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International Association for the Protection of Intellectual Property (AIPPI)
Incentivizing Green Technology
Inventions and Innovation
—A Global Review [In Light of COVID-19]
Prepared by the AIPPI Standing Committee on IP and Green Technology
www.aippi.org
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AIPPI Standing Committee Membership
Chair: Natalie Raffoul (CA)
Co-Chair: Alicia ALVAREZ BERKENWALD (AR)
Co-Chair: Tamar MORAG-SELA (IL)
Lead contributor: Pat Breslin (US)
Responsible Reporter: Ralph NACK (DE)
Mehmet ATBAN (TR)
Ursula BARAVALLE (ZA)
Fabio BOSCARIOL DE ROBERTO (IT)
Patricia BUNYE (PH)
Wen CAO (CN)
Luis Diego CASTRO CHAVARRÍA
(Carrib)
Estelle DERCLAYE (UK)
Niti DEWAN (IN)
Dilek EKDIAL (TR)
Andrés ESTEVA WURTS (MX)
Filippo FERRONI (IT)
Pirke FUSTINONI (FI)
Oung-Heng HENG (FR)
Bertram HUBER (DE)
David KNIGHT (UK)
Keiji KONDO (JP)
Marcel KORTEKAAS (NL)
V. LAKSHMI KUMARAN (IN)
Olivier LOMBARDO (LU)
Georg REITBOECK (US)
Phoebe SUN (TW)
Girish TANWAR (NL)
Peter TRELOAR (AU)
Masaya TSUNO (JP)
Marco ZARDI (CH)
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Executive Summary
This paper recommends approaches to improve and expand accelerated examination
programs (AEPs) for patents, while considering complementary policies that encourage
rapid innovation of green technology (green tech). It proposes leveraging multi-pronged
efforts at identifying and innovating green IP—using AEPs alongside other policy
instruments that share the common goal of protecting the environment and global
society from the imminent and long-term risks of climate change.
The paper concludes the urgency of the climate crisis calls for more common language
around green technology terms and qualifying criteria, for AEPs and other policies with
similar aims. It recommends AEPs and other such policies develop more consistent
definitions of “green technology” across countries and policy areas beyond IP. A draft
definition incorporating elements common to many AEPs is proposed, while future work
to consider the merits and potential modification of such a definition is recommended.
The paper uses the global experience with the COVID-19 pandemic to illustrate the
interconnection between public health crises and the need for accelerated innovation to
mitigate the health risks they impose. In the case of COVID-19, a multi-pronged
approach across countries and fields of expertise has been necessary to reduce the
spread of the novel Coronavirus, to monitor its spread and effects, and ultimately to
bring it under control. Though if found, a vaccine may offer a more dominant solution, all
such measures have been necessary before (and likely after) a vaccine could become
available. Such multi-pronged approaches also improve efforts to address climate
change, which is no less immediate and entails a growing range of short- and long-term
health risks and social costs globally.
The paper concludes that AEPs offer important environmental policy instruments
alongside other measures that target climate change and its related social costs and
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health consequences. Each measure used increases the odds of success, especially
when employed in combination with other promising measures. To combat climate
change and mitigate public health and social costs it imposes, the paper has shown that
the merits of incentivizing green patents and innovation are compelling and increasing in
importance--given the growth and frequency of climate-change related impacts.
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Table of Contents
Executive Summary ......................................................................................................... 3
I. Introduction ............................................................................................................... 8
II. The Green Technology Landscape ........................................................................ 11
A. What is the current state of green technology? ................................................ 12
1. Green Energy and Cleaner Energy ............................................................... 12
2. Technologies to Reduce Consumption and/or Increase Efficiency ............... 15
3. Technologies to Mitigate Existing Conditions ................................................ 15
B. Addressing the Climate Crisis in Light of Lessons from COVID-19 .................. 15
1. Comparing crises: Covid-19 and Climate Change ........................................ 15
2. Urgency, timing of impacts, and need for accelerated responses ................. 17
3. Multi-pronged solutions and diversified action required ................................ 18
4. Accelerating innovation and development in public health crises .................. 21
III. Accelerated Examination Programs Around the World ........................................ 22
A. Analysis of the Standing Committee reports on FTGPAs ................................. 24
1. Commencement of Green Patent Programs ................................................. 24
2. Reviews of Green Patent Programs .............................................................. 24
3. Changes to Green Patent Programs since inception .................................... 27
4. Current Green Patent Program criteria.......................................................... 27
5. Patent Office verification of Program criteria ................................................. 29
6. Aspects of examination that may be accelerated .......................................... 29
7. Taxes and fees paid for the accelerated examination system ....................... 29
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8. Statistics on case accelerations .................................................................... 30
9. Timing of examination under the green patent program ................................ 31
10. Recommended improvements to the FTGPA programs................................ 31
B. Definition of Green Technology ........................................................................ 32
1. Different definitions compared and contrasted .............................................. 32
2. Summary of definitions .................................................................................. 34
C. In-Depth Country / Region Profiles: .................................................................. 37
1. Israel ............................................................................................................. 37
2. Canada .......................................................................................................... 39
3. Europe ........................................................................................................... 40
a. The European Union ..................................................................................... 40
b. The European Patent Office .......................................................................... 41
c. The European National Level ........................................................................ 42
d. European Regional Summary ....................................................................... 43
4. U.S.A. ............................................................................................................ 49
a. Early USPTO Accelerated Examination Programs (1970 to 2005) ............... 50
b. Accelerated Examination (AE) through “special” case status (2006 - 2016) . 51
c. The US Pilot Program for Green Technology (2009 - 2012) ......................... 52
d. Track I Prioritized Examination (2011 to 2020) ............................................. 52
e. COVID–19 Prioritized Examination Pilot Program (2020) ............................. 56
5. Latin America ................................................................................................ 58
6. China ............................................................................................................. 60
7. Taiwan ........................................................................................................... 60
8. India .............................................................................................................. 61
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IV. Other Mechanisms for Incentivizing Green Technology Innovation ..................... 63
A. Fee Reductions ................................................................................................ 63
B. Targeted AEPs for green start-ups ................................................................... 64
C. Tax Credits or Grants for Patenting Activity ...................................................... 67
1. Australia ........................................................................................................ 67
2. Canada .......................................................................................................... 68
D. Green Policy Instruments in Other Policy Areas ............................................... 68
E. Comments on Standardization ......................................................................... 72
V. Conclusion .............................................................................................................. 73
APPENDIX A ............................................................................................................. 77
APPENDIX B ............................................................................................................. 78
APPENDIX C ............................................................................................................. 82
APPENDIX D ............................................................................................................. 89
APPENDIX E ............................................................................................................. 92
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I. Introduction
Environmentally sustainable technologies (“green tech”), and the problems they
address, have never been more relevant or prominent in the public eye. The United
Nations website lists climate change as “the defining issue of our time”.1 Activism
around climate change and environmental issues is becoming commonplace,
manifesting in increased consciousness, calls for rationing, and strikes.2 Today, we also
find massive market potential for “green” and environmentally friendly innovation in the
form of products and services, including within energy supply chains and at the business
and consumer level. In response over the last decade, many patent offices worldwide
have implemented Accelerated Examination Programs (AEPs) for green technology
patent applications.
Yet, internationally, to date there has been relatively limited use of AEPs and other
programs designed to encourage the patenting of green inventions. On one level, this
may relate to a general lack of awareness of such programs. More fundamentally,
however, the underutilization of green-patent pathways may in part result from a lack of
clarity regarding their benefits, and a lack of standard approaches across jurisdictions.
This paper will examine the current state of green technologies and attempts made by
various patent offices to encourage green filings. Also, this paper will recommend
strategies for improving and increasing the use of green patent programs.
Regarding AEPs, the paper draws from and advances previous work of the AIPPI
Standing Committee 198 on Green Technology (the “SC on Green Technology”, or
“SC”). It also draws on other relevant sources, including from multiple countries’ patent
examination offices that use AEPs, AIPPI members based in relevant countries, as well
as other organizations focused on relevant international IP and economic policy.
1 https://www.un.org/en/sections/issues-depth/climate-change/ 2 https://globalclimatestrike.net/ https://www.theglobeandmail.com/opinion/article-the-climate-crisis-is-like-a-world-war-so-lets-talk-about-rationing/
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For example, in 2016 at the AIPPI World Congress in Milan, AIPPI passed a resolution
proposed by the SC entitled “Patent Rights and Green Technology / Climate Change.”3
Among issues resolved, the Milan AIPPI resolution recognized “the immediacy of the
threat of climate change” and that it warrants broad support for “procedures enabling
applicants to elect for accelerated examination of patent applications covering green
technologies” within the global IP system and at national levels. The Milan resolution
and this paper also draw from the SC 2014 report, "Climate Change and Environmental
Technologies – the Role of Intellectual Property, esp. Patents."4 Other relevant SC work
will be further noted below.
This paper also highlights the important role of green patents filed by individual
inventors, entrepreneurs, micro entities, start-ups, and small and medium enterprises
(SMEs). The SC observes a virtuous cycle between innovations with access to patent
protection (in general) and the success of SMEs and smaller entities patenting such
innovations--for whom patents are instrumental and often essential.
For example, a report by WIPO, “Inventing the Future: An Introduction to Patents for
Small and Medium-sized Enterprises,”5 encourages SMEs to file for patents for multiple,
interrelated reasons. WIPO notes that patents “can enhance the ability of a company to
raise the capital required” to succeed commercially, and that in some sectors, “a strong
patent portfolio is often a requirement to attract investors.”6 In short, the WIPO report
3 AIPPI “Resolution, Standing Committee on IP and Green Technology: Patent Rights and Green Technology / Climate Change,” adopted at the AIPPI World Congress in Milan, Italy, September 18, 2016. 4 Report of AIPPI's Standing Committee on IP & Green Technology entitled "Climate Change and Environmental Technologies – the Role of Intellectual Property, esp. Patents", http://aippi.org/wp-content/uploads/committees/198/Report198Report+Climate+Change+and+Environmental+Technologies+-+The+Role+of+IP+esp.+PatentsEnglish.pdf published at the 2014 AIPPI World Congress in Toronto (Canada). 5 “Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises” (hereinafter, “WIPO SME patents report,” or “WIPO report”), copyright WIPO, 2018, available at: https://www.wipo.int/edocs/pubdocs/en/wipo_pub_917_1.pdf 6 WIPO SME patents report, pages 10-11. The report cites Biotechnology as an example of one sector in which patents may be required in order to secure investment. In the experience of some SC members, for certain types of capital raising such as in venture capital (VC) markets, progress in securing patent protection for a firm’s key technologies is often a prerequisite for obtaining VC funding, regardless of the
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states, “The exclusivity provided by a patent may make the difference between success
and failure in a challenging, risky and dynamic business climate.” Entrepreneurs and
emerging companies in green technology sectors are no exception to these core tenets
and, in some cases, may illustrate a prime example.
The paper observes that, in certain countries, the use of AEPs to date reflects early
adoption of the policy instrument. Thus, in such cases, the goals and potential benefits
of existing programs may not yet be fully realized. Further, the limited number of AEPs
sponsored by country patent offices to date could benefit from greater awareness and
broader dissemination of information on their utilization and benefits. No doubt, in a
competitive and rapidly changing business and investing landscape, accelerated
examination and lower fees for AEPs intuitively offer benefits and incentives to inventors
and SMEs, and accordingly to their investors.
The SC further observes that numerous other policy instruments (e.g. R&D tax credits)
are often used to incentivize innovation and thus may result in patent filings. AEPs can
therefore work in parallel with such other instruments and, when taken together, will
further increase opportunities for success in developing new technologies.
Working collectively, multiple policy instruments can address public health crises like
climate change through a multi-pronged approach that is prudent public policy, given
that the benefits of each such instrument (e.g. AEPs, R&D tax incentives) may be
realized at different times and under different circumstances. Similarly, their effects may
be indirect and less clearly measurable in light of the multitude of factors at play.
Finally, global experience with the COVID-19 pandemic further illustrates the
interconnection between public health crises and the need for accelerated innovation to
industry sector. VC investors seek startups with patented products and solutions in order to protect their investments in such companies. Without patents and/or other barriers to entry, VCs will assume other well-financed companies will appropriate and/or easily compete with the startup’s technology, and thus lower or eliminate the VCs return on investment.
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mitigate risks to widespread public health concerns. The rapid responses of many
different parties and governments in pursuit of breakthrough vaccines against the novel
Coronavirus are, collectively, illustrative. Many attempts are needed to produce the
desired outcome--an effective vaccine. Such pursuits must also occur alongside the
many alternative measures that are necessary to control and prevent spread of the virus
before a vaccine is available. The investments in innovation and other risk mitigation
efforts (during this seemingly acute period) reflect a multi-pronged approach that is
equally relevant to the longer term health risks of climate change.
The paper will thus draw on lessons learned to date from the Covid-19 crisis, and
compare and contrast such lessons with needed efforts to innovate solutions to address
global climate change. In the case of the global pandemic, the SC observes that a multi-
pronged approach has been pursued along with coordination among countries and other
relevant jurisdictions. These efforts combine different measures that collectively seek to
stop the spread of the Coronavirus and ultimately bring it under control.
A key takeaway of this paper, then, is that AEPs offer important benefits and are
appropriately placed alongside other measures that target climate change and its related
social costs and health consequences. Each potentially effective measure increases the
odds of success, especially when employed in combination with other promising
measures. In order to advance efforts to combat climate change and mitigate public
health risks and social costs it imposes, the SC observes that the merits of incentivizing
green patents and innovation are compelling and increasing in importance--especially as
the growth and frequency of climate-change related impacts is increasingly evident.
