In an important development on the intellectual property front, but with particular import for Israeli clean tech companies targeting the U.S. market for strategic partnerships and licensing, the Israel Patent Office (ILPO) and the United States Patent and Trademark Office (USPTO) recently announced a Patent Prosecution Highway (PPH) pilot project between the two offices.
The PPH provides that an applicant receiving a ruling from the ILPO that at least one claim in an application is patentable may request that the USPTO expedite examination of corresponding claims in corresponding applications and vice versa (see USPTO PPH info here).
This pilot project, like other PPH agreements already in place between the USPTO and patent offices in other countries, promises to accelerate and improve the patent prosecution process for patent applicants with interest in procuring both U.S. and Israeli patents on their inventions.
While the potential benefits of the program are not limited to clean tech innovations, this pilot project provides a particular potential boon to Israeli clean tech companies and their investors, especially if such companies also leverage the existing “green patent” programs in force in both the USPTO and the ILPO. Israel remains a hotbed of clean tech innovation and development, while the US market continues to be one of the markets of choice for Israeli technology, along with China and India.
Combining the PPH pilot project with existing “green” patent programs in the ILPO and USPTO opens up exciting possibilities for clean tech innovators.
Savvy Israeli clean tech companies, and the burgeoning Israel clean tech venture capital (“VC”) community that finances those companies, should work with patent counsel and determine whether their innovations qualify for inclusion in either the ILPO’s “green patent” program (allowing priority examination from the ILPO for applications classified as “green” via applicant request by letter, without the need for extra fees) or the USPTO’s Green Technology Pilot Program (offering successful petition filers expedited first Office Actions for “green” inventions).
For strategically important inventions, inclusion in either program could allow for quicker patent issuance, thereby increasing the attractiveness of the technology to later-round investors, strategic partners, and potential licensing or enforcement targets.
As an example, a hypothetical Israeli clean tech company could accelerate an existing pending patent application in the ILPO, by requesting classification in the “green patent” program, and then see that patent issue with reduced pendency. The company could then take the newly-issued “green patent” and utilize the PPH pilot project to get expedited examination and potential issuance in the USPTO.
This approach could shave years off the patent prosecution lifecycle for such a company, and thereby open up intellectual property monetization opportunities earlier in the investment lifecycle as well.
The USPTO has not been shy about touting the benefits of PPH agreements, like the one it just entered into with the ILPO. Among the benefits highlighted by the USPTO for these types of arrangements are: (1) cost savings to applicants, on the legal and administrative fee front at least, because of shorter pendency and fewer Office Actions, (2) quicker examination of PPH applications, usually within a few months of acceptance of the PPH request, and (3) a much higher allowance rate (>90%) for PPH applications over that of non-PPH cases (<50%).
Israeli companies, of all stripes, including clean tech companies, targeting U.S. patents can now avail themselves of the aforementioned benefits, subject to the minimal requirements of the PPH pilot project.
The pilot project started July 1, 2011 and is scheduled to run for one year. If successful, there is a possibility that the term of the pilot project will be extended. Alternatively, if the pilot project is underutilized or proves a burden on resources, it can be terminated early at the discretion of the respective patent offices.
Clean tech companies interested in procuring U.S. and Israeli patents would do well to consider use of the PPH, and where possible an expedited “green” patent examination scheme, in order to obtain those patents in a shorter time at reduced cost. Similar strategies have been discussed with respect to other patent offices that host both PPH agreements with the USPTO and “green” patent programs – it is now Israel’s turn to get in the game.
Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP. Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate. Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.