In a good news / bad news press release, the U.S. Patent and Trademark Office announced last week that its Green Technology Pilot Program would be extended for three months but “will soon draw to a close.”

Previously set to expire on December 31, 2011, the program is being extended through March 30, 2012 or until 3,500 applications are accepted onto the fast track (read more in this post at Sustainable Marks).

As of December 5, 2011, the most recent report summary date, 2,913 petitions for the program have been granted, and 373 are awaiting decision.

To be eligible for the fast track program, the application must satisfy the following criteria:

the application is any non-reissue, non-provisional utility application for which a first office action has not been issued;

the application has three or fewer independent claims, 20 or fewer total claims and no multiple dependent claims (the applicant can file a preliminary amendment to bring the application in compliance with this requirement);

the application claims a single invention directed to environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions; and

the applicant must request early publication of the application.

A recent post discussed the unduly restrictive eligibility requirements for the Korean Intellectual Property Office’s s (KIPO) expedited examination program for green tech patent applications.

While the KIPO “super speed” program boasts examination results in just one month, many important clean tech categories are not eligible for the fast track.

Rather, the vast majority of clean technologies are eligible only if the invention has “received financial support or certification from the government.” 

These include renewables such as solar, wind, geothermal, tidal, wave energy, biofuels, energy storage technologies such as advanced batteries, as well as carbon capture and storage technologies, LED lighting, and personal transportion technologies such as hybrid cars and plug-in hybrids.

I asked Terry Kang, a Korean patent attorney and Partner at the Kasan IP & Law Firm in Seoul, how an applicant could get certified pursuant to the KIPO fast track program requirements.

Kang contacted the KIAT Green Certification Institution, which is responsible for green certification in Korea, and inquired whether a non-Korean company can get certified.

Kang relayed the response to me as follows:

As an answer to my question, I was told that only if [a] foreign company has a branch office which is a separate entity in Korea, that branch office can apply for the “Green Certification.”

So the certification path is a dead end for most green tech patent applicants, and I would guess only a tiny fraction of applicants have received funding from the Korean government.

That leaves the KIPO “super speed” program inaccessible for international clean tech companies seeking green patent protection in Korea.

In a previous post I wrote about the Korean Intellectual Property Office’s (KIPO) expedited examination program for green technology patent applications. 

According to KIPO, the “super speed” program is supposed to provide examination results in just one month.

I recently tried to take advantage of the KIPO program and move a green patent application along in a super speedy manner.

But when I requested that our Korean patent firm use the green tech fast track, I received a rather surprising response.  Here’s an excerpt:

[P]lease be advised that, in order to participate in an expedite[d] examination procedure based on the Green Technology in Korea, the applicant should receive certification or funding under the Korean Basic law of low-carbon green growth.  Therefore we cannot receive an approval for the expedited examination for the present application from the KIPO based on the Green Technology.

Some further research revealed that KIPO has unduly restricted access to the green tech fast track by attaching the “certification or funding” requirement to the most significant categories of green technology.

The Hanyang firm’s report on the Korean fast track program lays out the requirements and provides a useful summary.

The KIPO green tech program has seven major technology categories that are automatically eligible for the fast track.  These automatic categories include patent applications relating to:

(1) noise and vibration prevention facilities or methods and sound proofing or dust proofing

(2) water quality contamination prevention facilities or methods

(3) air pollution prevention facilities or methods

(4) waste disposal facilities or methods

(5) facilities or methods of livestock excretions management, purification and disposal

(6) recycling facilities or methods

(7) sewage disposal facilities or methods

One problem is that some of the automatically eligible categories are rather obscure.  A bigger problem is what has been left out and therefore is not automatically eligible. 

An eighth category of technologies lists several subcategories which are eligible only if the invention has “received financial support or certification from the government.”  These subcategories include the lion’s share of important green technologies:

(8)(a) new renewable energy technology

(8)(b) carbon reduction energy technology

(8)(c) high powered water handling technology

(8)(d) LED application technology

(8)(e) green transportation system related technology

(8)(f) green city related technology

(8)(g) technology that economizes and efficiently uses energy and resources to minimize greenhouse gas and contaminated substances

(8)(h) any technology belonging to one of (a) to (g) that fuses with another technology

These enumerated green technology subcategories of category eight are fleshed out with some examples, to make crystal clear exactly what KIPO is shutting out of its green tech program, e.g., solar, wind energy, geothermal energy, tidal energy, wave energy, bioenergy, batteries, carbon capture and storage, LED lighting, hybrid cars, plug-in hybrid cars.

So wind energy and hybrid vehicles are subordinated to livestock excretions disposal and vibration prevention methods.  Huh?

Needless to say, this is a major disappointment.  The KIPO fast track program won’t be of much service to the clean tech industry unless it’s overhauled so the large and important eighth category of green technologies is made automatically eligible.