II. The Green Technology Landscape
Growing awareness of climate change has moved environmental concerns to the
forefront of international discussions. At the 2018 United Nations Climate Change
Conference in Katowice, Poland, UN Secretary General António Guterres told the
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attendees, “we’re running out of time. To waste this opportunity would compromise our
last best chance to stop runaway climate change. It would not only be immoral; it would
be suicidal.” The conference concluded with an agreement on rules to implement the
Paris Agreement.7
Most countries attending the 2018 conference accepted the finding in the Special Report
on Global Warming of 1.5 °C. The report found that, if current trends continue, global
temperatures will likely rise to 1.5 °C above pre-industrial levels between 2030 and
2052. Meeting target reduction rates is possible but would require “rapid, far-reaching
and unprecedented changes in all aspects of society”.8 Such changes present
challenges, but also opportunities: Bertrand Piccard, the founder and Chairman of the
Solar Impulse Foundation, stated, “building energy efficient and environmentally friendly
solutions is the biggest business opportunity of the century.”9
In the face of the climate crisis, green technology development tends to focus on a few
main themes. These include renewable energy, cleaner approaches to traditional energy
development, recycling and reduction of waste, and strategies to mitigate the effects of a
warming climate. Technologies developed for these purposes often have other benefits,
such as the reduction of land use and water pollution.
A. What is the current state of green technology?
1. Green Energy and Cleaner Energy
Energy production, though far from the only factor affecting climate change, is
nevertheless critical. In particular, there are growing calls to reduce dependence on
fossil fuels and to adopt cleaner, renewable sources of energy, including wind, solar,
and biomass-derived energy. The International Energy Agency (IEA) reports that in
7https://www.theguardian.com/environment/2018/dec/12/un-chief-antonio-guterres-attempts-to-revive-flagging-climate-change-talks 8https://www.ipcc.ch/2018/10/08/summary-for-policymakers-of-ipcc-special-report-on-global-warming-of-1-5c-approved-by-governments/ 9https://iccwbo.org/media-wall/news-speeches/six-takeaways-cop24-business-industry-day/
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2018, 26% of the world’s energy was derived from renewable sources. The IEA also
predicts that renewable power capacity will expand by 50% by 2024.10
According to a report from the international classification society DVN GL, oil and coal
were by far the largest sources of global energy supply in 2016, at 168 EJ/yr and 163
EJ/yr respectively. However, as shown in Table 1 and Figure 1 below, the report
predicts that the share of these non-renewable resources will drop substantially by 2050,
with renewable sources rising to fill the gap.11
Table 1. World primary energy supply by source (EJ/yr). Note that totals may not align, due to rounding.
2016 2020 2030 2040 2050 Share in 2050
Oil 168 169 164 130 86 15%
Coal 163 157 140 96 60 10%
Natural gas 140 150 182 179 149 25%
Nuclear fuels 30 36 44 41 28 5%
Geothermal 3 3 4 4 4 1%
Biomass 56 59 66 69 67 11%
Hydropower 14 17 20 23 24 4%
Solar thermal 2 2 3 3 4 1%
Solar PV 1 3 19 55 96 16%
Wind 3 5 18 40 68 12%
Total 581 603 660 639 586 100%
10 https://www.iea.org/reports/renewables-2019# 11 DVN GL Report, 151
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Figure 1. World primary energy supply by source (EJ/yr).
Biomass is currently the largest source of renewable energy, although its sustainability
is sometimes in question.12 Among other concerns, ‘biomass’ includes wood and
charcoal used for cooking and heating, as well as organic waste products and crops
grown for biofuel.13 Although clear-cutting and monocultural agricultural development
can result in decreased biodiversity, the DVN GL report predicts that use of waste
biomass and liquid biofuel will rise over the coming decades, reducing the use of more
environmentally damaging biomass varieties.14
The DVN GL report also predicts that solar photovoltaic (PV) and wind energy will rise
substantially by 2050, with solar PV energy production becoming the most significant
renewable energy source. Recent developments, including the introduction of perovskite
cells, have significantly improved the efficiency of solar PV technologies, a trend that is
likely to continue.
12 DVN GL Report, 168, 197 13 DVN GL Report, 168, 197 14 DVN GL Report, 168, 197
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2. Technologies to Reduce Consumption and/or Increase Efficiency
In addition to changing sources of energy supply, many green technologies are directed
to reducing energy consumption and/or to reducing the consumption of materials.
Examples include more efficient batteries and steadily increasing fuel efficiency of cars
and other vehicles, as well as recycling technologies for the reuse of paper, metals,
glass, polymers and other valuable materials. Inventions that support such
developments may generally be classed as green technology, even if the connection is
not immediately apparent.
3. Technologies to Mitigate Existing Conditions
Many of the green technologies described above are forward-looking—that is, they seek
to reduce environmental harms in the future. However, “green technology” also
encompasses technologies that seek to mitigate current concerns. One such technology
group is known as carbon capture and storage, or CCS. CCS technologies recoup
carbon dioxide produced by industrial processes, preventing the emissions from
entering the atmosphere. In some cases, the stored carbon can be repurposed and
even turned into fuel.15 Many other mitigation and remediation technologies could be
described as “green technology”.
B. Addressing the Climate Crisis in Light of Lessons from COVID-19
1. Comparing crises: Covid-19 and Climate Change
The committee believes the experiences of the Covid-19 pandemic and related policy
responses illustrate critical lessons with respect to addressing other large-scale global
crises like climate change. These experiences share common themes with other public
health, environmental and human welfare policies and contexts.
The SC further notes that, just as the lessons of Covid-19 apply in areas like disease
control and public health policy more generally, such lessons apply equally well to
climate change policy, including IP-related policies that support innovation and
15 https://www.bbc.com/news/business-49725741
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development of new technologies that address public health and safety concerns related
to climate change.
We describe how certain lessons of the Covid-19 pandemic apply to climate change
policy below. Common themes applying to both the Covid-19 pandemic crisis and
present and future crises inflicted by climate change include:
● A need for clear and informed public awareness and recognition that a crisis (and
related future crises) is urgent, foreseeable and requires action;
● A need for accelerated policy responses to better prevent (further) bad outcomes
by mitigating potential risks and consequences of crises before they materialize
(or more fully materialize);
● Multi-pronged approaches that tackle the impacts of crises using multiple
complementary policy instruments working from different angles, to diversify
action and reduce dependence on any one solution or approach; and
A need for national, regional and global coordination in order to be as effective as
possible, so that ineffective policy (or lack of policy--and related consequences) in one
area does not spill over to other areas, propagating risks and further spreading the
problem(s) and consequences, for example.
Policy responses to the Covid-19 pandemic demonstrate that a multi-pronged approach
will often be necessary in addressing global crises and related health and environmental
problems. Further, different policy instruments and related solutions will often be
complementary. Meanwhile, inaction, or incomplete or delayed action often poses
serious risks and consequences. Further, favoring certain policy instruments while
disregarding others may undermine the common goals of all such policies.
In this context, the committee believes lessons from the Covid-19 crisis should inform
both current and future policy responses in areas like climate change. Such multi-
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pronged approaches to shorter-term or more immediate crises such as pandemics and
disease may often apply equally well to medium- to longer-term crisis-inflicting problems
like those emanating from climate change and its related impacts.
2. Urgency, timing of impacts, and need for accelerated responses
The COVID-19 crisis illustrates a sense of urgency that the SC considers necessary to
address not only the novel Coronavirus, but other public health crises including those
arising from climate change. The paper does not mean to equate these two types of
crises on all levels. There are obvious differences, such as the fact that the virus has a
narrower set of known direct consequences (physically speaking, though not
economically) such as related illness and potential death for many people and
corresponding demands on medical resources such as hospital beds and ventilators, for
example. In this sense, the Coronavirus crisis may seem to be a more immediate, or
acute, public health issue. It is also considered one for which a dominant solution such
as a vaccine may become available, as discussed further below.
In contrast, many may view climate impacts as ranging from near-term (and immediate
in many cases, e.g. frequency of wildfires and weather event-related disasters) to very
long-term in others. Further, climate change-related risks can be addressed through
combinations of many different solutions across many industries and at various points
along supply chains.
Thus, while the Covid-19 pandemic is a global public health crisis with clearly immediate
impacts, the impacts of climate change are evident and also jeopardize public health
and human welfare globally. Indeed, many risks and consequences that climate change
poses on human welfare and economic activity are clearly evident and consequential
today (e.g. the recent unprecedented wildfires in the North American West, burning
tundra in Siberia, rapid melting of the arctic ice shield, etc.). Such impacts are recurring
with greater frequency and intensity than ever before, and are expected to continue in
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many iterations, over a much longer time horizon, and on a larger scale in many
respects.
Human and environmental consequences of climate change are foreseeable and
predicted to be manifold and of many types, including continuing increases in natural
disasters, coastal erosion, displacement and loss of property and livelihood, mass
migrations, and many others known and unknown.
Like Covid-19, the consequences of climate change are and will be felt in many areas
around the world. And they will likely occur in iterations for many decades to come—that
is, not only as a single event or in one period. Human health and welfare effects are
pervasive among risks considered by scientists to be endemic to climate change,
especially if left unchecked. Thus, the lessons and human toll of Covid-19 should inform
climate policy responses on a grand scale.
3. Multi-pronged solutions and diversified action required
In the cases of both Covid-19 and climate change, the committee recognizes that policy
decisions among many countries are needed that employ multiple instruments and,
often, concerted efforts to impede the growth of these major risks to human health and
welfare. Among these are policy instruments that incentivize investments in technologies
that mitigate such risks, such as the AEP instruments discussed in this paper, which
incentivize investments in green technology.
In the Covid-19 context, the committee observes and applauds that numerous
companies and countries with resources employ fast-track approaches for the
development of vaccines for the novel Coronavirus and related efforts—including related
IP development. These accelerated R&D efforts have been rapidly implemented in light
of the immediate term consequences of the Coronavirus crisis.
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For example, in some countries (e.g. the United States) accelerated patent examination
policies that already applied to green technology were quickly modified to afford
inventors of technologies addressing the problems of Covid-19 access to more
streamlined patent exams and approvals while waiving all filing and related fees that
would otherwise apply.16 Qualifying patent applications can relate to a range of medical
technology types, and need not directly relate to vaccines, for example.
Similarly, the “solution” to addressing climate change is embodied in an even wider
variety of technologies that range from cleaner energy sources to products and services
that reduce energy consumption. There is no “silver bullet” for addressing climate
change, including through technology. Rather, the “solutions” reflect a quiver of arrows
taking many different forms--all of which increase chances of hitting the target. This
contrasts with the (albeit yet unrealized) promise of an effective vaccine as an ideal or
dominant solution (or type of solution), as in the Covid-19 context.
But while technological and other solutions to address climate change clearly reflect a
multi-pronged approach, we observe that the approach to the COVID-19 crisis is not
very different in this respect. We also note that inherent to the responses to the COVID-
19 crisis are efforts to accelerate technology development - primarily, but not solely, in
the pursuit of a vaccine against the virus. Here again, we observe that a similar sense of
urgency in accelerating solutions to address climate change serves public health
interests no less.
As stated above, a key element of the COVID-19 response is rapid technological
innovation, most notably through collective pursuits towards developing and producing a
vaccine. However, the SC observes that, prior to the availability of a vaccine, many
other risk mitigating strategies and initiatives were and continue to be necessary in order
16 See the USPTO “COVID–19 Prioritized Examination Pilot Program,” for example, United States Federal Register / Vol. 85, No. 94 / Thursday, May 14, 2020 / Notices, pages 28932 to 28935
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to save lives and prevent further spreading of the virus. Witness the successful
strategies involving stay-at-home orders, mask requirements and social distancing in
public. Where used effectively, rates of infection and resulting deaths have been
reduced. Where not used, the opposite effect is observed. In addition, advances at
diagnostic testing and contact tracing are evolving to better focus the aforementioned
steps--representing yet another prong.
Thus, responses to COVID-19 have also used a multi-pronged approach employing
multiple tools available to enhance the goal of preventing the spread of the virus. The
SC feels this example of a near-term, or acute, multi-pronged approach can inform
current and future efforts to address the present and long-term urgency of the climate
crisis. Climate change impacts are being immediately felt, including at the exact time this
publication was written--and they will continue to impose many public health
consequences and other economic costs on a grand scale, for many years to come.
The multi-pronged approaches discussed above illustrate that it is not an “either/or”
question as to what policy instruments should be implemented to fight Covid-19—such
as a choice between using masks and social distancing, on the one hand, or just waiting
for a vaccine, on the other. For one, whether and when a vaccine will become available
remains unknown as of this writing.
Once innovated, the ability to disseminate such a vaccine on a global scale faces other
challenges. Clearly, the first instrument—impeding the spread of the virus without yet
having the ability to vaccinate against it—is also necessary. This could remain the case
in many places even after a vaccine is found, depending on whether and when such a
vaccine is effectively distributed to populations globally.
In short, no single policy instrument can satisfy all demands while the virus poses
serious threats to human health and welfare, especially when the timing and success of
finding a vaccine remain uncertain as of this writing--while hundreds of thousands of
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lives have already been lost to the novel Coronavirus. The committee sees the need for
multiple instruments in this crisis—including IP- and other innovation-based policy
instruments—to be applicable in the case of climate change policy as well.
Thus, the Covid-19 pandemic offers a useful analogy in the climate change context.
Here, technology innovation that reduces dependency on carbon-emitting technologies
is necessary to protect human health and the environment. Both accelerated
examination processes (AEPs) for key patents in this area and a variety of other
measures to address climate change are necessary.
Further, it is not more or less urgent to develop new green technology solutions that
address climate change than to pursue other complementary policy measures that, for
example, curb consumption and/or the use of more carbon-intensive fuel sources, for
example. Indeed, these instruments go hand-in-hand and increase the chances that the
goals of all such policies will be achieved.
4. Accelerating innovation and development in public health crises
The practice of accelerating innovation and production of new technologies to address a
crisis, such as a vaccine for the Coronavirus, can add critical time advantages with great
potential for saving lives. More generally, measures to enhance public health benefits
ultimately demand new technologies. This remains true whether fighting a deadly virus
or reversing climate trends that threaten large tracts of coastal lands and properties and
the livelihoods of millions that depend on them, for example, while bringing on natural
disasters and their attendant risks to public health.
Regarding the COVID-19 response, many countries and companies are collaborating on
public and private research initiatives to find a vaccine. In conjunction with the research,
production of the more promising vaccines is being approved and funded on an
accelerated basis--i.e. before finalizing tests on their efficacy and safety. This
unorthodox and financially risky approach to drug production is another accelerated
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policy innovation, one intended to reduce or eliminate the normal lags between final
testing and approval of a vaccine, on the one hand, and manufacturing and
dissemination of drugs, on the other.
