"Green technologies" – those that provide an
environmental benefit, or in some cases lessen a detriment, are
assuming ever-increasing status throughout the world. This is
especially true in Australia, where the recently-formed Government
was only established after the Labour Party reached a formal
agreement with the Greens.
The emerging importance of green technologies is also likely to
impact upon the world of intellectual property – and in
particular, patents. The frontiers of patentability are typically
spaced few and far between. In recent years, we've had
superconductors, gene patents and computer software – and
now, in line with ever-increasing environmental awareness, the
latest "buzzword" appears to be "greentech" (or
Unlike gene patents and computer software, there is a general
acceptance that green technologies should patentable –
the few dissenters who argue that such technologies should be in
the public domain appear to overlook the basic quid pro quo of the
"patent bargain" –being that without the
prospect of patent protection, researchers would have no incentive
to develop such technologies in the first place. In this respect,
any patentability issues surrounding green technologies are
actually more closely akin to those experienced 25 years ago in
respect of superconductors – in other words, how can the
patent system be poked and prodded in order to better accommodate
Any special treatment for green technologies of course first
requires a standard definition of precisely how "green"
any new technology must be in order to qualify. On the one hand, a
technology that mitigates an environmental problem or provides a
solution arguably sets the bar rather high – and excludes
"net-red-relative-green" technologies that although
"greener" than existing competitor technologies, may
still cause some degree of environmental damage. On the other hand,
it could be argued that these technologies (for instance, a more
environmentally-friendly method for manufacturing cement) are just
Notwithstanding, the Australian Patent Office has recently
offered to expedite examination of patent applications relating to
green technologies. Of itself, this is nothing new –
indeed, expedited examination has been offered for many years,
irrespective of technology. However, as a reason for requesting
expedited examination need now by given, this platform has largely
been the domain of those wishing to expedite grant of their
application with a view to commencing infringement proceedings as
soon as possible thereafter – or those requiring a
granted patent as a condition of obtaining investor funding.
Expedited examination typically saves the applicant around 14
months of waiting for a first Official Report to issue from the
Examiner – and the potential benefits are clear in this
regard. With this new concession, a reason such as "this
application relates to green technology" may be just as valid
as those typically employed in the past.
On the other hand, proceeding in the "regular" manner
and not applying for expedited examination provides an applicant
with additional time in which to determine whether their invention
is commercially viable. This is significant on a cost basis given
that a decision to proceed with patent prosecution is often akin to
a commitment to pay. Of course, as with everything in the patent
game, how best to proceed is a delicate balancing act.
In response to the increasing recognition being afforded to
green technologies throughout the patent world, Shelston IP has
recently established a "Green IP Team" comprising
professional staff from varying scientific, engineering and legal
backgrounds. We are well placed to advise clients as to how best to
prosecute their "green" technologies by making best use
of the various facilities available under both the Australian and
foreign patent systems.
For further information contact GarethDixon@ShelstonIP.com or
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).