Cleanovation 2011

Building on the success of an energetic premier conference held last year in Austin, this year’s Cleanovation again promised an interesting dynamic, where Israeli Cleantech startups travel to Texas to pitch for investment from a community of experienced energy-sector investors. 

More structured, and less free-wheeling than last year’s event, this year’s offering spotlighted water technologies, a timely issue as Houston itself was encircled by wildfires while dealing with protracted near-drought conditions.  Israeli technology to deal with water scarcity issues has a well-earned reputation in the marketplace, and that expertise certainly seemed welcome by the Texas audience.

On the flip side, as the energy market matures in Israel, particularly as Israel looks to exploit its natural gas and oil resources, there is a lot for the country to learn from Texas energy expertise – across a variety of fronts, including legal, regulatory, and M&A. 

Showcasing a U.S.-based clean initiative was an excellent presentation by a Waste Management executive, discussing how that company continues to look for ways to generate renewable energy from its operations. 

On a Green IP note, it was also heartening to hear that attendees were considering and utilizing the green patent incentive programs exhaustively covered by this blog for their technology.  All in all, a stimulating event, and illustrative of the global Cleantech economy in action.

Rice Alliance for Technology Cleantech Event 2011

Held on Rice’s idyllic campus, this event featured a large contingent of Cleantech companies, presenting on their technology to an audience of venture capitalists, solo investors, and professional services folks. 

In an interesting twist on the typical conference format, the afternoon session saw company presentations of intermittent lengths, with some companies giving rapid-fire 90 second or less type elevator pitches, while others presented in 4-minute increments.  The back-and-forth between presentations of various lengths help hold audience interest, while allowing a large spectrum of companies to present. 

As a Cleantech-focused IP lawyer, it was heartening to see the scope of innovation being presented, and more importantly, that the stakeholders in fostering that innovation spanned academia, government, and the private sector.  While investment dollars may be under pressure, the opportunities for start-ups to at least get an audience for their innovations persist. 

In the current environment, a focus on building an actionable IP portfolio is critical, and companies in the Cleantech sector simply must consider taking advantage of the various incentive programs, previously chronicled in this blog, in order to effectively accumulate those IP assets with limited spend and business disruption.

Other interesting takeaways from this event include confirmation that the U.S. government continues to take a leading role in driving the direction of innovation in the cleantech space.  In the morning keynote, led by Dr. Eric Toone of Duke University and the ARPA-E initiative of the Dept. of Energy, it was apparent that companies hoping to secure government-investment would do well to align themselves with the focus areas that the Dept. of Energy has delineated. 

 An open question, not addressed during the interesting presentation that spotlighted some of the companies and technologies that have received ARPA-E investment, remains concerning the IP implications of these kinds of grants.  As winners and losers emerge from those subset of Cleantech companies that have taken government funds, the consequences of utilizing that investment source on future licensing and enforcement activities will be interesting to watch.

Finally, while the Rice Alliance does an admirable job of promoting technology start-ups across sectors as diverse as nano-technology and life sciences, it was interesting to hear that Cleantech companies, particularly those targeting the energy sector, have received the lion’s share of financial support.  While perhaps not surprising considering the locale, that factoid, delivered as it was with relish by the conference director, reinforces the tremendous challenge and opportunity in energy for both established and start-up companies. 

And there is no doubt that IP will play a major role in driving future solutions, particularly in light of the confluence of the declining domestic manufacturing capability, globalization, and the still-unresolved political and economic ramifications of the climate-change debate. 

Conferences like the Rice Alliance and Cleanovation underscore the centrality of those issues, while providing fertile ground for spotlighting potentially disruptive technologies that one day may move the needle in remaking our economy and lifestyles.

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.

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.

In a previous post, this author provided background on the UKIPO’s “Green Channel” for expedited examination of patent applications drawn to environmentally-friendly technologies. 

As noted in that post, the program’s two-year anniversary recently past.  To mark the occasion, and in recognition of the 100th green patent granted “under the Green Channel acceleration scheme,” the UKIPO recently issued a press release highlighting the program’s success. 

In addition to noting that the 100th green patent had issued, the press release notes that since the initiative was launched in May 2009, the UKIPO had received over 450 green patent applications.  The average patent in the program was granted just eight months after the request for acceleration was entered, a measurable improvement from the UKIPO’s 36 month pendency for normal applications.

In prior public statements, the UKIPO has indicated that it is pleased with the positive reception the “Green Channel” initiative has obtained from both users and the media.

One of the stated goals of the program is to “spread the message that patents can be of assistance in dealing with the challenges of climate change,” a message reiterated in the UKIPO’s recent press release.