Thus, another policy of acceleration is widely applauded by scientists and policymakers-
-because it would ‘leap-frog’ many months otherwise necessary to produce the drug if it
is found to be successful--saving many more lives than if the additional (subsequent and
sequential) production time were necessary to get the vaccine into circulation.
Accelerated action appears no less urgent when the impacts of crises may be dispersed
and/or happen iteratively over time, as may be the case for impacts of climate change.
Solutions that may prevent future disaster can come too late if the problem-solving is not
begun soon enough.
Impacts of climate change are already observable. They will only increase in terms of
severity and social costs on a global basis. Now is the time for more action. The SC has
considered the metaphor of a large passenger ocean-liner (e.g. the Titanic) en route to
colliding with an iceberg. Beyond a certain distance, the large ship cannot change
course quickly enough to avoid the collision. At this point, the opportunity to turn the ship
has passed long ago, with fatal consequences. With medium- and longer-term impacts
from climate change, accelerating means not only reacting quickly, but also reacting
early enough to avoid future disaster.
III. Accelerated Examination Programs Around the World
Accelerated examination programs (AEPs) for green technology are meant to expedite
the processing of applications for green technologies at the various Patent Offices
worldwide that have implemented them. This faster processing is intended to encourage
patent filings and hence the publication and dissemination of green technology
knowledge. However, some AEPs have been more successful than others.
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As an example, the United States implemented a Green Technology Pilot Program in
2009. The pilot program concluded in 2012, by which time roughly 3500 pilot-program
applications were filed—that is, over 800 a year. Canada, however, has had an active
green technology fast track program since 2011 (more than twice as long as the US
program existed). However, as of June 2018, only 80 Canadian applications had taken
advantage of the program (approximately 10 cases a year). Although the US is certainly
a larger market than Canada, the contrast suggests that not all AEPs are equally
successful. Since 2009, ten (10) national offices in the world have set up fast-tracking
programs for green patent applications (FTGPA program). In 2018 and 2019, our
Standing Committee sent questionnaires to representatives of each of the national
offices with a FTGPA program. The purpose of this questionnaire was to seek legal and
statistical information from national offices on FTGPA in their respective jurisdictions.
Reports from national patent offices with AEP programs for green technologies were
received in 2018 and further updates were received in 2019 from the following countries,
in alphabetical order: Australia, Brazil17, Canada, China, Israel, Japan, the Republic of
Korea, Taiwan, the United Kingdom (UK), and the United States of America (U.S.).
Based on information from the ten Patent Offices, a few general observations were
made by the Standing Committee:
● All the reports are short on statistics due to a lack of data from the national offices,
especially with regard to the percentage of users of the green program that are
small- and medium-sized enterprises;
● The criteria used by different offices are not homogeneous and in fact substantially
differ from one country to another; and
17 A questionnaire was not completed; however, the analysis takes into account information on the FTGPA in Brazil taken from the Resolution #175/2016 published by the Brazilian Patent and Trademark Office on December 6, 2016, updated by Resolutions #239/2019 and #247/2020.
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● The overall number of green patent applications is low.
A. Analysis of the Standing Committee reports on FTGPAs
1. Commencement of Green Patent Programs
All members report that their green patent program was launched in the last decade.
The first program started in May 2009 in the UK. Australia, Israel, Japan, the Republic of
Korea and the US started their respective programs in 2009 as well. Canada started its
program in 2011, China in 2012, and Brazil in 2016. In the US, a pilot program existed
between 2009 and 2012 that focused on accelerating examination for green technology
patents (i.e. prioritizing examination of such “special case” applications in advance of the
normal order). In 2011, US patent law expanded to include accelerated examination for
other types of special cases (“Track I” prioritized examination), while still retaining such
status for green technology patent applications as long as they met other special case
criteria. Accordingly, the USPTO “sunset” green-tech only provisions.18 (See In-Depth
US update in Section III.C.4.)
Please refer to Appendix A for specific dates of various country AEP programs.
2. Reviews of Green Patent Programs
The vast majority of the countries (Australia, Brazil, Canada, Israel, the Republic of
Korea, the UK, and the US) report that their green patent program is not under review.
China, Japan, and Taiwan did not respond to this question. Australia, Canada, Israel,
and the UK report that no upcoming review is expected, and that no review has been
conducted.
18 According to the US Federal Register: The Track I Program provides prioritized examination having a more aggressive time frame for examination than the Green Technology Pilot Program, with an aggregate goal of reaching final disposition within 12 months and maintains an enhanced special status of the application throughout prosecution until final disposition. Additionally, the Track I Program does not have the restrictions of the Green Technology Pilot Program on the types of inventions for which special status may be sought, as the Track I Program does not require a connection to any particular technology. In view of the ability of any applicant to request prioritized examination with the filing of an application under the procedure set forth in the Track I Notice, the Green Technology Pilot Program will not be extended past the earlier of March 30, 2012, or the date that 3,500 applications have been accorded special status under this program. (https://www.govinfo.gov/content/pkg/FR-2011-12-15/pdf/2011-32115.pdf)
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Brazil reports that a review conducted in July 2019, led to the amended policy now in
force as of June 30, 2020. However, no substantive changes were introduced since the
review of July 2019.
In the Republic of Korea, the Korean Intellectual Property Office (KIPO) has been
annually monitoring how actively the green patent program is used by counting the
requests for expedited examination for "a patent application directly related to green
technology". The so-called “Super-Fast Track Examination” process was introduced in
2009. This process allowed further expedition of examination for "a patent application
directly related to green technology" that additionally met certain additional criteria.
However, upon review, the KIPO abolished this track in July 2015 due to low usage.
Korea still maintains a Fast Track Examination process for green tech.
In the US, approximately 3500 applications were accepted before the “sunsetting” of the
program in March 2012. Once all the accepted applications were examined, a review
process was begun to determine if the fast-track program should be reinstituted. A
superseding and more general AEP policy, Track I, shifted focus away from green tech-
only approaches to AEP, though specific advantages to green technology applications
later emerged within Track I. See US In Depth update in Section III.C.4 for details. In the
US, after the sunset of the Green Technology pilot program, the USPTO published the
following table in April 201219:
19 https://www.uspto.gov/sites/default/files/patents/init_events/green_report_summary20120426.pdf
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Accordingly, the US green-tech pilot granted 3,533 petitions while it dismissed 1,501
petitions and denied 516. Meanwhile, 1,062 issued patents had resulted to date (April
26, 2012) from such green patent application petitions. The table also shows the
numbers of petitions by technical classifications. See Appendix E for details.
For more information regarding Track I, the US successor program remaining available
to green technology patent applications, see the In-Depth US update in Section III.C of
this report.
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3. Changes to Green Patent Programs since inception
Several Offices (Australia, Canada, Israel, and the UK) state that their programs have
not changed over the years. However, a number of Patent Offices have changed their
programs over the years:
● China reports that their office (CINPA) issued an Administrative Measures in 2017
regarding the Prioritizing Examination.
● The Republic of Korea reports that Super-Fast Track Examination was introduced in
October 2009 but abolished in July 2015.
● Taiwan reports that their office (IPO) removed the requirement of advancing laying-
open for an application as of April 2016.
● The US reports that the Green Technology (pilot) program per se was “sunset” in
March 2012. However, it had already been replaced by a broader and more
accelerated AEP-type program (Track I prioritization) that remains equally available
to qualifying green patent applicants to date. (See In-Depth US update in Section
III.C.)
● The Brazilian Patent Office no longer limits the number of applications per year in the
program. In addition, technologies are no longer listed in the WIPO Green Inventory.
4. Current Green Patent Program criteria
All members state that the invention must be related to a field of green technology.
In Australia, a simple statement that a patent application relates to a field of green
technology will constitute a suitable reason in support of a request for expedited
examination.
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In Brazil, The patent application may relate to an invention or to a utility model; the
invention or utility model must be directed to alternative energy, transportation, energy
conservation, waste management and sustainable agriculture.20
In Canada, Israel and the UK, the applicant must additionally explain how the invention
improves the environment or mitigates negative environmental impacts.
In Taiwan, the applicant also has to provide a written explanation indicating the
connection between the invention and green technology. In addition, the claims of the
invention must be directly related to green technology areas21 recognized in Taiwan.
In China, all the three categories of patent: invention, utility model and design
applications can apply for Prioritizing Examination. The applying applicant should
provide relevant prior art documents. And the application documents shall be pre-
examined by a local provincial IP Office, which shall provide a Recommendation Opinion
after the preliminary examination.
In the Republic of Korea, the invention must be “directly related to” green technology.
Applicants with inventions meeting certain specific criteria (i.e., government certification
or financing) must file a document proving the financing or certification to use the green
technology examination when the patent application is directly related to green
technology.
20 The program is available to Brazilian patent applications that have been accepted by the formal preliminary examination or by the examination of eligibility for entry into the national phase in the case of PCT applications. There should be a maximum of fifteen (15) claims that include no more than three independent claims. The patent application should already have been published in the Brazilian Industrial Property Journal or a request for early publication must have been filed. The examination of the patent application must have been requested. The program is not available where a substantive office action has already been produced by the Office. The strategic fast-track examination fee should be paid. 21 The Applicant may provide proof of the direct relationship to green technology areas through reference to the disclosure in the patent specification or drawings; or documents showing that the invention is related to a green technology research program supported by the government.
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For more information regarding the US successor program remaining available to green
technology patent applications, see the In-Depth US update in Section III.C of this
report.
5. Patent Office verification of Program criteria
Australia, Canada, China, and the UK report that their office does not verify that the
invention meets the criteria. Brazil, Israel, the Republic of Korea, Taiwan and the US
report that their office verifies that the invention meets the criteria.
6. Aspects of examination that may be accelerated
The majority of the countries (Australia, Canada, Israel, the Republic of Korea and the
UK) report that all parts of the examination can be accelerated.
In Brazil, the program applies to Brazilian patent applications which have been accepted
by the formal preliminary examination or by the examination of eligibility for entry into the
national phase in the case of PCT applications.
In China, for invention applications, substantive examination, re-examination and
invalidation procedure can be accelerated via the Prioritizing Examination; while for
utility model and designs, the examination procedural can be accelerated in all parts.
In Taiwan and the US, only substantive examination can be accelerated. For more
information regarding the US successor (Track I) program to the Green Technology pilot
program sunset in 2012, see the In-Depth US update in Section III.C of this report.
7. Taxes and fees paid for the accelerated examination system
Many of the countries (e.g. Australia, China, Israel, Canada, and the UK) report that the
taxes to be paid for the accelerated examination system are identical to those of the
regular/normal examination. Other countries (Brazil, Taiwan and the Republic of Korea)
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report that an additional fee must be paid in addition to the regular/normal examination
fee.
8. Statistics on case accelerations
In Brazil, 256 patents have been granted since inception of the AEP (last updated on
April 2, 2019). This is around 36 cases granted per year on average. According to a
recent publication at the BR PTO website, 70 requests for accelerated examination were
filed during 2019.
In Canada, 80 cases have been accelerated since inception (last updated on June 22,
2018). This is around 10 cases per year on average.
In Taiwan, 210 cases have been accelerated since inception (last updated in July 2020).
This is around 32 cases per year on average.
In Israel, 176 cases have been accelerated since inception. This is around 22 cases per
year on average.
In the Republic of Korea, 1909 cases have been accelerated since inception (last
updated in 2016). This is around 273 cases per year on average.
In the UK, 2460 cases have been accelerated since inception (last updated in
September 2020). This is around 200 cases per year on average.
In the US, 3533 cases were accepted. By 2012, 3130 had entered into examination.
Today, all examinations are complete.
Appendix B (Tables 2 to 5) identifies certain characteristics of the Applicants, such as
the top program users, and the most common technical fields examined through these
FTGPA programs.
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The Standing Committee was not able to identify the percentage of users of the green
program that are small- and medium-sized enterprises. We recommend that this
information be made available by the various patent offices in future years. 9. Timing of examination under the green patent program
In Australia and China, the first office action will be issued within 1 to 2 months. In Brazil,
the first office action will be issued on average within 6 to 12 months. In Canada, the
UK, Israel, the Republic of Korea and Taiwan, the first office action will be issued within
2 to 3 months. In the US, the first office action issued within 6 to 8 months.
10. Recommended improvements to the FTGPA programs
As will be discussed further below, many members of the Standing Committee are of the
view that the accelerated examination system can be improved. Several members
(Australia, Canada and Israel) are of the view that the general public awareness
amongst innovators is very low. Consequently, raising awareness of these green
technology programs is recommended. In this respect, the Israeli Group suggests
adding a notice about the option of expedited examination for green inventions into
letters sent by Patent Offices to their applicants. Additionally, Israeli and Korean
members are in favor of determining clear criteria for acceptance into FTGPA programs.
Moreover, the implementation of preferential taxes for green patent applications could
lead to an increase of applications. More about such tax measures will be discussed
below.
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B. Definition of Green Technology
1. Different definitions compared and contrasted
Just as there are many forms of “green technology”, there are many different legal
definitions. The following table presents legal definitions of green technology that
determine access to AEPs in various jurisdictions.
JURISDICTION Requirements for fast track/expedited examination
Australia The patent office makes a “relatively subjective” assessment themselves as to whether or not the technology fits within the realms of green technology / “cleantech”. If the patent office does not consider the request suitable then they may request additional information from the applicant to substantiate the claim.
Brazil
Green technology patent applications are all patent applications that claim matter directly applied to:
- alternative energies;
- sustainable transportation;
- energy conservation;
- residue management; or
- sustainable agriculture
Canada
There is no detailed list of criteria. Generally, the registered patent agent will assess whether a technology qualifies as green technology. The following statement must be made to CIPO. “Applicant declares that this application relates to clean (otherwise known as green) technology and the commercialization of the invention would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources”.
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China
There is no detailed definition on the terms of Green Technology. According to the Prioritizing Examination, technology that may be fast-tracked includes applications related to: “nationally prioritized industry, such as energy conservation and environmental protection, new generation information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing, etc;” and/or applications that have “great significance to the national interest or public interest,” etc.
Israel
“Green Applications” are patent applications for inventions that can improve the environment, among others, by reducing global warming, reducing environmental pollution of air, land and water, non-polluting agricultural technologies, and others
Japan
An invention/s having effects such as energy saving and CO2 reduction.
