it approaches two years in force? This two-part post will attempt to answer this question, after providing some background about the UKIPO’s program.

The UKIPO’s “Green Channel” is a no-fee added service offered by the UKIPO for accelerated prosecution of patent applications directed to inventions with alleged environmental benefits.  Any pending application is eligible for the program, assuming the applicant complies with the minimal requirements for inclusion. 

Depending on the prosecution aspects the applicant chooses to accelerate, the UKIPO’s “Green Channel” could result in issued patents in as little as nine months.  The regular pathway to an issued patent is estimated to average between two and three years in the UKIPO. 

The UKIPO does not guarantee, of course, if and when applications in the “Green Channel” will issue, but rather affords applicants the option of accelerating some or all of the prosecution process for “green” inventions (see Green Channel FAQ here).

As set forth below, the actual requirements for inclusion in the program are straightforward and designed to encourage participation.

There is no separate petition process for inclusion in the Green Channel, in contrast to the USPTO’s Green Technology Pilot Program.  Applicants do not even have to file a form to have their pending applications considered under the Green Channel; a written request pointing out which aspects of the prosecution process the applicant wishes to accelerate and how the invention has an environmental benefit suffices.

The applicant can choose to accelerate any or all of the following prosecution process aspects: Search, Combined Search and Examination, Publication, and/or Examination.

With respect to the “environmental benefit” prong of the written request, the Green Channel as set up by the UKIPO recognizes that environmental benefits can be found in inventions of all types, and accordingly does not limit participation on the basis of technology areas or IPC classification.  Nor does an applicant need to demonstrate that the invention meets any specific environmental standard. 

Having an application drawn to an invention in an established “green” technology area, will, however, make the showing of environmental benefit in the applicant’s written request more straightforward.  The UKIPO has indicated that in such technology areas, a “simple statement is likely to be sufficient.”  

For inventions with less obvious environmental benefits,  “a more detailed explanation is likely to be necessary to explain how the invention has an environmental benefit”, and the applicant’s written request should endeavor to meet that standard.  While the UKIPO “will not conduct any detailed investigation into these assertions”, it reserves the right to “refuse requests if they are clearly unfounded.” 

In all cases, participation is by applicant request, however, so even applications directed to inventions in established green technology areas, e.g. solar panels, are not automatically moved into the Green Channel by the UKIPO. 

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.