Because the UK government has taken a public and leading stance worldwide with respect to climate change issues, it has an interest in encouraging other patent offices to adopt similar programs – and it has made efforts in that direction.  The UKIPO’s lobbying efforts have resulted in either expressions of interest or actual implementation of similar schemes from a number of other countries, including China, Brazil, Australia, Japan, and South Korea. 

And in order to make information about applications accepted into the program easily available to the public, the UKIPO created a publically-accessible “Green Channel” database.  This searchable database allows users to view published applications and granted patents which have been accelerated under the “Green Channel”. 

Ambitiously, the UKIPO hopes that future innovation of “green” technologies will be spurred by allowing businesses and inventors “easy access to green ideas and inventions” and claims that “green patents provide innovative businesses to develop green products that can be brought quickly into the marketplace” – particularly if those green patents are “fast tracked.” 

In the interest of obtaining some additional perspective on the usage of the “Green Channel” by applicants to date, the database was accessed by this author.  As noted in the recent press release the “Green Channel” is being utilized, and search of the database shows that it is being used in a variety of technology areas, and by geographically diverse applicants. 

A search of the “Green Channel” Database on May 17, 2011 yielded 208 hits, or 208 published applications or issued patents that have been processed through the UKIPO’s “Green Channel.”  So far in 2011, there have been 7 additions to the database, or about one entry a month. 

Most of the utilization of the “Green Channel” appears to come from the EU, with Great Britain providing the vast majority of applications.  As of this writing, the United States was the owner’s country of residence for about 10% of the applications listed in the database, with a few frequent users like Protean Holdings, iGo Inc., and others.  

In fact, Protean received the 100th patent granted under the “Green Channel,” that is directed to a “regenerative braking system for electric and hybrid vehicles.”  Other countries represented in the database are Singapore, Taiwan, and Mauritius.  

As noted above, the range of technologies represented in the database is diverse, ranging from compostable toilets to headlamps to floating recycling plants.  These data points indicate that the UKIPO’s “Green Channel” is being used as a viable alternative for patent applicants seeking a forum for expedited examination on the basis of environmental benefit. 

In this author’s opinion, there is little doubt that the UKIPO’s “Green Channel” initiative is off to a good start.  Compared to the well-chronicled fits and starts of the USPTO’s Green Technology Pilot Program, the “Green Channel” appears to be a smooth-running program operating as intended, with relatively low barriers of entry to interested participants.  

Protean Holdings’ Intellectual Property Manager, one example of an interested participant, is quoted in the most recent press release speaking very favorably of the “Green Channel,” mentioning the importance to his “young company” in getting its green patents issued quickly (“as soon as 10 months after filing”) so that Protean can “attract new investment and prospective customers.”    

While not every prospective patentee will be assured of a similar outcome, sophisticated patent counsel are well-urged to consider the “Green Channel” as a resource for mission-critical and time-sensitive patent applications, irrespective of whether the applicant is a sole inventor, a start-up, or a multinational corporation. 

Hopefully, utilization of the program will increase, and applicants will begin to leverage the “Green Channel”, in conjunction with patent cooperation agreements, e.g. the Patent Prosecution Highway, to get ”green” patents issued faster and thereby spur additional innovation of environmentally-beneficial technologies.

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.

As readers of this blog are aware, there are a number of patent offices worldwide that currently offer expedited examination regimes for patent applications directed to inventions that promise to deliver environmental benefits. 

As chronicled by this blog, the United Kingdom Intellectual Property Office (UKIPO) has had such a program in place since May 2009. 

So how has the program performed as it approaches two years in force? This two-part post will attempt to answer this question, after providing some background about the UKIPO’s program.

The UKIPO’s “Green Channel” is a no-fee added service offered by the UKIPO for accelerated prosecution of patent applications directed to inventions with alleged environmental benefits.  Any pending application is eligible for the program, assuming the applicant complies with the minimal requirements for inclusion. 

Depending on the prosecution aspects the applicant chooses to accelerate, the UKIPO’s “Green Channel” could result in issued patents in as little as nine months.  The regular pathway to an issued patent is estimated to average between two and three years in the UKIPO. 

The UKIPO does not guarantee, of course, if and when applications in the “Green Channel” will issue, but rather affords applicants the option of accelerating some or all of the prosecution process for “green” inventions (see Green Channel FAQ here).

As set forth below, the actual requirements for inclusion in the program are straightforward and designed to encourage participation.

There is no separate petition process for inclusion in the Green Channel, in contrast to the USPTO’s Green Technology Pilot Program.  Applicants do not even have to file a form to have their pending applications considered under the Green Channel; a written request pointing out which aspects of the prosecution process the applicant wishes to accelerate and how the invention has an environmental benefit suffices.

The applicant can choose to accelerate any or all of the following prosecution process aspects: Search, Combined Search and Examination, Publication, and/or Examination.