South Korea
Technology that minimizes emissions of greenhouse gases and pollutants by saving energy and resources and making use of them efficiently throughout the whole process of social and economic activities, such as reducing greenhouse gases, raising the efficiency of energy utilization, pollution-free production, clean energy, recycling resources, and eco-friendliness including related convergence technology
Taiwan
Green technologies include the following: 1. Technologies for improving energy conservation and for
developing new sources of energy or renewable energy vehicles; or
2. Technologies of carbon reduction and resource saving. For example, the following areas are included without limitation: solar energy; wind energy; bioenergy; hydraulic energy; geothermal energy; marine energy; hydrogen energy or fuel cell; carbon dioxide storage; waste energy; LED lighting; and green vehicles.
UK The Green Channel is available for inventions that have an
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environmental benefit, as indicated by the applicant’s reasonable assertion.
US Pilot Program (no longer active)
Green technologies include:
1) Applications Pertaining to Environmental Quality: Patent applications for inventions which materially enhance the quality of the environment … by contributing to the restoration or maintenance of the basic life-sustaining natural elements.
2) Applications Pertaining to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction: Patent applications that materially contribute to: (1) the discovery or development of renewable energy resources*; (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions.
*The term ‘‘renewable energy resources’’ for purposes of the procedure specified in this notice includes hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources. The second category (more efficient utilization) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances. The third category (reduction of GGE) would include, but is not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies).
2. Summary of definitions
The Standing Committee (SC) applauds and appreciates that many jurisdictions have
given considerable thought and attention to definitions of green technology, not only in
the context of AEPs or patent policy, but in regards to other economic, environmental,
financial and social policies more generally.
The scope of definitions varies widely. For instance, the UK merely requires an applicant
to make a ‘reasonable assertion’ that the invention ‘has an environmental benefit’. The
US, however, has outlined specific (albeit relatively broad) criteria that must be met.
Some such differences are intentional and more appropriate to a particular policy issue
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or jurisdiction to which the definition (and related policy instrument) applies. Further,
different country- or policy area-based viewpoints aid in improving awareness among
those in other areas about considerations of potential relevance in one’s own jurisdiction
or policy area. In short, the panel sees the question of a definition of “green” in the IP
context as interacting more broadly in other policy areas, hopefully, fostering broader
conversation and engagement on such questions.
The Standing Committee (SC) also notes that the variations in the definitions of “green
technology” among different countries and government patent authorities do not
necessarily introduce problems, and clearly not all inconsistencies have consequences.
For example, varying definitions of green technology may overlap, at least in part, and
thus are usually not mutually exclusive. Further, each government’s sovereignty over
domestic patent law and environmental law and policy deserves deference and respect.
It is, of course, common that patent application and approval procedures differ among
jurisdictions as a general matter. Additionally, there may be instances in which a narrow
definition of green technology is preferable to a more expansive one: as an example, an
overbroad definition might result in the acceleration of applications incorrectly labelled
as ‘green’ that do not further environmental goals, or in excessive petitions for green
applications inundating examiners’ offices.
However, inconsistencies between broad and narrow definitions of green technology
could raise issues. For example, assume two countries had AEPs with different
definitions for green technology: that is, Country A has a narrower definition of green
technology than Country B. Thus, green inventions qualifying for accelerated approval
within A’s jurisdiction would be only a subset of those qualifying in Country B. Further,
green inventions falling within Country B’s broader definition, but not within Country A’s,
would be at a disadvantage in securing patent protection in Country A. If those
inventions could be used to cost-effectively mitigate current and urgent climate-related
problems arising in both countries A and B, the different definitions might have far-
reaching consequences for the public interest as well as the inventors themselves.
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Here, the full societal benefits of AEPs are not realized even though countries A and B
each have such a program. The citizens of Country A would be less likely to experience
the full benefits of those technologies excluded from their program, as compared with
the citizens of Country B. Furthermore, as many environmental problems do not respect
political borders, Country B’s citizens may suffer ill effects from Country A’s narrower
definition, which fails to address certain problems by failing to incentivize inventing
certain needed technologies. Where globally urgent environmental problems like climate
change are concerned, virtually all countries could potentially face consequences of
inconsistent definitions of green.
Nevertheless, the Standing Committee encourages any single jurisdiction having an
approach and taking steps to deal with urgent environmental issues that occur within its
jurisdiction. In fact, such actions may be the necessary first step towards a more unified
international policy. However, coordination and awareness among multiple countries is
encouraged, to reduce the chance that programs of one jurisdiction limit or reduce the
effectiveness of programs in other jurisdictions, and to prevent regional and global
problems.
To this end, the Standing Committee proposes developing a preliminary definition of
green technology for future use in the contexts of AEPs in multiple jurisdictions. The SC
believes work on such a definition has merit and offers additional benefits to patent
authorities, while it contributes to developing common views and consistent language
regarding elements of existing and future definitions of green technology, not only in the
area of AEPs but also more broadly. The proposed preliminary definition of a green
technology is as follows:
Proposed definition:
Green technologies (also known as ‘green tech’ and ‘cleantech’) are technologies
that
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provide or are intended to provide an environmental benefit, including without
limitation
by:
- contributing to the restoration or maintenance of the environment,
including by preventing, reducing or repairing damage caused by pollution,
including damage impacting food security;
- contributing to the development of renewable or more efficient energy
resources; or
- the reduction and/or mitigation of greenhouse gas emissions and/or
climate change.
The SC observes that the key components of a definition of green technology above
encompass elements found in some of the national AEPs guidance as shown in the
table further above. For additional examples of definitions, the SC refers readers to the
following: https://www.wipo.int/classifications/ipc/en/green_inventory/
C. In-Depth Country / Region Profiles22:
1. Israel
Since the AEP’s introduction, various attempts have been made to increase public
awareness, including presentations, lectures, and other forms of publication. Despite
these efforts, the average number of requests for accelerated examination has been
relatively constant, at about 22 per year. However, as in other jurisdictions, it is likely
that more effective awareness-raising (such as directly notifying applicants) would likely
increase the number of such requests.
Additionally, there is currently no preliminary examination procedure at the ILPO in
which applications may be labelled potentially "green" and the applicant notified of the
AEP. At the initial stages, applications are only reviewed for formal requirements.
22 https://www.wipo.int/wipo_magazine/en/2013/03/article_0002.html
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Barring expedition requests by the applicant, applications are generally not reviewed by
a professional for about 2 years.
In general, in Israel there are several ways to expedite examination of an application:
● Request for accelerated examination (examination "on the spot")23; or
● Request for PPH/GPPH based on bilateral agreements between Patent Offices24;
or
● Request for examination for Green Inventions.25
According to a report prepared by the Israeli Patent Office, using data up to 2017, the
most popular of these routes is the PPH. The fee is relatively low, and given that
examination in Israel usually begins with a delay compared to other jurisdictions, once
there is a favorable result, it is the easiest way to accelerate examination. Further, the
absence of clarity in the AEP has proven challenging for Examiners.
There are no clear criteria and everyone can give a "reason" for participating in the
program. An Examiner speaking to this issue noted that specific classifications as in
Europe (e.g., classifications for sustainable technologies, such as the Y02 and Y04
tagging), would be very helpful.26
23 The request can rely on various grounds, such as age of the inventor, medical condition of the inventor, possible use of the invention by a 3rd party, unreasonable delay in examination (Section 48d of the Patent Law), or any other reason that could justify acceleration of examination. This request can be filed at any time after the filing of the application. Involves an official fee (NIS713 = ~ US$200). 24 The request can be made when there is a favorable opinion with respect to the same invention examined by another member of the agreement or from the PCT examination authority. This request can be filed at any time after the filing of the application. Involves an official fee (NIS713 = ~ US$200). 25 This request must be filed before examination of the application has begun and must include an explanation on how the invention supports the environment. No official fees. 26http://documents.epo.org/projects/babylon/eponet.nsf/0/6E41C0DF0D85C0ACC125773B005144DE/$File/finding_sustainable_technologies_in_patents_2016_en.pdf
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Additionally, the Examiner at the ILPO responsible for the green technology examination
indicated that reduction in renewal fees (post grant) is possible in principle, although this
is not something that is currently being discussed.
Please refer to Appendix C for statistics from the ILPO.
2. Canada
The 2016 Canada IP Report depicts the patent landscape of Climate Change Mitigation
Technologies. The result shows that Canadian innovators are very active in the field of
renewable energy, smart grids, and clean energy enablers. Compared to other top
patenting countries, Canada is relatively specialized in carbon capture, building smart
grids, and traditional energy fields.27 However, despite Canada’s innovative strengths,
Canada’s fast track program is relatively under-utilized.
The Standing Committee spoke with a CIPO officer for their insight on the green
technology program. In general, the CIPO officer prefers to discuss the patenting
process chronologically by referring to CIPO’s 12-step patent roadmap, because many
self-represented clients know little about patent law and the patent process.28 As such,
issues around public disclosure and the filing date are higher priorities than accelerated
examinations for self-represented inventors. The officer also stated that some green
inventors choose not to pursue the fast-track examination route even when they know
there is no additional cost for requesting the Accelerated Examination. The information
officer stated that when an inventor “sort of knows” about the accelerated examination
for green innovation, the officer will explain the fast-track program in detail.
27 https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr04112.html 28 https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/vwapj/feuille-route-DI-roadmap_ID-eng.pdf/$file/feuille-route-DI-roadmap_ID-eng.pdf
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When a patent agent calls CIPO, the officer assumes that the accelerated examination
program for green innovation is known to the clients because a patent agent should
know about the program.
3. Europe
a. The European Union
The European Union has set up a so-called “Green Deal” in order to transform the Union
into a modern, resource-efficient and competitive economy29. In addition, the EU
provides funding for a broad range of projects and programmes. It has set up the
European Institute of Innovation and Technology (EIT), stimulating innovation, as well as
the European Environment Agency (EEA), for making informed decisions about
improving the environment, integrating environmental considerations into economic
policies and moving towards sustainability.
The EU has no patent office of its own and relies on the European Patent Office
(discussed below) and the national offices. Accordingly, it has no specific programs
(such as those developed in other countries like the US or Canada) for directly
facilitating the filing and/or grant of patent applications related to green technologies. In
the “Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL establishing the framework for achieving climate neutrality and amending
Regulation (EU) 2018/1999 (European Climate Law)” its ambitions are defined, but a
definition of what green (or clean) technologies should be is missing30.
However, the EU Commission has an important focus on energy-related programs and
climate actions, such as improving energy efficiency, decarbonizing the economy,
supporting research and innovation in low-carbon and clean technologies, which can
29 https://ec.europa.eu/info/strategy/priorities-2019-2024/european-green-deal_en 30 https://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1588581905912&uri=CELEX:52020PC0080
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boost the EU’s competitiveness.31 For instance, the EU has implemented restrictive
regulations aimed at reducing automotive CO2 emissions, so that in the coming years,
car manufacturers will further be compelled to upgrade their products as was the case
during the previous decades. This situation will likely give rise to the development of
patentable inventions (“eco-innovations”), which will have to be treated like any other
inventions under the present patent system. As a consequence, in principle it is possible
that each EU member State could establish specific provisions on its own for enhancing
the patenting of green technologies.
b. The European Patent Office
The European Patent Office (EPO), does not have any specific programs for
applications related to environmental or energy inventions. However, the EPO has
introduced a new patent search class, for tagging documents relating to new
technological developments or technologies spanning over several IPC classes (like
technologies or applications for mitigation or adaptation against climate change). This
class covers selected technologies that control, reduce, or prevent anthropogenic
emissions of greenhouse gases [GHG], in the framework of the Kyoto Protocol and the
Paris Agreement. This class also covers technologies that enable adaptation to the
adverse effects of climate change. All of this is also part of the Cooperative Patent
Classification (CPC).
The EPO does not have a fast track system specifically for green patents. There is,
however, a general accelerated examination system (the PACE Program) available for
any technology. This is in addition, or an alternative, to other steps an applicant may
take to accelerate the granting process, such as early entry into the European phase or
early request for examination.
31 https://ec.europa.eu/commission/sites/beta-political/files/key-energy-union-climate_en.pdf
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It is not necessary to meet any special criteria to make an application for accelerated
examination, although the application must be made in writing. However, the applicant is
expected to ‘do its part’ to further the accelerated process. Thus, if, for example, the
applicant requests an extension of time, the application will be removed from PACE
programme.
There is no additional cost to the applicant for partaking in PACE. Further, as renewal
fees are in any event payable annually from the third year of the date of the application
for a European patent, early (or late) grant does not alter the fees payable by the
applicant.
c. The European National Level
At a European national level, it appears that apart from UK’s Green Channel, which was
introduced when the UK still was an EU member state, no other relevant provisions exist
which facilitate or at least streamline patenting of green technologies.
The United Kingdom Intellectual Property Office (UKIPO) introduced the Green Channel
in May 2009 to enable the accelerated processing of patent applications with an
"environmental benefit". In order to enter the Green Channel, the applicant must make a
request in writing stating:
a) How their application is environmentally-friendly, and
b) Which actions they wish to accelerate: search, examination, combined
search and examination, and/or publication.
Provided that the applicant makes a reasonable assertion that the invention has some
environmental benefit, the UKIPO does not conduct any detailed investigation into the
assertion. However, the UKIPO will refuse requests if they clearly are unfounded.
Recent figures for refusal are not available, but in the first year of the Green Channel,
just 2% of requests were turned down.
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The Green Channel is available at no additional cost to the applicant. Early (or late)
grant of a patent application does not alter the total renewal fees a patentee must pay,
though it may delay some of those fees if the application takes more than three years
and nine months (i.e., 45 months total) from filing to grant.
Patents on Green Channel applications are granted, on average, within about ten
months, which is typically less than one-third of the time for a standard application.
d. European Regional Summary
In the light of the successes of the UK Green Channel, there appears to be room for
initiatives that encourage green innovation in Europe. Such initiatives might include:
i) expanded Accelerated Examination programs at all levels (including PPH,
green channel or others)
As stated above, the EPO’s PACE program accelerates the grant procedure, following
the applicant’s demand, and may be used for any European patent application (i.e., not
only with green technologies). Moreover, the EPO has several pilot programmes
connected to the Patent Prosecution Highway (PPH), based on respective cooperation
agreements made by EPO with national/regional Offices, such as “IP5” (i.e., the
grouping of the world’s five largest IP offices: EPO, CNIPA (China), JPO (Japan), KIPO
(Korea), and the USPTO (US)), as well as with patent/IP offices in Brazil, Canada,
Colombia, Israel, Malaysia, Mexico, and Russia, for example.
