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Tuesday, 12 May 2009

Green for go! IPO to fast-track environmentally friendly patent applications

Fresh from the UK's Intellectual Property Office this morning comes this press release, headed "UK 'Green' inventions to get fast-tracked through patent system". The text reads:

"David Lammy, Minister for Intellectual Property, will today launch an initiative which will enable inventions with an environmental benefit to be given priority within the patent system.

The proposal, which forms part of the Government’s broader approach on measures to tackle climate change, reflects the importance of maximising support for inventions which could have a significant impact on combating climate change.

David Lammy said:

“Climate change affects us all [says the IPKat, now that's a surprise] and any actions we take now to improve low-carbon technology has [er, 'have'?] got to be positive for both the environment and our future economic competitiveness.

"We have already taken great steps forward in greener motoring, supporting the development of new vehicles and encouraging motorists to make greener choices [Or to pay more for not making those choices? The Kat reckons the best green choice motorists have made recently is to install satellite navigation, thus not wasting fuel while driving around lost. Not sure this was a governmental Great Step ...].

"Today’s initiative builds on this by offering innovative UK businesses working in green technologies the chance to get high-quality patent rights faster than ever before. This in turn will speed up the time it takes to get products to market, benefiting both business and consumers. [The Kat hopes someone is taking notes on the correlation between speed of patent grant and speed of product launch. If it exists, the speedy patent option should be available in all other areas too]

The green patents initiative will make it easier and faster for new products to reach the market [Hasn't the minister just said this?]. It could take only nine months to get a patent granted under this scheme, compared with the current average time of two-to-three years.
...

This initiative will take immediate effect from 12 May, as no legislative changes are required [Can readers confirm this final statement? Is it made only in respect of UK patents, as the title implies? How does it affect European applications? Is it retrospective or does it only apply to applications filed today and thereafter? Will it affect practice involving divisionals? Help ...!]".

There then follow the Notes to Editors. It's normal to supply these for background information, but these notes are particularly interesting:

"Case studies of businesses that have recently filed a ‘green’ patent, or who will benefit from the fast-tracked channel are available for interview - details on request [this is welcome: readers are invited to peruse these case studies and comment accordingly].
...

Accelerated search and/or examination of the patent application will be made available to any patent applicant who makes a reasonable assertion that the invention in the patent application is one which has some environmental benefit [presumably the words "reasonable assertion" and "some environmental benefit" need neither explanation nor definition -- we hope]. The application will be fully searched and examined by a technically-qualified patent examiner [Why was it necessary to give this assurance? was anyone else contemplated?]".

The IPKat is not averse to fast-track options for patent applications. It's just that he likes a bit of reassurance that the complex ecostructure of the patent system will not be damaged by the introduction of a potentially harmful mutation which has no natural predator. Merpel says, if you start with the statement that no fresh legislation is needed, you can pretty well work out what the scheme will be: (i) the option of a fast-track search/application/grant for UK applications only, (ii) a new form to be filled in, with the 'reasonable assertion' of 'some environmental benefit', (iii) a new fee, (iv) the allocation of an examiner who might otherwise be examining a slow-track application, (v) a timetable leading to grant, (vi) an accelerated grant and (vii) slow-track applications being just that little bit slower ...

10 comments:

Anonymous said...

I recall that the USPTO had (has?) a similar scheme relating to applications for energy saving patents. That was more than ten years ago.

Anonymous said...

Here is the US scheme:

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm

Anonymous said...

The Ipkat does not like Mr Lammy('s idea)...?

Anonymous said...

High quality patent rights within 9 months... What happens when section 2(3) prior art is found 9 months after grant?

With no legislative changes, the applicant appears bound by the existing rules on post-grant amendment and will either do nothing leaving an invalid/partially valid patent on the register (not really high quality then), or have to amend within the existing framework, with the limitation that post-grant amendments (unlike amendments at the application stage when 2(3) prior art is usually revealed) may not extend the scope of the patent; so no moving the scope sideways, unlike with a normal (lower quality?) patent.

Hmmm...

P.S. If you request combined search and examination on a normal application (first filed at the UK Patent Office, not claiming priority) and have drafted acceptable claims, chances are that after about 3 or 4 months you will get an indication that the patent will be granted very shortly after the search for 2(3) prior art has been carried out.

Anonymous said...

Bit more detail available here:

http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-pn/p-pn-green.htm

Anonymous said...

I, for one, see many entertaining minutes for practitioners thinking up all sorts of wacky environmental benefits for applications that want to take advantage of fast track proceedings but, prima facie, have nothing whatsoever to do with green technology. I foresee anything that can be made lighter to be argued to reduce transportation carbon footprint, anything that is more durable to be argued to have benefit over more disposable prior art... et cetera, ad nauseam...

Anonymous said...

There's very little here that's new. You can already request accelerated search and examination if you give a reason, and the IPO is quite flexible about what is good enough.

All they are now saying is that "my application relates to green technology" is a good enough reason.

Apart from that, the other aspects of accelerated grant are to request a combined search and examination, and to request early publication. Both of these are also available already, even without giving a reason.

twr57 said...

Useful PR. "This invention was specially recognised by the UKIPO as protecting the environment".

Anonymous said...

At the risk of duplicating what others have said...

When you say "the speedy patent option should be available in all other areas too", presumably you mean for subject matter where not even the cleverest agent can argue that it is in any way environmentally-friendly? Can you name any such area?

As far as I can tell, no legislative changes are required. Applicants already have the opportunity to ask for accelerated publication, and the only other delay in getting a patent, beside the actual time it takes to search and examine (which isn't long), is the three month delay between publication and grant (strictly speaking, this isn't legislative either, but I think it's staying). You can already get a patent within a year if you ask for everything to be accelerated and respond promptly to letters.

It only applies to UK applications, yes - the EPO are not under the control of the UK government. I've no idea whether they might be inspired to produce a similar scheme of their own.

It's retrospective in that you can ask now for an already-filed application to be accelerated.

I can't see hopw it will affect divisionals, except that obviously you can't file a divisional after the parent is granted so speeding up the process gives you less time to file one.

One of the original aims of the Private Applicant Unit was to enable applications relating to simple subject matter to be dealt with by less skilled examiners. This may be some reason why they feel the need to reassure readers that these applications will get a technically-qualified examiner.

There is no new form, or fee, you just have to make the right assertion in writing. And yes, it means the slow-track cases will run that bit slower.

The position regarding Section 2(3) will be the same as for present accelerated cases. We check for all Section 2(2) citations before grant, but if the Section 2(3) search is not complete at grant stage we bring the case back later for updating the search, and raise objections under Section 73 if we find anything at that point. Anonymous of 2:00:00 is wrong that the applicant is free to do nothing, but right that the "no broadening" rule applies. If you don't want your monopoly to be set in stone, don't apply for accelerated grant!

Anonymous said...

One can also request accelerated search and examination at the EPO and one doesn't have to give a reason for requesting it (neither green, red or brown).
See ""Notice from the President of
the European Patent Office
dated 1 July 1997 concerning
the programme for accelerated
prosecution of European
patent applications - "PACE"" (EPO OJ 1997, 340)

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