With respect to the “environmental benefit” prong of the written request, the Green Channel as set up by the UKIPO recognizes that environmental benefits can be found in inventions of all types, and accordingly does not limit participation on the basis of technology areas or IPC classification.  Nor does an applicant need to demonstrate that the invention meets any specific environmental standard. 

Having an application drawn to an invention in an established “green” technology area, will, however, make the showing of environmental benefit in the applicant’s written request more straightforward.  The UKIPO has indicated that in such technology areas, a “simple statement is likely to be sufficient.”  

For inventions with less obvious environmental benefits,  “a more detailed explanation is likely to be necessary to explain how the invention has an environmental benefit”, and the applicant’s written request should endeavor to meet that standard.  While the UKIPO “will not conduct any detailed investigation into these assertions”, it reserves the right to “refuse requests if they are clearly unfounded.” 

In all cases, participation is by applicant request, however, so even applications directed to inventions in established green technology areas, e.g. solar panels, are not automatically moved into the Green Channel by the UKIPO. 

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.

In a new article, Sarah Tran, a professor at Southern Methodist University School of Law, provides the first (to my knowledge) academic review and critique of the U.S. Patent and Trademark Office’s (USPTO) Green Technology Pilot Program (GTPP).

Entitled “Expediting Innovation:  The Quest for a New Sputnik Moment,” and soon to be published in the Harvard Environmental Law Review, the article provides an interesting take on how the USPTO should promote innovation and commercialization of “high priority” technologies.

Tran lays out her thesis as follows:

My basic thesis is that the PTO should reduce the obstacles that prevent applications involving beneficial green technologies from being expedited and collaborate with other agencies to select more categories of high-priority technologies for accelerated review.  By reviewing more types of patent applications at a rate proportional to their social value, the PTO could better optimize the constitutional patent bargain while responding to critical public needs.

Tran believes the USPTO should take steps to expedite review of patent applications relating to “socially valuable” technologies, including green technologies, and examines the GTPP as a useful but flawed model for such reform.

The two major flaws, according to Tran, are insufficient benefits for applicants that participate in the program and the difficulty of meeting the eligibility requirements for the program.

Tran says the USPTO inflated the value of the GTPP by exaggerating the average pendency of a green tech patent application, observing that the average pendency for applications in the most common green tech art units was 34.6 months instead of the 40-month benchmark cited by the USPTO.

Thus, waiting 26 months for a final decision in the GTPP is less significant given the lower actual average pendency and does not provide sufficient benefit for applicants to bear the extra burdens of petitioning to enter the program.

I suspect, however, that the 26-month figure has been skewed due to the initial requirement that limited eligibility to already pending applications and may improve as a result of the USPTO’s elimination of the requirement in November 2010 as more newly-filed applications enter the program.

Tran also calls the eligibility requirements for the GTPP excessive, reciting the list of restrictions relating to claims and types of eligible applications. 

As a practitioner, I think the concerns here are overstated.

The requirements that the claims number twenty or fewer with three or fewer independents and the need to agree to a telephonic election of a single invention are fairly benign and, in effect, not much different from what happens in the ordinary patent application process.

I suspect that excluding reissues, provisionals, reexaminations and design applications from the program has little impact as well.

The two most onerous restrictions of the program - the technology class requirement and the above-mentioned limitation to pending applications - have been eliminated by the USPTO.

Finally, Tran thinks the limited one-year duration of the program prevents it from providing sufficient incentive for green innovation.  One year “is insufficient time for an inventor to conceive of an idea, reduce it to practice, and prepare an application for invention.”

I wholeheartedly agree with Tran’s call to make the GTPP permanent in order to foster green innovation:

unless the program is put into some long-term or permanent form that would enable inventors to gain a reward for their investment of time and resources in inventing green technologies, the program cannot be expected to “fuel further innovation.”

Recent comments by a key USPTO official about the chances the program will be extended provide a glimmer of hope that Tran’s vision of a long-term extension will be fulfilled.

Last week Robert Bahr, the Acting Associate Commissioner for Patent Examination Policy at the U.S. Patent and Trademark Office (USPTO), said he was “optimistic” that the USPTO would extend the Green Technology Pilot Program if and when it reaches its 3000 application limit.

The statement was part of his keynote address at the Intellectual Property Congress for Green Energy Technology in San Francisco. 

When the program gets very close to maxing out, the USPTO would likely go back to the patent examiners’ union to seek its approval to extend the program, Bahr said.

It was the examiners’ union concerns that the Green Technology Pilot Program would lead to too much extra work for patent examiners that led the USPTO to impose the 3000 cap when the program launched in late 2009.

The USPTO has extended the program once already, from its original end date of December 8, 2010 to December 31, 2011.

For more information on the USPTO Green Technology Pilot Program see my previous posts here, here and here.