These PPH pilot programmes leverage fast-track patent examination procedures
already available, to allow applicants to obtain corresponding patents faster and more
efficiently, by permitting each office to exploit the work previously done by another office.
However, the EPO always carries out supplementary searches, whether or not an
application is moving through these PPH programmes. This is in fact the common
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approach under the PPH programmes. Additionally, only a limited number of countries
have made these cooperation agreements with the EPO.32
ii) fee reductions
The European Patent Convention (EPC) provides fee reductions for natural persons,
SMEs, non-profit organisations, universities and public research organisations whose
residence or principal place of business is in an EPC contracting state with an official
language other than English, French, or German, and for nationals of such states who
are resident abroad.33
No further reduction is available based on the type of an invention, such as green
technologies or others. Since the changes in the fee rates are decided by the
Administrative Council of the European Patent Organisation, in principle it would be
possible to implement special provisions with respect to green technologies. However,
such provisions would likely be limited to persons whose residence or principal place of
business is in an EPC contracting state with an official language other than English,
French or German, and nationals of such states who are resident abroad. In any case,
the EPC does not foresee reductions of annuity fees; after grant, the rates of annual
fees are a matter of national regulations.
The annual fees may change with the entry into force of the Unitary Patent System, but
at present it is not possible to know whether or when this will occur.
iii) Increased duration of protection
This subsection addresses an area on which the SC deliberated but was unable to
reach a conclusion or make any recommendations on the issues addressed.
Nevertheless, the paper includes relevant background and examples of views voiced
32 Notice published in EPO Official Journal 2016, A54 33 https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/articl14.html
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within the SC--recognizing that the questions discussed, while unresolved, are worthy of
inclusion in the paper so as to further inform readers of important topics considered.
In Europe, the duration of the patent protection is 20 years from the filing date of the
application. However, in some technical fields (particularly pharmaceutical or plant
protection), it is possible to obtain supplementary patent protection under particular
circumstances. This protection is provided by Supplementary Protection Certificates
(SPCs), and may last for up to five years (or, in the case of “paediatric extensions”, up to
five years and six months).
An application for an SPC must be filed within six months from the authorisation to place
the relevant medicinal or plant protection product on the market. If a basic patent is not
yet granted when the authorisation is issued, the request must be received within six
months from the grant of the basic patent. If an SPC is granted, it takes effect at the end
of the maximum term of protection of the basic patent.
Although these rules are strictly connected to the pharma system, which the SC
recognizes for its unique context and idiosyncrasies, some within the SC believe such
rules could provide inspiration for similar forms of “green SPCs”. For instance, a
question arises as to whether a supplementary protection program could be directed to
inventions having a positive effect in countering climate change, such as through
reduction of CO2 emissions, for example. Proponents of this view note that the wording
of art. 63 EPC, which provides the legal basis for the pharma SPC system in Europe,
could potentially inform an adaptation that would apply to other technical fields beyond
pharma, such as green tech.34
However, other views on the SC strongly question such a policy in the area of green
tech, noting concerns that longer terms for patent protection might potentially delay
more widespread dissemination of green technology that is urgently needed to reverse
34 EPC art. 63
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climate change impacts everywhere possible and as soon as possible. Such delays,
they argue, would more than offset any other potential benefits. These opposing views
also note that, in other respects, green technology and pharmaceutical IP represent
contexts with important differences that are too great in this regard. Such differences
may include, for example, lengthy drug approval phases before going to market that
may, at least in part, still be required after a pharma-based patent has already been
issued--thus consuming a portion of the patent term without the developer yet being able
to exploit the patent commercially. This context, they maintain, is unique to pharma and
is not generally inherent to green tech.
But still other views on the SC note, as is discussed extensively in this paper, there
remain other important parallels between the COVID-19 crisis--which itself has direct
relevance to pharmaceutical IP in the vaccine context--and climate change. For
example, both crises have substantial public health consequences requiring rapid
development of technology solutions. They each, therefore, require sufficient incentives
to innovators to ensure such solutions are developed. This alternative view also notes
that, while the pharmaceutical industry faces strict regulatory requirements concerning
testing and approval for a drug, so too there should be strict tests required to establish
whether or not green technology patent filings, and the underlying inventions, are truly
effective in helping to combat climate change. Such green technology approval
requirements could thus put such inventions more on par with pharma contexts noted
above, they note.
As noted at the beginning of this subsection, the SC recognizes these different and well-
argued points of view on these patent term issues for green tech. Therefore, the paper
does not attempt to offer any conclusion or recommendation on the topic.
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iv) Implementing a grace period for filing after disclosure
The SC members also shared differing views on whether or not grace periods for filing
after disclosures have occurred ought to be made available--either generally or in
specific contexts such as for green technology inventions. Some thought grace periods
worthy of additional discussion, but others disagreed. Therefore, here again the paper is
not conclusive and makes no recommendations. Rather, it simply notes in this
subsection that such issues arose for consideration in developing this position paper.
Some within the SC highlighted European grace periods that already exist: for instance,
a one-year grace period exists for registered designs with EUIPO. However, for
European patent applications, a six-month grace period is only provided under very
limited circumstances: that is, when the prior disclosure is due to, or in consequence of,
an evident abuse against the applicant, or when an invention is displayed in an officially
recognised international exhibition.35
These conditions do not easily extend or directly relate to green technologies, and thus
a green technology grace period would likely require changes in the relevant legal
system that must be ratified by the EPC contracting States. As a result, a green
technology grace period would likely be difficult to implement, at least in the coming
years.
v) Licensing / Pooling / Standard Essential Patents
As background on this topic, some SC members note that in Europe, the new president
of the EU Commission stated that the continent should become carbon neutral in the
next decades. Concurrently, the new EPO classification (Y02 code) system makes it
possible to have useful information about patenting trends--and how patented
technology could play a prominent role in these policy targets. For instance, it has been
35 EPC art. 55
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found that the annual number of sustainable inventions has increased by a factor of
more than five from 1997 to 2016. However, this growth is not constant and does not
always align with trends in other technological fields.36
It is likely that the future development of smart grids, artificial intelligence, big data, 5G
and other new technologies (or industry 4.0), will be instrumental in helping to develop
relevant green technologies. Technology transfer in green tech, licensing, standards-
setting, wherein some patents can become essential (standard essential patents or
SEP), and the growth of patent pooling could also be affected by continued
developments. In this regard, at least in certain fields, green technologies may be seen
as similar to ICTs and related products (e.g. smartphones), where SEPs, pooling and
licensing practices may need to develop because of the large markets involved and the
relevant technological issues concerned--such as interoperability and compatibility
among components of the system.
The SC 2014 report, "Climate Change and Environmental Technologies – the Role of
Intellectual Property, esp. Patents,"37 states that “The development of standards in the
green technology domain may also be quite relevant” where patents are concerned. It
draws attention to, and identifies the advantages of, the International Renewable Energy
Agency (IRENA)’s “Information Platform for Renewable Energy Patents and Standards”,
a web-based information platform which aims at integrating the existing information
regarding the national and international standards as well as patents in the field of
renewable energy technologies. The International Standards Organization observes, in
its publication “GHG Schemes addressing Climate Change How ISO Standards help”,
that “Standards will play an increasingly important role in moving societies and
36 Conference EPO-NIPO 20 November 2018 – Oslo 37 · Pages 18-21 of the Report of AIPPI's Standing Committee on IP & Green Technology entitled "Climate Change and Environmental Technologies – the Role of Intellectual Property, esp. Patents", http://aippi.org/wp-content/uploads/committees/198/Report198Report+Climate+Change+and+Environmental+Technologies+-+The+Role+of+IP+esp.+PatentsEnglish.pdf published at the 2014 AIPPI World Congress in Toronto (Canada).
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economies to a more climate-safe development path. Standards can provide clear
guidelines, help structure processes and set quality norms”.
The SC recognizes that standard-setting and licensing of standard-essential patents
(SEPs) are not without controversy that emanates from the complexity of such regimes
in areas like ICT. Thus, the challenges already faced by such existing SEP regimes, and
how such challenges are being met within related sectors, would be an important
element of understanding their relevance and potential applicability to green technology
going forward.
Further, other sectors’ experiences with standards provide green technology with
opportunities to leverage lessons learned. Additionally, at least to an extent, some
technologies that are characterized as green technology also derive from technology
areas where there is considerable experience in standards setting and SEP licensing
(e.g. ICT in combination with 5G, smart grids, smart homes, etc.). This could foster ease
of adoption of standards where such areas intersect with green tech.
4. U.S.A.
The USPTO has offered some form of accelerated examination procedures, including
with regard to green tech, over a long period beginning in the 1970s and continuing to
the present. In the sections of the report above, attention focuses on the Green
Technology pilot program (“green pilot program”) that was in effect from 2009 to March
2012, at which point the program was sunset in favor of a broader and more accelerated
AEP, referred to as “Track I prioritization” or Track I. Track I is not specific to green tech.
Track I has existed since 2012 and remains in effect while incorporating some
refinements, including some that expressly benefit green technology applicants and/or
SMEs, such as reductions in, and/or elimination of, AEP-specific filing fees. In general,
Track I is not restricted to green technology patent applicants, allowing other categories
of inventions access to the program, though usually for higher fees relative to non-Track
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I applications. Thus whereas higher than normal fees apply to Track I applications for
other technologies, green technology applications have enjoyed lower or no additional
filing fees under Track I, for example, currently and during certain time frames discussed
below.
Track I will be discussed further below, after a short history of earlier US AEPs and
related policies prior to the green technology pilot and Track I programs.
a. Early USPTO Accelerated Examination Programs (1970 to 2005)
As noted above, prior to the US green pilot program, green tech-related AEPs and
similar policies existed at least as of the early 1970s in the US.38 For example, an
applicant’s option for accelerating examination by the USPTO was available by way of a
“petition to make special,” for inventions that (i) enhance the quality of the environment
or (ii) contribute to the development or conservation of energy resources.
For example, in April 1970, the USPTO’s Manual of Patent Examining Procedure
(MPEP) stated that the office will – on the basis of the more generally worded,
underlying statute 37 C.F.R. 1.102 – accord “special” status for inventions that enhance
the quality of the environment; see MPEP 708.02 (Third edition, Rev. 24, Apr. 1970). In
January 1974, the updated MPEP stated that the office will accord special status to
inventions which contribute to the development or conservation of energy resources;
see MPEP 708.02 (Third edition, Rev. 39, Jan. 1974).
Further, in October 1982, the underlying IP statute, 37 C.F. R. 1.102 was expressly
amended to exempt from fee requirements those petitions to make special that related
to environmental or energy-related technologies (thereby officially acknowledging these
favored categories through legislation, rather than only by regulation); see 47 FR 41272-
01, 37 C.F.R. 1.102(c) (“A petition to make an application special may be filed without a
38 This timing coincides generally with the timing of the establishment of the US Environmental Protection Agency (EPA).
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fee if the basis for the petition is … that the invention will materially enhance the quality
of the environment or materially contribute to the development or conservation of energy
resources.”).
b. Accelerated Examination (AE) through “special” case status (2006 - 2016)
In 2006, Accelerated Examination (AE) status for special cases was reinforced and
refined according to an official 2006 notice of the USPTO. The US Federal Register
(Vol. 71, No. 122 / Monday, June 26, 2006 / Notices, at page 36323) provided for
advancement of examination for a number of “special” cases. It specifically listed
“environmental quality” and “energy” applicants as eligible for petitions that would enjoy
both advancement of examination and elimination of filing fees. It states eligibility arising
from,
[a] petition to make special under the accelerated examination program
accompanied by either the fee set forth in 37 CFR 1.17(h) or a statement that the
claimed subject matter is directed to environmental quality, energy, or
countering terrorism. See 37 CFR 1.102(c)(2).
Under USPTO regulatory guidance, applicants must file a petition for Accelerated
Examination (AE) with the goal of finalizing the examination process within a year. First
Office Actions usually occur within 5 months or less. A USD 140 petition fee is required,
which is relatively small and further reduced for small and micro businesses.
Potential disincentives of the 2006 AE program included its detailed document
disclosure requirements and prior art search requirements. Not only were these a
burden on applicants, such documents would become publicly disclosed with potential to
be cited by opposition parties, if such parties sought to litigate against the patent’s
validity, for example. AE applications are limited to 20 total claims and 3 independent
claims.
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c. The US Pilot Program for Green Technology (2009 - 2012)
In 2009, the PTO launched the “Pilot Program for Green Technology.” Essentially, under
the program, a petition to make special for environment or energy-related inventions, as
described above under the pre-existing AE program, could be filed without meeting
certain of the more burdensome procedural requirements that, since 2006, applied to all
petitions to make special. This Green Technology pilot program is discussed in detail
earlier in this report in comparison with other countries’ AEP policies.
In 2012, the US green technology pilot program was sunset (i.e., gradually terminated
and replaced) primarily because the USPTO started the “Track I” program wherein
applicants for any technology could accelerate examination – though only for a
considerable fee. An AE petition to make special for environment- or energy-related
inventions, as described above, was still available, with all regular requirements of a
petition to make special remaining in place.
Generally, while the PTO publishes overall statistics on petitions to make special,39 the
numbers are not broken down to identify the underlying reasons for the petitions. As a
result, the statistics specific to the Pilot Program for Green Technology, as reported in
previous sections of this position paper, are the only statistics specific to green
technology patent applications that the SC was able to obtain. See the previous sections
covering all relevant countries’ AEP programs for data regarding petitions under the US
green pilot program.
d. Track I Prioritized Examination (2011 to 2020)
In 2011, in conjunction with the newly passed IP law, the “America Invents Act” or “AIA”,
the USPTO explicitly stated that the new Track I prioritization program would replace the
green technology pilot program. The agency noted that Track I would be more beneficial
to green technology (“environmental”) technology patent applicants (and other
39 https://www.uspto.gov/patent/initiatives/accelerated-examination
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technology applicants) because of broader access and improvements in accelerating
application procedures. This precipitated the end of the US green pilot program in March
2012.
