In recent years, IP “buzzwords” have included superconductors, gene patents, business methods and computer software. Society’s ever-increasing environmental awareness now dictates that “cleantech” is the latest vogue. The Australian Patent Office offers the facility to request expedited examination of any patent application if the applicant provides good reason (this may be as vague as “commercialisation”). However, the Office singles out cleantech-related applications by not requiring a reason other than that the invention is in the (somewhat imperfectly-defined) area of “green [clean] technology (climate ready)” research. In this article, we consider some of the pros and cons of proceeding toward accelerated patent grant in Australia for cleantech inventions.
Cleantech and the “patent bargain”
Unlike gene patents, business methods and computer software (each of which have been uniquely polarising) there is a general acceptance that clean technologies should be 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 clean technologies are more closely akin to those experienced a quarter century ago in relation to superconductors – in other words, how can the patent system be poked and prodded in order to better accommodate these technologies?
How clean is “clean”?
Any special treatment for clean technologies of course first requires a standard definition of precisely how “clean” (or “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 “cleaner” 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. Accordingly, at least in the patent world, the term “cleantech” appears to be interpreted fairly broadly.
Expedited examination for cleantech applications in Australia
Notwithstanding any posturing as to what is or isn’t properly “cleantech”, the Australian Patent Office offers to expedite the examination of patent applications on the grounds that it relates to clean technologies. Of itself, this is nothing new – indeed, expedited examination has been offered for many years, irrespective of technology. However, as a reason must 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 investor funding. At present throughputs, expedited examination typically saves the applicant around 12 months of waiting for a first examination report to issue – and the potential benefits are clear in this regard. As such, literally checking a box asserting that an application relates to clean technology will be just as valid any reason typically employed in the past. The Office then makes a fairly subjective assessment as to whether the technology is clean enough to qualify under the scheme.
On the other hand…
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 sometimes akin to a “commitment to pay”. Of course, as with everything in the patent game, how best to proceed is a delicate balancing act and will vary from applicant to applicant, technology to technology.
Claim scope and eventual validity
Another feature that must be considered when deciding whether to request expedited examination of a cleantech patent application – especially in Australia, relates to claim scope. Australian patent examiners frequently draw upon the prosecution history of any US or EP counterpart applications. Accordingly, there is the potential to obtain relatively broad coverage in Australia by first requesting expedited examination – and relying on the possibility that the corresponding US/EP prosecutions are not yet significantly advanced. Of course, this must be counterbalanced against the likelihood – and with it, expense, of later needing to file post-acceptance voluntary amendments to the Australian claims in order to keep them “valid” in view of prior art later uncovered elsewhere. The facility to file divisional patent applications is another means of maintaining pendency, and with it, flexibility.
The international picture
Australia is not the only country to offer expedited examination for cleantech patent applications – indeed, the United Kingdom, United States, South Korea, Japan, China, Israel and Canada (amongst others) offer (or have offered in the recent past) 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.
There is evidence – both anecdotal and tangible, that patent applicants are making good use of the expedited examination platform. For instance, the United Kingdom Intellectual Property Office has granted well over 100 patents under the Clean Channel Patent Examination Acceleration scheme, which is purported to reduce the average pendency of a UK patent application from around 36 months to less than eight.
Furthermore, in 2013, the International Centre for Trade and Sustainable Development published an empirical analysis of several fast-track examination programs. It concluded that such platforms for cleantech applications reduced the average grant time of a patent by up to 75%. It further concluded there was strong demand for such programs, especially from SMEs, and that fast-tracked patents were of good commercial value.
Cleantech and the Patent Prosecution Highway
Another way in which expedited examination of cleantech patents may be attractive is that it allows applicants to take advantage of the various Patent Prosecution Highway (“PPH”) agreements that exist between certain countries. For instance, one may look to invoke the AU-US PPH by using a quickly-granted Australian cleantech patent as the basis for expedited examination in the USPTO. However, anecdotal evidence suggests that proceeding via the dedicated route for cleantech patents is likely to be the quicker option. Nonetheless, the various PPH mechanisms remain useful supplementary options for the expeditious grant of a cleantech patent in certain foreign jurisdictions.
Spruson & Ferguson’s cleantech team
In response to the increasing recognition being afforded to clean technologies throughout the patent world, Spruson & Ferguson has in place a “Cleantech 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 clean technologies by making best use of the various facilities available under the Australian and international patent systems.