We have reported previously
on the increasing importance of "green" technologies in
the world of intellectual property. In recent years, "IP
buzzwords" have included superconductors, gene patents and
computer software – and society's ever-increasing
environmental awareness ensures that "greentech" is the
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 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 these technologies?
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 potentially mitigates an environmental problem or
provides a solution "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 as deserving.
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 need by given in
order to have examination expedited, this platform has largely been
the domain of applicants 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 inventor funding.
Expedited examination typically saves the applicant around 14
months of waiting for the 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" will 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 important 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.
Australia is not the only country to offer expedited examination
for "greentech" – indeed, the United Kingdom,
the United States, South Korea, Japan, China, Israel and now Canada
offer such a platform. Although the respective rules and
eligibility criteria may be slightly different from those of
Australia, the above-noted "pros and cons" are just as
applicable in an international context.
In response to the increasing recognition being afforded to
green technologies throughout the patent world, Shelston IP has in
place 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 the Australian and the various
international patent systems.
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.
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