Fast-tracking green patent applications

• Author: Antoine Dechezleprêtre - Eric Lane
• Position: Grantham Institute of Climate Change and the Environment, London School of Economics (UK) - Patent and Trademark Attorney at McKenna Long and Aldridge, San Diego (US)
• Pages: 5-8

p. 5WIPO | MAGAZINE

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Promoting environmentally-frie ndly innovation has become a key pri ority in national

and international environm ental policy. Intellectual proper ty (IP) regimes, parti cularly

patent laws, are perhaps the most impo rtant of the regulatory vehicles that promote

technological innovation. For this re ason, a number of national IP of ces have put

in place measures to fast-track “green” patent applic ations. The rst program was

established by the UK in May 200 9. Australia, Israel, Japan, the Republi c of Korea

(ROK) and the US followed in the s ame year. More recently, Canada (in March 2011)

and Brazil and China ( in 2012) launched similar programs. Under these progra ms,

the time needed to obtain a patent can be s ignicantly reduced – from several years

to just a few months.

This article pres ents the main ndings of two papers, recently pub lished by the authors,

about the green patent fast-track programs. Th e rst study (Dechezle prêtre, 2013),

published by the International Centre for Trade and Sustainable Development (ICTSD),

provides the rst empiric al analysis of these fast-track procedu res, based on data

from Australia, Canada, Israel, Jap an, the ROK, the UK and the US. The second paper

(Lane, 2012), published in the Be rkeley Technology Law Journa l (BTLJ), analyzes the

rules governing the various programs, in terms of eligibility requirements and process

parameters, and recommen ds that the programs be harmonized to make their rules

uniform across all nationa l IP ofces

OVERVIEW OF THE PR OGRAMS

To best understand and analyze the pro grams, it is helpful to separate out the t wo

major categories of progra m rules: eligibility requirements and pro cess requirements.

ELIGIBILITY REQUIREMENTS

Eligibility require ments determine which patent app lications may particip ate in the

fast-track programs. In particular, subject mat ter eligibility dene s the categories of

green technology that qual ify for accelerated examination. The typ e of technology for

which accelerated examin ation can be requested differs wide ly across patent ofces.

In Australia, Canada and the UK, a ll environmentally-frien dly inventions are eligible.

The applicant must simply submit a letter explaining why the invention has environ-

mental benets. However, Brazil, China, Japan a nd the US place some restrictio ns

on the technologies permitted. For example, only energy-saving and carbon-saving

technologies are allowed i n Japan. In contrast, the ROK has the most str ingent

requirements, including a f ramework of specic enum erated technology classe s. In

the ROK, technologies (in particular renewable energy) are generally eligible only if

the invention is funded or accre dited by the government, or given “green certication”

by relevant government environme ntal laws. The Israeli program also denes sub ject

matter eligibility by strictly enumerated technology classes, although it does not have

a funding or certi cation requirement.

PROCESS REQUIREMENTS

Process requirements are no n-subject matter restrictions, such as limitations on th e

number and type of cl aims permitted and such parameters a s fees and costs. These

requirements vary co nsiderably among programs. While IP Austra lia and the Canadian

Fa s t-t r aC k i n g

green patent applications

By Antoine Dechezleprêtre,

Grantham Inst itute of Climate Cha nge

and the Environm ent, London School o f

Economics (UK) and Eri c Lane, Patent

and Trademark Attor ney at McKenna

Long and Aldr idge, San Diego (US)

Further re ading:

Dechezleprêtre, Antoine, 2013. Fast-tracking

Green Patent Applic ations: An Empir ical

Analysis; ICTSD Progr amme on Innovation ,

Technology and Intellectual Property, Issue

Paper No. 37, Interna tional Centre for Trade a nd

Sustaina ble Development, Genev a, Switzerla nd.

Lane, Eric , 2012. Buildin g the global gre en

patent highw ay: a proposal for int ernational

harmoniz ation of green tech nology fast trac k

programs. Berkeley Technology Law Journal 27:3.