The U.S. Federal Register /Vol. 76, No. 241 /Thursday, December 15, 2011 /Notices
77979-80 stated,
The Track I Program provides prioritized examination having a more aggressive
time frame for examination than the Green Technology Pilot Program, with an
aggregate goal of reaching final disposition within 12 months and maintains an
enhanced special status of the application throughout prosecution until final
disposition. Additionally, the Track I Program does not have the restrictions of the
Green Technology Pilot Program on the types of inventions for which special
status may be sought, as the Track I Program does not require a connection to
any particular technology.
In view of the ability of any applicant to request prioritized examination with
the filing of an application under the procedure set forth in the Track I
Notice, the Green Technology Pilot Program will not be extended past the
earlier of March 30, 2012, or the date that 3,500 applications have been
accorded special status under this [green pilot] program.
In practice, the Track I program is implemented as follows: Section 708 of the USPTO
Manual of Patent Examining Procedures40 (MPEP) refers to “Order of Examination.” It
states that in the normal course, patent applications will be assigned to examiners—in
the relevant technical fields—in the order in which the applications are filed, “except for
those applications in which examination has been advanced pursuant to 37 CFR 1.102
[“Advancement of Examination].”41
40 https://www.uspto.gov/web/offices/pac/mpep/s708.html (see revised procedures [R-11.2013]) 41 https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e321932
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The relevant USPTO rules were most recently revised in 2019, and they specifically call
out inventions that promote environmental quality and develop and/or conserve energy
resources as qualified for “advancement of examination” by petition from the filing party
to the relevant USPTO director—among other types of inventions (e.g. those countering
terrorism).
Additionally, filing fees are waived for such green technology patent applications and
others that are specified in the relevant paragraph (c ) of 37 CFR 1.102, which states,
(c) A petition to make an application special may be filed without a fee if the basis
for the petition is […t]hat the invention will materially:
(i) Enhance the quality of the environment; [or]
(ii) Contribute to the development or conservation of energy resources[.]
The program now referred to as “Track I” (along with its predecessor AE program) has
accepted up to 10,000 petitions per year for advancement of examination during most of
the period 2006 to 2016, and more recently increased the limit to 12,000 applications.
As before, figures specific to petitions focused on environmental quality and energy
resource conservation were not readily available.
In order to qualify for Track I, applications are limited to 30 overall claims and 4
independent claims. Fees may be considerable for applications that do not meet the
requirements of Section 1.102(c ) described above—USD 4,000 for non-listed types of
inventions, reduced to USD 2,000 for qualifying small businesses. However, as
discussed above, all such fees are eliminated for approved petitions for green
technology patent applications.
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Meanwhile, the AE program discussed above (“special case” applications), which was in
effect since 2006, continued In parallel with the Track I program after 2011. However, its
use by applicants declined after the Track I program came into effect, and thus the
USPTO sought public comments on whether to continue the AE program. According to
the U.S. Federal Register (“Federal Register / Vol. 81, No. 158 / Tuesday, August 16,
2016 / Notices”, p. 4564)
Subsequent to the implementation of the AE program in 2006, the [U.S. Patent
and Trademark Office (USPTO)] implemented the prioritized examination
program (referred to as ‘‘Track I’’) provided for in the AIA [America Invents Act] in
a final rule published on September 23, 2011[…] Since implementation of Track I
in 2011, the USPTO has received fewer than 200 AE requests annually. In
view of the relatively low usage of the AE program, the USPTO plans to publish a
request for comments in the Federal Register to seek public input on whether
there is value in retaining the AE program in view of the more popular Track I
program.42 (emphasis added)
Thus, in 2016, the USPTO invited public comments on the AE program though it is not
clear whether and when it has been (or will be) formally discontinued. According to
commentary by practitioners in 2017 and 2019, the program has continued after 2016.
However, it is reported to have remained unpopular and not extensively utilized—
especially relative to other relevant US patent procedure and policy, such as the Track I
program.43
42 See also Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures under the Leahy-Smith America Invents Act, 76 FR 59050 (September 23, 2011) 43 See, for example, https://www.mintz.com/insights-center/viewpoints/2231/2017-04-fast-track-examination-us-patent-and-trademark-office (Mintz, April 2017) and https://oshaliang.com/newsletter/introduction-to-prioritized-and-expedited-patent-examination-procedures-part-three-chapter-of-the-united-states/ (Osha Liang, 2019).
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As noted elsewhere in this section, since 1970 the USPTO has instituted a number of
patent examination procedures in addition to the Green Technology pilot program that
ran between 2009 and March 2012.
While often somewhat different in form from strictly green tech-focused AEPs in other
countries, such US AEP-type programs offer prioritization and “fast-track” options for a
potentially broad range of qualifying patent application types. However, access to such
AEPs are made equally available to green technology patent applicants. Further, such
AEPs often favor green technology applicants with reduced or eliminated AEP-specific
filing fees. The most notable of these other programs is the Track I program, in effect
since the end of the green technology pilot program and recently revised to further
ensure favorable fee status to green technology patent applications.
e. COVID–19 Prioritized Examination Pilot Program (2020)
Finally, relevant in the context of this paper is a new pilot program the USPTO has
implemented to incentivize small and medium enterprises to file for accelerated
examination procedures for COVID-19 related applications, consistent with Track I but
with relief from all fees associated with accelerated examination.
According to the U.S. Federal Register (Federal Register / Vol. 85, No. 94 / Thursday,
May 14, 2020 / Notices, pp. 28932-35), the USPTO is,
[...]implementing a pilot program to provide prioritized examination of certain
patent applications. To qualify, the claim(s) of an application must cover a product or process related to COVID–19, and such product or process must be subject to an applicable FDA approval for COVID–19 use.44 (emphases
added)
44 FDA refers to the U.S. Food and Drug Administration.
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Under this pilot program, the USPTO will grant qualified requests for prioritized
examination without payment of certain fees associated with prioritized
examination for applicants that qualify for small or micro entity status.
(emphases added)
The notice at page 28933 states that,
In an extraordinary situation, 37 CFR 1.183 permits the USPTO to suspend or
waive sua sponte any requirement of its regulations that is not a requirement of
the patent statutes. The USPTO considers the effects of the COVID–19 outbreak
that began in approximately January 2020 to be an ‘‘extraordinary situation’’
within the meaning of 37 CFR 1.183…
It also notes that qualifying patent applications must be subject to FDA approval as
follows,
[...]claim products or processes that are subject to an applicable FDA approval for COVID–19 use. Such approvals may include, but are not limited to, an
Investigational New Drug (IND) application, an Investigational Device Exemption
(IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a
Premarket Approval (PMA), or an Emergency Use Authorization (EUA).
(emphasis added)
Thus, we see here another example how IP-related policy responses share common
approaches with respect to both environmentally-related crises and their effects on
public health and society, and a specific public health crisis--the COVID-19 pandemic.
Under USPTO rules, both situations called for pilot programs that specifically provided
enhanced incentives to patent applicants whose claimed inventions address some
aspect of a crisis--directly and, in some cases, indirectly. The COVID-19 pilot program
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reflects the same focus on fee relief for SMEs and micro enterprises that, in the case of
environmental AEPs, emerged over a longer period but has become a mainstay.
The evolution of the US AEP approaches discussed above also illustrate a policy desire
to allow other technology patent applications to enjoy accelerated examination benefits--
but at higher than normal filing fees for AEP status. However, these higher AEP
applicant fees are reduced or eliminated for applications that are within priority
categories, such as environmentally-sound or COVID-19 related technologies, and/or
the applicants themselves qualify for preferred treatment reducing or eliminating fees,
such as SMEs and micro entities.
5. Latin America
Brazil is the only country in Latin America with a FTGPA program. The program is quite
notable given that survey data from 2018 found that patent applications in Brazil
averaged about eleven (11) years of pendency before grant, and yet the same survey
found that 80% of the fast-track green patent applications examined under this program
were pending for only about two (2) years before being granted.
In an effort to overcome its backlog, the Brazilian PTO has consolidated all programs for
accelerated examination through recently passed legislation.45
Notably, Brazilian “green” patent applications/patents and their corresponding file
wrappers in the PTO’s database include an official stamp of “PATENTES VERDES”
(GREEN PATENTS). The logo is reproduced in Appendix D.
45 Under Resolution 247/20, in force as of July 30, 2020, the following accelerated examination programs are available: (1) Based on applicants: (a) above 60 years old, disabled and/or suffering a serious illness; (b) qualifying as micro and small entities; (c) startups; and (d) scientific institutions. (2) Based on a particular situation: (a) applications requiring a grant decision to access financial resources; (b) application allegedly involved in an infringement of rights. Based on technologies: (a) green technology; (b) product for treatment of specific disease; (c) product for treatment of COVID-19. Based on international cooperation: (a) applications first filed in Brazil; (b) patent granted for a related foreign patent office.
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Table 646 in Appendix D shows the number of patent applications that requested
accelerated examination during 2019 in Brazil, comprising all acceleration programs. It
shows that 98% of the accelerated examination requests were accepted and 86, or
approximately 84%, of such patent applications were granted.
Table 7 in Appendix D further shows that 78 requests for accelerated examination of
Green Technology patents were submitted during 2019. Of these, 100% were admitted
and 53, or 86 % of such applications, were granted.
The success of the AEP in Brazil fostering green technologies innovation within SME
and public research institutions is widely recognized in Brazil. At the same time, the new
acceleration program for products to treat COVID 19 seems also a success. More than a
hundred patent applications that have been pending for several years requested the
acceleration program, 69% were admitted, and most of them are under examination.
Other Latin American countries are promoting investment in green technologies.
However, no official incentives regarding IP have been identified. As most of the Patent
Offices in the region count on general accelerated prosecution programs, a specific
program for green technologies has neither been adopted nor promoted yet.
The Inter-American Association of Intellectual Property (ASIPI by its Spanish acronym)
created a program called GREEN ASIPI with the aim of fostering green businesses,
solutions, and inventions. ASIPI will support different initiatives related to intellectual
property specifically directed to conservation and sustainability of the environment,
mitigation of climate change and improvement of social wellbeing.
To that aim, the association produces webinars and activities designed to show how
developed technologies and IP regimes work as exclusive rights to protect
developments that will eventually create a green future.
46 https://www.gov.br/inpi/pt-br/servicos/patentes/tramite-prioritario/estatisticas-gerais
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In 2019, during the XVIII “National Inventions and Industrial Designs Competition” that
the Peruvian IP Office (INDECOPI) organizes each year, ASÏPI launched the first
contest to award the inventor presenting the best project for improving the environment.
The winner was Hernán Asto Cabezas with his project: “Device for generating electric
energy from bacteria and solar plates with a cooling system”.
6. China
For China, the most recent information regarding green technology in the Patent
Accelerated Examination program can be found in Article 3 of Order No. 76 of the China
National Intellectual Property Administration. Released in June 2017, the Order
describes Measures for the Administration of the Prioritized Examination of Patents. In
particular, Article 3 states that a request for prioritized examination may be filed if an
application for a patent or a patent review case relates to any of the following: energy
conservation and environmental protection, a new generation of information technology,
biology, high-end equipment manufacturing, new energy, new materials, new energy
vehicles, intelligent manufacturing and matters where other key national development
industries are involved. (Reference CN Order No. 76)
7. Taiwan
In 2014, the Taiwan Intellectual Property Office (TIPO) amended their Accelerated
Examination Program (AEP) to encourage the development of green technology.
Specifically, Condition 4 in the published AEP states that an applicant who provides a
copy of an AEP request form, a written explanation detailing the connection between the
invention and green technologies, and a payment of NT$4000 (per request) may be
allowed expedited examination for their patent application. The invention must involve
the following in order to be granted accelerated examination:
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● Technologies for improving energy conservation and for developing new sources
of energy, or renewable energy vehicles; or
● Technologies for carbon reduction and resource saving.
In order to define areas of green technology, Taiwan uses both the WIPO’s definition for
areas of alternative energy technology and the green industries referred to under the
Executive Yuan’s “Rising Green Energy Industry Project” and “National Energy Plan”.
An applicant requesting AEP under Condition 4 must ensure the claims of the invention
are directly related to the aforementioned areas of green technology. An applicant may
accomplish this by providing documents of proof, such as specifications or drawings. A
notification of responsive examination opinions, final notice, or written decisions of
examination will be issued within nine (9) months after all relevant documents are
received. However, the actual examination pendency may vary depending on the
various green technology field(s) of respective cases. (reference TW Accelerated
Examination Program)
According to TIPO statistics, as of July 2020, the total number of requests for the AEP
based on green technology was 210. 194 of the requests were filed by Taiwanese
applicants and 16 of the requests were filed by foreign applicants.
8. India
In May 2016 and September 2019, the Government of India published amended Patents
Rules in the Official Gazette. One noteworthy step taken in the amendments to the
Patents Rules made in May 2016 was to allow expedited examination for Indian patent
applications filed when the Applicant: (1) is a start-up; or (2) has selected India as the
International Search Authority (ISA) or elected India as an International Preliminary
Examining Authority (IPEA) for the corresponding PCT application. Further, these
amended Rules were retrospectively applicable. That is, Applicants who met one of the
conditions above, and who had, by May 2016, filed their patent application but not
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requested examination, could request expedited examination. Additionally, Applicants
who met the above conditions and who had requested examination before May 2016
could convert that request for examination to a request for expedited examination.
Analysis of data collected from the Indian Patent Office database indicates a spike in
filing of Indian patent applications by start-ups. One start-up, Ather Energy, is a
particularly good example. Ather Energy works in green technology and especially
electric vehicles, launching an electric scooter in 2019. Using the Indian expedited
examination for start-ups program, an Ather Energy patent application was granted just
453 days from the date of filing.
There are many other examples of start-ups, green and otherwise, who have benefited
from the provisions of expedited examination in India and have seen their patent
applications granted within one year of filing.
Further, through the amendments to the Patents Rules in September 2019, the
Government of India brought in nine additional provisions which, if satisfied, enables the
Applicants to request for expediting the examination of their patent applications. One of
the newly added provisions allows expediting the examination of patent applications for
inventions pertaining to a sector of technology which is notified by the Central
Government. Although, presently, no specific sector of technology has been notified by
the Government of India under the purview of the provisions of the new Patents Rules, it
is likely that green technology would eventually be notified as one of the sectors of
technology for availing the newly added provision for expediting the examination.
