Do you have or know of a great invention to help the environment? If so, consider ‘fast-tracking’ a patent application, otherwise known as ‘accelerated’ or ‘expedited’ examination. A study has shown that ‘fast-tracked’ green patents are more likely to be granted and increase diffusion of the technical knowledge of these patents. However, ‘fast tracking’ can result in earlier public disclosure of the invention than would normally happen, which may not be commercially ideal for you.
Programs for ‘fast-tracking’ green technology patents
Since 2009, ‘fast-tracking’ green patents programs have been initiated in various countries, such as Australia, Japan, United States, Canada, United Kingdom, Korea, Israel, Brazil and China. In Australia, ‘fast-tracking’ is known as expedited examination.
The aim of these programs was to diffuse technical knowledge in green technologies and circumvent the long waiting periods experienced by some patent offices.
What is a green patent?
A green patent is usually an ‘environmentally oriented’ patent such as energy or environmental quality. While some patent offices have a list of acceptable ‘green’ technologies, most applicants state their invention has an environmental benefit and leave it up to the patent examiner to decide if the claim is true or not.
Why fast-track green patents?
A study of the ‘fast-track’ green patent programs was recently commissioned by the International Centre for Trade and Sustainable Development. That study was conducted by Antoine Dechezlepretre of the Grantham Research Institute on Climate Change and the Environment at the London School of Economics and Political Science.
The aim of the study was to evaluate the usefulness and success of these ‘fast-track’ programs.
The results show that these ‘fast-track’ programs have reduced the time to grant these patents. Dechezlepretre commented that having a patent granted earlier may:
- Allow patent applicants to license and use their technologies earlier, increasing diffusion of the green technology; and
- Allow early publication of the patent which also increases diffusion of the technical knowledge of the patent.
However, participation in these programs has been limited. For instance, at the time of the study, only 43 ‘green’ patent applications requested expedited examination in Australia, which is less than 1% of the patent applications in a single year. Other countries have slightly higher rates of accelerated examination rates, with the United Kingdom having the highest rate of around 20%.
Benefits of fast tracking
The preliminary results of the study show that fast-tracked applications are more likely to be granted.
Fast tracked green patent applications are likely to attract twice as many citations in the same period as other green patents, which is an indicator that the knowledge may be used more in subsequent inventions.
Disadvantages of fast tracking
Most applicants may not be interested in an early grant of their patent but may not wish to disclose information about their invention. Some applicants may want to buy time to:
- Continue research and development activities;
- Determine exactly what the invention is; and
- Perhaps continue discussing with the patent offices to the final claims of the patent.
The applicants may have to give up all these benefits of ‘normal examination’ if they choose to expedite examination of their patent.
Expediting examination in Australia
Requesting expedited examination in Australia requires that the examination be:
- In the public interest or
- If there are special circumstances which make it desirable (such as potential infringement).
When submitting a request for expedited examination, simply give the reason that the patent is in the area of a green technology. The Australian Patent Office has made it clear that it considers expediting examination for a patent which is ‘environmentally beneficial’ or ‘green technology’ to be in the public interest.
Fast-tracking your green patent in the United States
Unfortunately, ‘fast tracking’ a green patent in United States was closed last year. However, the USPTO has introduced a new Track One prioritized examination process which can be used by patents in any technology.
Alternatively, an applicant can apply for accelerated examination in the United States under the Patent Prosecution Highway (PPH), after an applicant has received allowed claims or an issued patent in another PPH country, for instances in Australia.
Summary
‘Fast-tracking’ a patent in the area of ‘green’ technology can be more likely to result in patent grant but can be offset by disadvantages of early disclosure. However, ‘fast tracking’ a green patent is worth considering as a viable option for some applicants.
By Shu-Yen Lee