Following on from our article last week running through the green tech accelerated prosecution schemes in: the UK, the USA, Japan, China, and Republic of Korea; this article will cover more schemes available around the world.
Accelerated Prosecution Schemes
Canadian Intellectual Property Office (CIPO) – Canada
CIPO allows applicants to advance examination of a patent application where "An applicant requests such an advancement and submits a declaration that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources" 1.
In order to use the advanced examination process, applicants should submit a letter including:
- a request for advanced examination,
- a statement indicating that the application relates to technology that if commercialized would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources, and
- if the application has not yet been published, an early publication date 2. Unlike, for example, the UK, a request for accelerated examination of an application relating to green technology can only be granted if the application is open to public inspection 3.
Once a request for advanced examination for a green technology has been processed by CIPO, a first office action can be expected within 3 months 2.
IP Australia – Australia
IP Australia allows applicants to request faster examination of their applications at no additional cost, so long as the applicant can indicate a suitable reason as to why they think the application should be expedited. Although the reasons that may be considered 'suitable' are not restricted, one of the three explicit fast track options provided by IP Australia is "Fast Track for Green Technology" 4. IP Australia provides no formal definition of what constitutes a green patent; an applicant may be able to obtain accelerated prosecution if they can provide a statement justifying that the invention is an environmentally beneficial or 'green' technology.
Applicants may make a request for accelerated examination for their application either in writing or by phone 5. Where a request for expedited examination has been allowed, IP Australia aims to issue a report (clear or adverse) within 8 weeks from the date of the request.
Instituto Nacional da Propriedade Industrial (INPI) – Brazil
INPI offers a Green Patents program to accelerate examination of patent applications related to technologies directed to the environment 6. The program defines green technology as including technologies from the following areas: alternative energy, transport, energy conservation, waste management, and agriculture 7. An expanded list detailing examples falling under each category 8, along with a step-by-step guide on how to participate in the program 9, is available on the INPI website.
There is an official fee associated with using the scheme, with a discount available for individuals and micro-enterprises, and applicants can participate by filling out an online form 7.
Israel Patent Office (ILPO) – Israel
"Green" applications are eligible for expedited examination at the ILPO at the request of the applicant 1011. Applicants who wish to expedite examination on an application can request this by filing an evidenced request explaining how the invention helps to advance environmental protection. If a request is granted, the ILPO will aim to produce a search and examination report within 3 months of classifying the invention as "green" 12.
Examples of areas of technology that would fall within the scope of "green" applications provided by the ILPO include:
- preventing causes of global warming,
- reducing air or water pollution,
- promoting non-polluting agriculture, and
- relating to alternative energy sources 1314.
There is no official fee associated with accelerating examination at the ILPO for green applications 15.
Taiwan Intellectual Property Office (TIPO) – Taiwan
TIPO offers an Accelerated Examination Program (AEP) that allows applicants to request accelerated examination on applications for inventions relating to green technologies 16. TIPO defines green technologies as any one of the following:
- technologies for improving energy conservation and for developing new sources of energy, or renewable energy vehicles, or
- technologies for carbon reduction and resource saving.
Applicants wishing to enter the AEP should file an AEP request form, along with a written explanation as to why the claims of the invention relate to the green technology areas recognised in Taiwan (and may support this explanation by providing supporting documents such as the application specification or drawings). Unlike many other patent offices, TIPO charges an official fee for the AEP 16.
TIPO estimates that examination results on AEP applications (e.g. notification of responsive examination opinions, final notice, or written decision of examination) will be issued 6 months after all the relevant documents have been received, however this may vary depending on the green technology field of the application 16.
Finnish Patent and Registration Office (PRH) – Finland
PRH allows applicants to use a fast-track processing system if a national patent application (including divisional applications) relates to bioeconomy, circular economy, or clean technology solutions 17.
In order to use the fast-track processing system, a request form should be included on filing along with the application 18. If the request for fast-track processing is accepted, PRH will issue a first Office Action within 3 months after the application has proceeded to technical examination, and will issue a second Office Action 2 months after a reply to the first Office Action has been received 1718.
Conclusion
Many national IP offices offer accelerated processing for applications relating to environmentally friendly or "green" technologies. However, what constitutes a "green" technology varies between offices, and some schemes are only available to certain applicants. Some IP offices also have additional requirements, such as early publication or additional databases on which accelerated applications are published.
Footnotes
1. Government of Canada, "Help: Green Technologies," [Online]. Available: https://www.ic.gc.ca/opic-cipo/cpd/eng/help/content/help_green_technologies.html. [Accessed 26 July 2023].
2. Canadian Intellectual Property Office, "Advanced examination for green technologies," 08 June 2021. [Online]. Available: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/patents/patent-application-and-examination/advanced-examination-green-technologies#Section1%20(updated%20June%208,%202021). [Accessed 26 July 2023].