Further to the amendments to the Patent Rules, the Government of India has initiated
several policies and initiatives, such as Make in India, tax exemptions, and so on, which
clearly show the intent of the Government of India to foster innovations in green
technology and their patent protection.
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IV. Other Mechanisms for Incentivizing Green Technology Innovation
While accelerated examination is an important component of a strategy to incentivize
green technology innovation, the SC has identified several other complementary
approaches that may be used in combination with AEPs to enhance this strategy. In
particular, the SC recommends AEP fee reductions, as well as potential rebates for
other fees incurred as additional incentives when patenting green tech. Additionally, the
Standing Committee discussed targeted incentive programs for green start-ups, tax
credits and grants.
As noted in the Milan (2016) AIPPI resolution, paragraphs 4 and 5, “Individual inventors,
start-up companies and small- and medium-enterprises (SMEs) play a key role” in the
“development, dissemination and implementation of green technologies,” which is
“highly significant to a sustainable world economy,” and “requires the acceleration of
[R&D]” in green technologies” on a worldwide scale. Therefore, “It is important to foster
R&D from all sources including individual inventors, start-up companies and SMEs.”47
A. Fee Reductions
The majority of countries with a green technology AEP do not require an additional AEP-
specific fee for such filings. However, some countries, including Brazil and Israel, do
require additional fees. This inconsistency in AEP fee practices adds to the greater
inconsistency in the AEP landscape generally, and may discourage inventors from filing
under these programs across jurisdictions.
In most cases where countries do have AEP-specific fees, these fees are not especially
large. The SC feels this justifies eliminating all green technology AEP-specific filing fees
for greater consistency across jurisdictions. We note that any revenue lost for AEP-
specific fees where they once existed could be offset by resulting increases in the
numbers of patent filings, which would thereby increase non-AEP-specific filing fee
47 Milan (2016) AIPPI resolution, at paragraphs 4, 5 and 11.
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revenue for patent authorities. This could also further encourage filings for SMEs and
other fee-sensitive entities--a target group for green technology innovation--which may
also enjoy patent fee reductions for their entity status. As such, the Standing Committee
recommends standardizing no-fee green AEPs in all jurisdictions that implement such a
program.
In relation to non-AEP-specific fees, the SC recognizes that many other fee payments
must be made during prosecution of any patent application, including allowance fees,
issuance fees, and, in some jurisdictions, excess claims and/or page fees. Depending
on the jurisdiction, reducing, refunding, or removing some of these required fees for
green technology patent applications (whether as part of an AEP or not) might help to
encourage green technology patent filings and innovation.
B. Targeted AEPs for green start-ups
In essence, a start-up is a company that is either pre-product, pre-revenue, or pre-profit.
Start-ups are usually in the first few years of their existence and are primarily funded by
specific investors (often including the start-up’s founders). Patents and/or filed patent
applications are often required criteria for start-ups and other smaller business entities to
obtain outside investors.
As noted earlier, a report by WIPO, “Inventing the Future: An Introduction to Patents for
Small and Medium-sized Enterprises,”48 encourages SMEs to file for patents for
multiple, interrelated reasons. WIPO notes that patents “can enhance the ability of a
company to raise the capital required” to succeed commercially, and that in some
sectors, “a strong patent portfolio is often a requirement to attract investors.”49
48 “Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises” (hereinafter, “WIPO SME patents report,” or “WIPO report”), copyright WIPO, 2018, available at: https://www.wipo.int/edocs/pubdocs/en/wipo_pub_917_1.pdf 49 WIPO SME patents report, pages 10-11. The report cites Biotechnology as an example of one sector in which patents may be required in order to secure investment. In the experience of some SC members, for certain types of capital raising such as in venture capital (VC) markets, progress in securing patent
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This fact emanates from other benefits the WIPO report highlights that arise from
patenting inventions, such as the ability to protect against competitors replicating
proprietary innovations, increasing profit or return on investment, potential income from
licensing patents, and others. In short, the WIPO report states, “The exclusivity provided
by a patent may make the difference between success and failure in a challenging, risky
and dynamic business climate.” Entrepreneurs and emerging companies in green
technology sectors are no exception to these core tenets, and in some cases may
illustrate a prime example.
For IP policy and patent authorities, different metrics exist that can be used to determine
whether a company is in a start-up phase or meets other small entity criteria. However,
like with the term “green technology”, there is not a standard definition of a “start-up”.
Different actors may establish different guidelines for start-up qualification. One analyst
has proposed a three-metric system based on revenue, number of employees, and
valuation, for example.50 For the purposes of this paper, and for green technology
patenting more generally, a standard definition of “start-up” may not be essential.
However, standard criteria and consistency for AEP and patent examination purposes
may have merit and warrant further exploration.
In other contexts, start-up companies can benefit from pursuing and obtaining green
patents as well. The 2018 EPO conference on Green technologies and renewable
energies—Innovating and Patenting--noted that patents are often a starting point for
collaborations between large and small companies, while building trust and defining the
protection for a firm’s key technologies is often a prerequisite for obtaining VC funding, regardless of the industry sector. VC investors seek startups with patented products and solutions in order to protect their investments in such companies. Without patents and/or other barriers to entry, VCs will assume other well-financed companies will appropriate and/or easily compete with the startup’s technology, and thus lower or eliminate the VCs return on investment. 50 https://news.crunchbase.com/news/the-definition-of-a-startup/
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scope of discussions.51 Collaborating with a big corporation may be required for
commercialization and scaling-up, as introducing new technologies can be expensive
and face obstacles to their adoption. As such, the conference noted that it is vital for
start-up companies to obtain and enforce IP rights in order to successfully invest in
green technology development.
As described above, India has adopted an AEP that is targeted at start-ups. The SC
understands that, to date, this program appears to have met with some success. Similar
programs in other jurisdictions (coupled with other innovation-friendly programs and
models) could potentially be similarly effective. The SC considers further that programs
that specifically target green tech-focused start-ups could be even more likely to
encourage green innovation. Thus, the Standing Committee recommends making AEPs
available that target start-ups, including those active in green technology spaces.
The SC recognizes that variations in approach exist that could remain consistent with
these recommendations. For example, currently under the US Track I program, AEPs
are available to all filers at high AEP-specific fees of USD 4,000. But these AEP-specific
fees are reduced to USD 2,000 for qualifying smaller entities, and to zero for
applications qualifying as promoting environmental quality and energy conservation, for
example. Thus, small entities are favored regardless of whether they file for green
technology patents. Further, green technology patent applications enjoy the most
favorable (zero) AEP-specific fee status--regardless of whether the filing entity is small
or larger.
These examples show different approaches to maximizing the availability of AEPs and
related incentives to using them. Further monitoring of the success of different
approaches is thus also recommended.
51 https://www.patentstyret.no/globalassets/om-oss/rapporter/green_technologies_renewable_energies_oslo_nov2018_conference_report.pdf, page 10
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C. Tax Credits or Grants for Patenting Activity
R&D tax credits and other tax incentives are quite common in many countries, with the
broader objective of incentivizing R&D for its general economic benefits within the taxing
jurisdiction. Indirectly, such incentives would also stimulate patent applications. Where
R&D tax incentives are available for research in green technology or development,
these likely stimulate patenting of green inventions (whether or not the policy directly
relates to an AEP or other explicit patent program).
Additionally, subsidies and reduced taxes can increase the demand for green
technology products (e.g., electric vehicles, systems to harness solar / wind energy,
etc.). Increased demand can then generate more revenue for the companies, which can
in turn be used to fund further innovation. Such subsidies may therefore create a
virtuous circle, and should be considered as part of a holistic green technology strategy.
The subsections below provide two illustrative examples, from Australia and Canada,
respectively, of tax- and grant-related incentives with specific relevance to green
technology or environmental technology.
1. Australia
The Australian Renewable Energy Agency is a governmental grant body that provides
funding for innovation at many stages of the innovation chain.52 As of June 2019,
ARENA had AU$279.4 million available to commit to new projects.53
Further, Australia boasts multiple rebate and refund schemes, such as the R&D Tax
Incentive Scheme. Among its other guarantees, this system provides a 50% rebate for
52 https://arena.gov.au/funding/ 53 Ibid
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Australian patent costs.54 A similar system, the Export Market Development Grant
Scheme provides a 50% refund for foreign patent activities.55 While these schemes are
not specific to green technology, they nevertheless encourage patenting more generally,
which would have the potential to increase the number of green technology patent
applications filed as well.
2. Canada
For several years, Canada’s province of Quebec provided a grant program called the
“First Patent Program”. This program provided CAD 25 thousand in contribution funding
for a grantee company’s first-time patent filing activity. The program has been
discontinued and replaced with a broader “Innovation Program”, which provides
assistance for filings at any stage.56
D. Green Policy Instruments in Other Policy Areas
Green technology, of course, has broader relevance to policy areas beyond patent
policy. Such other policy areas may interact with, reinforce, and encourage the
development of green tech, and are worth pursuing in conjunction with AEPs and on a
standalone basis, depending on the case. For instance, as in Australia, R&D tax
incentives can be a viable incentive for increased activity within the green or clean
technology patent system framework. Tax-related policies to incentivize R&D
investments are, of course, also used in broader contexts that may indirectly relate to
the policy goal of providing incentives for patenting green technology.
While some AEPs have shown promise on a standalone basis, the SC is of the view that
greater international consistency between AEPs and other green tech-related policies is
54 Ibid 55 Ibid 56 https://www.economie.gouv.qc.ca/bibliotheques/programmes/aide-financiere/programme-innovation/
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potentially needed, or at least would be quite beneficial. Consistency between AEPs and
other green policy areas would facilitate easier guidance, documentation and
compliance for patent filers who use (or could benefit from using) other green policy
instruments.
For example, patent filing requirements and approval for green technology AEPs could
be designed to rely on and satisfy underlying qualifying criteria for one or more other
green policy instruments. This would streamline processes for companies that qualify for
and/or employ each of such policy incentives--potentially across multiple policy areas
and/or in multiple jurisdictions.
Indeed, as described above, variations among countries’ approaches to a single green
policy area, such as AEPs, can have unintended effects on other countries’ AEPs and
related policies, potentially reducing their effectiveness. The SC observes that,
conversely, consistency among AEPs internationally--as was as discussed above in the
context of definitions and criteria for green technology patents--could increase ease of
use for filers and patent authorities and thus increase effectiveness. Such consistency
applied to multiple green policy areas and instruments could then further enhance the
effectiveness of each such policy area.
More generally, the SC recognizes the need to observe and better understand wider
interactions between IP-related policies like AEPs and other relevant policy areas, such
as those promoting investments in green IP and technology development. This could
achieve benefits that enhance the potential success of multiple such instruments, and
not only promote the patenting of green inventions. Notable among these would be
instruments focused on “downstream” environmental policies that have demand-side
effect on the use of green tech; tax- and fee-related incentives for developers of early
stage tech and IP in the area (more generally), and policies that promote or require
greener production practices and consumption habits for industry and individuals,
respectively.
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While much of this Position Paper focuses on IP’s role at an international and global
level, the Standing Committee finds that consistency across policy areas is worth
observing as well. To this end, the Committee finds it useful to consider the wide scope
of policy instruments used by governments worldwide in contexts relating to protecting
the environment.
For example, in recent years, the Organization for Economic Cooperation and
Development (OECD) has compiled a unique database entitled “Policy Instruments for
the Environment,” known as the “PINE database” for short.57
The OECD Pine database gathers “key quantitative and qualitative information on 3,200
[economic] instruments” in 90 countries, including all of the OECD countries and many
others. A summary report notes that these “[t]axes, subsidies, and other economic
instruments provide important market signals that can influence the behaviour of
producers and consumers.”58 For example, the PINE database includes over 1,400
environmentally related tax instruments, including information on corresponding tax rate,
tax base, annual revenue from the tax, payments system obligations, exemptions and
refunds. Tax bases covered include:
▪ energy products and fuels (including vehicle fuel);
▪ motor vehicles and transportation;
▪ estimated emissions of pollutants to air, water, ozone, etc.; and
▪ management of land and water resources, forests, biodiversity, wildlife, and fish
stocks.
57http://www.oecd.org/environment/indicators-modelling-outlooks/policy-instrument-database/ 58 http://www.oecd.org/environment/indicators-modelling-outlooks/PINE_database_brochure.pdf
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In addition, the database includes a variety of other instruments, such as fees and
charges, deposit-refund systems (e.g., bottles, lead-acid batteries, motor vehicles and
tires), and voluntary mechanisms (e.g., covenants).59
PINE further classifies policy instruments by type and environmental domain, with major
instrument tags that include, among others, transport, energy efficiency, air pollution,
climate change, waste management, and natural resource management.60
Here again, there is overlap and potential convergence in the ways that different policy
instruments classify environmental problems. In this light, the SC further considers that
national and international patent classification systems have emerged (and perhaps
others will) that identify green inventions within certain sub-classifications that are also
associated with particular environmental problems.
For example, the WIPO Green definitions and the EPO Y02 classifications for green and
sustainable technologies are two prominent examples that directly serve two different
objectives but effectively rely on similar types of classifications using the same or similar
vocabulary.61 See reference links below.
Once again, useful definitions of technologies and technology types qualifying as
“green” or “environmentally sound” are identifiable and, yet, sometimes lack uniformity.
Differences might be appropriate depending on the case, but the committee sees merit
in developing common views of green technology language geared to the same end.
This vision of future common ground may inspire coordination and more effective
communication regarding relevant policies and practices themselves—both in IP-related
areas and other green technology policy areas.
59 Ibid 6-8 60 Ibid 12 61 https://www3.wipo.int/wipogreen-database/searchResultList.htm?&searchFilter=techFieldDescription:Energy&set=set2&showLi=Energ&rm=set3&showAll=2
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E. Comments on Standardization
Standardization and harmonization of AEPs across jurisdictions has merit worth
exploring, while it also may raise several related questions. The global nature of the
climate crisis causes one to consider a need to foster the dissemination and
implementation of patented green technology among numerous countries, potentially on
a worldwide basis in certain cases. The Standing Committee is of the view that fostering
IP protection to encourage more green technology development is critical. However,
without its dissemination and implementation in multiple jurisdictions in which a
particular green technology solution is needed, green technology IP cannot fully achieve
its true aim.