3. Canadian Intellectual Property Office, "Manual of Patent Office Practice (MOPOP) Section 11.03.02," September 2020. [Online]. Available: 11.03 Advanced examination – October 2019 | Manual of Patent Office Practice (MOPOP) | Innovation, Science and Economic Development Canada / Government of Canada (opic-cipo.gc.ca)[Accessed 26 July 2023].
4. IP Australia, "How to Request an Examination," [Online]. Available: https://www.ipaustralia.gov.au/patents/how-to-apply-for-a-standard-patent/how-to-request-examination-of-my-patent-application. [Accessed 26 July 2023].
5. IP Australia, "IP Australia Patent Manual of Practice and Procedure," 16 December 2020. [Online]. Available: https://manuals.ipaustralia.gov.au/patent/2.13.4.3-expedited-examination. [Accessed 26 July 2023].
6. P. Moreira, "WIPO Magazine," World Intellectual Property Organization, May 2021. [Online]. Available: https://www.wipo.int/wipo_magazine_digital/en/2021/article_0003.html. [Accessed 26 July 2023].
7. Instituto Nacional da Propriedade Industrial, "Green Patents – Instituto Nacional da Propriedade Industrial," 16 November 2020. [Online]. Available: https://www.gov.br/inpi/en/services/patents/prioritized-examination/pilot-projects/green-patents. [Accessed 26 July 2023].
8. Instituto Nacional da Propriedade Industrial , "Listagem das tecnologias verdes baseada no inventário da OMPI," 16 November 2020. [Online]. Available: https://www.gov.br/inpi/pt-br/assuntos/arquivos-dirpa/copy_of_listagemverdecompacta.pdf. [Accessed 26 July 2023].
9. Instituto Nacional da Propriedade Industrial, "Patentes Verdes Passo a Passo," 16 November 2020. [Online]. Available: https://www.gov.br/inpi/pt-br/assuntos/arquivos-dirpa/passo_a_passo_V1_13dez20162_docx.pdf. [Accessed 26 July 2023].
10. Gilat Bareket & Co, Reinhold Cohn Group, "Changes in Practice at the Israeli Patent Office," Lexology, 07 June 2017. [Online]. Available: https://www.lexology.com/library/detail.aspx?g=1ab67154-95df-4d1d-8d13-b287de66cb10. [Accessed 27 July 2023].
11. E. Heiliczer, "Israel Patent Office 2021 year in review: strong innovation continues," Lexology, 22 August 2022. [Online]. Available: https://www.lexology.com/commentary/intellectual-property/israel/pearl-cohen-zedek-latzer-baratz/israel-patent-office-2021-year-in-review-strong-innovation-continues. [Accessed 27 July 2023].
12. S. Aharonovitz, "Accelerated examination of patent applications," 28 September 2022. [Online]. Available: https://www.wipo.int/edocs/mdocs/scp/en/scp_34/scp_34_k_quality.pdf. [Accessed 27 July 2023].
13. Israel Patent Office, "Green applications," Israel Ministry of Justice, 7 July 2021. [Online]. Available: https://www.gov.il/en/Departments/General/green-app. [Accessed 1 August 2023].
14. G. Jochnowitz, "PPH at the Israel Patent," 17 October 2012. [Online]. Available: https://www.jpo.go.jp/e/toppage/pph-portal/events/pph_at_the_ilpo_mr_gershon_jochnowitz.pdf. [Accessed 27 July 2023].
15. R. Lahan, "ACCELERATED EXAMINATION OF PATENT APPLICATIONS BY THE ISRAELI PATENT OFFICE (ILPO) TO BENEFIT GREEN TECH AND OTHER SUSTAINABLE SOLUTIONS WIPO WEBINAR," World Intellectural Property Office, 1 March 2023. [Online]. Available: https://c.connectedviews.com/01/SitePlayer/WIPOwebinars?session=119036. [Accessed 27 July 2023].
16. Taiwan Intellectual Property Office, "Accelerated Examination Program (AEP)," Taiwan Intellectual Property Office, 1 January 2022. [Online]. Available: https://www.tipo.gov.tw/en/cp-824-873219-841ee-2.html. [Accessed 27 July 2023].
17. Finnish Patent and Registration Office, "Fast-track processing of patent applications," Finnish Patent and Registration Office, 06 June 2021. [Online]. Available: https://www.prh.fi/en/patentit/applyforanationalpatentinfinland/processingofapplicationsatprh/fast-trackprocessing.html. [Accessed 27 July 2023].
18. "The Finnish Fast Track Prosecution for Green Inventions WIPO WEBINAR," World Intellectual Property Office, 6 June 2023. [Online]. Available: https://c.connectedviews.com/01/Player/WIPOwebinars/?s=119725&a=false. [Accessed 27 July 2023].
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