The AIPPI Milan (2016) resolution questioned whether any role for compulsory licensing
of green technology IP could be a solution for dissemination and implementation of the
underlying technologies. The resolution observed at paragraph 9, citing an EPO report,
that “presently in most developing countries, the majority of green technologies are not
covered by patent (or other IP) rights, and so are generally freely available for use by
all.”62
Further, the SC notes that many of the programs and recommendations discussed
above favor small and medium enterprises (SMEs)--and more standard approaches in
this area could avoid discrimination against certain applicants. For example, depending
on the jurisdiction, there may be a risk that a national policy could favor domestic SMEs
for political or other reasons, rather than being equally open to all SMEs including those
based in other countries. While such political preferences may serve domestic interests,
the SC again emphasizes that many environmental problems do not respect national
borders. Optimally, AEPs and other programs should follow standard approaches and
be designed to be non-discriminatory, thereby encouraging green innovation from all
sources, both foreign and domestic.
62Joint EPO – UNEP study: Patents and clean energy technologies in Africa, https://www.epo.org/news-events/in-focus/sustainable-technologies/clean-energy/patents-africa.html
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Thus, the risks and costs of climate change are shared across jurisdictions. In the view
of the SC, the benefits associated with solutions, and incentives to innovate them,
should also be shared on an equal basis. Furthermore, widespread innovation from
many potential sources may well be necessary to find solutions sufficient to tackle the
many time-sensitive impacts of the climate crisis. Thus, policies should expand, rather
than limit, participation from all interested parties.
V. Conclusion
This paper has reviewed various government-sponsored green technology development
incentives around the world, and proposes potential enhancements to such policy
approaches that may encourage their further development. The paper has focused on
accelerated examination programs (AEPs) for patents, which fall well within the scope of
IP policy, but it also addresses similar and complementary policies that encourage more
rapid innovation of green tech, either directly or indirectly.
Among the questions AEPs and other green technology innovation policies should
consider is a potential need for more consistent and potentially harmonized definitions of
“green technology” across countries and, potentially, different policy areas beyond IP.
Further, reduced fees and other financial incentive mechanisms for government-
sponsored programs like AEPs, and wider adoption of accelerated patent application
examination procedures, are recommended.
Regarding a unified definition of green technology, the SC proposes a draft definition
incorporating key elements common to many AEPs. It further recommends that future
work should consider the merits of such a definition, and whether and how it should be
further developed. At a minimum, developing common language around green
technology terms and qualifying criteria broadens the conversation of this urgent issue.
Additionally, the SC encourages leveraging multi-pronged efforts at identifying,
innovating, and encouraging green IP—using AEPs alongside other policy instruments
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that share a common goal: protecting the environment and global society from the
imminent and long-term risks of climate change.
To further the goal of wider adoption of AEPs, for example, more public awareness is
needed, as well as greater consistency and predictability across jurisdictions. More
broadly, most, though not all, of the green technology innovation policies and proposals
we observe involve intellectual property in some way. While the Standing Committee
recognizes that the current environmental problems and their solutions also extend
beyond IP’s scope, we believe that IP policy can play an important role in shaping the
global response to the global climate crisis
IP issues, environmental issues, and political issues are always in flux, but the problems
that green technologies seek to address—that is, a safer environment for generations to
come—urgently require attention now. The more IP policies lag behind environmental
change, the harder it will be to catch up. One need only witness record high global
temperatures and unprecedented levels of natural disasters seen worldwide, to
appreciate the severity of the issues we face. The problems are indeed urgent.
Internationally to date, use of AEPs and other programs designed to encourage the
patenting of green technology is limited. The reasons for this include, but are not limited
to, general lack of awareness of such programs, underutilization due to lack of clarity
regarding their benefits, and a lack of standard approaches across jurisdictions. This
paper thus has examined the current state of green technology policies, while observing
different AEP implementation stages and approaches among countries that do offer
green technology AEPs and similar programs. Additionally, the paper has recommended
strategies for improving and increasing the use of green patent programs.
The important role of green patents filed by individual inventors, small and medium
enterprises (SMEs), and micro entities have been highlighted. The SC observes a
virtuous cycle between policies that encourage innovation among smaller entities in
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earlier stages of development (e.g. startups) and policies supporting green technology
innovation and patents. It notes as well the views of key organizations such as WIPO,
which states that patents “can enhance the ability of a [startup] company to raise the
capital required” to succeed commercially, and that in some sectors, “a strong patent
portfolio is often a requirement to attract investors.”63 It also states, “The exclusivity
provided by a patent may make the difference between success and failure in a
challenging, risky and dynamic business climate.”
The paper observes use of AEPs in certain countries and that such programs often
reflect implementation at an early or developmental stage. This limited number of
country patent offices using AEPs could benefit from a broader utilization and
awareness of AEP benefits locally and in other countries. In the competitive and rapidly
changing business and investing landscape today, accelerated examination and lower
fees for AEPs intuitively offer benefits and incentives to inventors, innovative companies,
and their investors. These entities bring solutions to the urgent problem of climate
change. Correspondingly, their efforts need more encouragement in more places--and
AEPs offer one such incentive.
The paper further considers other policy instruments (e.g. R&D tax credits) as
instrumental in encouraging innovation that may result in patent filings. AEPs are among
other established policy instruments that, when taken together, increase opportunities
for success in developing technologies needed to address the crisis.
In the view of the SC, a collective, multi-pronged approach is prudent public policy,
given that the benefits of each such instrument (e.g. AEPs, R&D tax incentives) may be
indirect and less clearly measurable in light of the multitude of factors at play.
Furthermore, wider availability of more incentives increases the odds of success in
meeting their common goals. Collaborative approaches to green technology
development--some including open source projects--also came to the attention of the
63 WIPO SME patents report, pages 10-11.
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SC, further expanding the range of public and private efforts to create solutions to face
the crisis.64
Finally, global experience with the COVID-19 pandemic illustrates the interconnection
between public health crises and the need for accelerated innovation to mitigate risks to
widespread public health concerns. This has been exemplified by the rapid responses of
many different parties and governments in pursuit of breakthrough vaccines against the
novel Coronavirus, often working collectively. Many attempts are needed to produce the
desired outcome--an effective vaccine. Such pursuits must also occur alongside the
many alternative measures that are necessary to control and prevent spread of the virus
before a vaccine is available. The investments in innovation and other risk mitigation
efforts (during this seemingly acute period) reflect a multi-pronged approach that is
equally relevant to the longer-term health risks of climate change.
The paper thus draws on lessons learned to date from the Covid-19 crisis, and
compares and contrasts such lessons with efforts to address global climate change. In
the case of the global pandemic, the paper observes the use of a multi-pronged
approach, often with coordination among countries and other relevant jurisdictions.
These efforts combine different measures that collectively seek to stop the spread of the
Coronavirus and ultimately bring it under control.
In conclusion, AEPs offer important environmental policy instruments alongside other
measures that target climate change and its related social costs and health
consequences. Each measure used increases the odds of success, especially when
employed in combination with other promising measures. To combat climate change
and mitigate public health risks and social costs it imposes, the paper has shown that
the merits of incentivizing green patents and innovation are compelling and increasing in
importance--given the growth and frequency of climate-change related impacts.
64 https://www.wired.com/story/go-green-energy-industry-open-source/
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APPENDIX A
Table 1. Commencement of AEP programs for Green Technologies by Patent Offices
Australia September 15, 2009
Brazil Pilot program started on April 17, 2012. Official program launched on December 6, 2016.
Canada March 3, 2011
China August 1, 2012
Israel December 27, 2009
Japan November 2009
the Republic of Korea June 30, 2009
Taiwan January 1, 2014
the United Kingdom (UK) May 12, 2009
the United States of America (U.S.)
December 8, 2009 - March 30, 2012 (green tech-focused “pilot”) 2011-present (Track I acceleration available to green technology and other qualifying technologies)
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APPENDIX B
Table 2. Top 5 users of FTGPA programs
Australia N/A
Brazil Brazilian Universities (BR) (24) Xyleco Inc (US) (15) Suncoke Technologies and Development LLC (US) (10) DSM IP Assets BV (NL) (10) TECSIS Tecnologia e Sistemas Avanzados S.A. (BR) (5) 65 % of patents owned by BR applicants
Canada Lanzatech New Zealand Ltd (9); Krishnamoorthy, Srinivasan (6); Greyrock Energy, Inc (3); all other entities filed less than 3 applications
China N/A
Israel N/A
Japan N/A
the Republic of Korea N/A
Taiwan N/A
United Kingdom (UK) 1. Ford Global Technologies, LLC - 62 requests; 2. Protean Electric Limited - 46 requests; 3. Johnson Matthey Pulic Limited Company - 36 requests; 4. Fontem Holdings 1 B.V. - 21 requests; 5. Romax Technology Limited - 20 requests.
U.S. 1. General Electric
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Table 3. Technical fields for FTGPA Programs
Australia Data not available
Brazil Water, waste and energy management (51.3%), alternative energies (28%), and agriculture (10.2%).
Canada All fields 'A' through 'H' under WIPO IPC designation, with the greatest number of applications falling under the 'chemistry; metallurgy' class
China Data not available
Israel Primarily, “inventions that improves the environment”—mostly related to water management
Japan Data not available
the Republic of Korea Data not available
Taiwan Data not available
United Kingdom The numbers below are across all green channel requests and not only the top 5 users: By IPC classification: F03B - 82 requests; F03D - 56 requests; H02K - 45 requests; B01D - 45 requests; E04B - 36 requests By technology area: Mechanical engineering - Engines, pumps, turbines - 253 requests; Electrical engineering - Electrical machinery, apparatus, energy - 226 requests; Other fields - Civil engineering - 174 requests; Mechanical engineering - Transport - 172 requests; Mechanical engineering - Thermal processes and apparatus - 137 requests
United States of America Mechanical engineering, semiconductors, electrical, optical and chemical and material engineering
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Table 4. Percentage of FTGPA users that are foreign to the IP Office’s country
Australia Data not available
Brazil 35 %
Canada 42.5%
China Data not available
Israel 0%
Japan Data not available
the Republic of Korea Data not available
Taiwan Under 7%
United Kingdom 23%
United States of America Data not available
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Table 5. The percentage of individual inventors
Australia Data not available
Brazil 26 %
Canada 35% individual inventors
China Data not available
Israel around 90% of the users of the green program are individual inventors
Japan Data not available
Republic of Korea Data not available
Taiwan Data not available
United Kingdom 22%
United States of America Data not available
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APPENDIX C
Recent Israeli Patent Office data (including 2018, 2019 and 2020)
Thus far in 2020, there has been a great increase in filing requests for accelerated
examination, as the ILPO began to offer a special program to accelerate examination of
any application that relates to the Covid-19 pandemic (without the need to pay a fee,
thus being similar to or falling under the criteria for "green inventions"). In three months
alone, the ILPO received 30 requests for accelerated examination just for this reason.
Below, two graphs are presented as Chart 1 and Chart 2, respectively, which cover
other recent ILPO data. Chart 1 below provides the numbers for accelerated
examination applications during 2015-2019 (Blue: accelerated examination based on
PPH, Red: Accelerated examination subject to fee payment, Orange: accelerated
examination of green technology applications)
Chart 1
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The second graph below, Chart 2, shows statistics on the technical field for which
accelerated examination for green technology was requested during 2013-2019 (Grey:
pharma and chemistry, Orange: computers, communication and medical devices, Blue:
mechanical inventions).
Chart 2
Historical Israeli Patent Office data (years ranging from 2008 to 2017)
As shown in Chart 3 below, the total number of applications filed per year in Israel,
either first filing in Israel (red) or national phase filing in Israel (blue) was, on average,
about 6,000 between 2008 and 2017. In 2017, a total of 882 applications were filed, 224
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of which were filed under an expedited examination procedure (PPH, GPPH, Green,
accelerated).
Chart 3
In 2017, the total number of applications filed under an accelerated examination
procedure varied depending on the procedure, as shown in the graph labeled Chart 4
below. Only 21 applications (out of a total 224 accelerated applications) were examined
under the green technology procedure. During the years 2010 to 2015, the average
number of applications for acceleration based on green technology was approximately
the same (i.e., 20-30).
Chart 4
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As seen in Chart 5 below, there was an increase in the filing of requests for expedited
examination under PPH between 2011 and 2017. The explanations for the increase
include increased awareness about the program, the increase in the Patent Office's
experience in examining applications under this program, as well as the efforts made by
the PO to simplify the procedure of requesting examination under PPH.
Chart 5
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Chart 6 below resembles Chart 1 above, but with historical data from 2010 to 2016 only.
The most popular route of accelerating examination in the period from 2010 to 2016 was
the PPH (Purple), followed by a request for accelerated examination (Grey), and lastly
the green technologies program (Blue).
Chart 6
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Chart 7 below shows historical data regarding technical fields of filed applications during
the years 2015 to 2017, when most PPH requests covered inventions in physics,
electricity and human necessities.
Chart 7
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As shown in Chart 8 below, between 2015 and 2017 the average time for examination
when requesting one of the accelerated examination procedures was reduced by half
(Blue = green technology, Red= accelerated examination, Green = PPH, Purple =
regular examination)
Chart 8
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APPENDIX D
Table 1
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Table 2
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Table 3
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APPENDIX E
Details regarding the USPTO Green Technology Pilot Program (2009 - March 2012)
As described in Section III.A of this report, after the sunset of the US Green Technology
Pilot Program, the USPTO published the following table in April 201265:
Table 1
65 https://www.uspto.gov/sites/default/files/patents/init_events/green_report_summary20120426.pdf
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Table 2 below summarizes the technical classifications (TCs) of petitions by number and
underlying technical fields.
Table 2
TC1600 Biotech & Organic 330TC1700 Chemical & Materials Eng. 1379TC2100 Computer Arch., Software & Security 282TC2400 Comp. Net., Multiplex, Cab. & Cryptography/Security 22TC2600 Communications 49TC2800 Semicond., Elec. & Optical Sys., & Components 1529TC3600 Transport., Elec. Com., Constr., Agri., Licens. & Review 534TC3700 Mech. Eng., Manuf. & Products 1373None/Others None/Others 52
Total Petitions by TC
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Chart 1 below presents the total petitions by TC in graphical form.
Chart 1
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