Fast-Tracking Green Technology: China and UK Race to Promote Green Patents

2011/2/22By Kelly D. Frazier Visiting Professor of US Law for China University of Political Science and Law,[Patent]

In February of 2010, members of the International Patent Cooperation Union (PCT Union) addressed the issue of green technology. During their seventeenth session meeting in Rio de Janeiro, the International Bureau (IB) issued an announcement (fast-track announcement) stating, “A number of national patent offices are according preferential treatment to patent applications which relate to environmentally-friendly (‘green’) technologies. The IB would like to seek the views of Member States as to what, if any, measures might be taken within the PCT system to give preferential treatment to international applications which relate to ‘green’ technologies.”
 
What is the PCT?
The WIPO is one of the 16 specialized agencies of the United Nations (UN).  Patent law proved to be too specialized to be dealt with at the UN level so the Patent Cooperation Treaty (PCT) was signed to provide specialized patent service. The PCT “makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an ‘international’ patent application.”  A country that has signed the PCT is referred to as a PCT Member State, a Contracting State or a PCT Country. Neither the WIPO nor the PCT issues patents. The PCT is only intended to help applicants determine the patentability of an idea. The two main uses of the PCT is to find out if your idea is patentable in another country or to determine if another party has improperly taken your idea and patented it in a foreign country.
 
The Standard 30 Month PCT Timeline
 
It takes approximately 30 months from the date that the local application is filed to the time when the patent enters the national phase; where an applicant can file for a patent in a target country. This is nearly two and a half years. Obviously members need to shave time off of this process. In order to see how to save time it is necessary to briefly look at the current PCT process to see which steps could be truncated or skipped all together.
 
Both the PCT and individual Member States provide for exceptions to this timeline. Compliance or non-compliance may speed up or slow down the process. Since the purpose here is to provide a quick summary of the standard timeline, complicated timing issues not will be addressed.
 
Phase I - Months 1-12: The Local Application Phase. This phase takes up to 12 months. The local application will generally contain at least 5 elements regarding the subject of the patent: (1) the local request or application; (2) A description per local rules; (3) Claims; (4) An abstract; and (5) Drawings as necessary. Each Member Country has a Receiving Office (RO). The job of this office is to receive applications for a PCT for the Member State and submit for international review under the PCT. The applicant must file with the local RO within 12 months of the local application under the PCT.
 
Phase II - Months 12-16: The PCT Application Phase. The PCT requires every country to have at least one RO designated to receive PCT applications. The application can go to you local or your regional patent Office. The WIPO has its own RO which can be used if national law permits.
 
Phase III - Months 16-18: The International Search Report (ISR) Phase. The goal of filing a PCT is to investigate the international patentability of an idea. This investigation is initially done by an International Searching Authority (ISA). The ISA is defined by the PCT as a source which is “competent” to provide you with a report and opinion regarding the patentability of the subject of your application. This takes approximately 4 months after you file your PCT application. The report will be in writing and will give you citations to other patents, documents related to prior art and other technologies or references related to the subject of your application. The ISR also includes a written patentability opinion from the ISA. The opinion is not binding, but helps applicants decide where to file. It may also convince applicants that the idea is not patentable and save them the time and effort of a useless application.
 
Phase IV - Months 18-19: International Publication. The IB, the organization which called for ideas on establishing preferential timelines for green technology, will publish your PCT application on PATENTSCOPE® about 18 months after the priority date. PATENTSCOPE is a database collection of over 1.7 million international patent applications.  For the sake of this timeline the priority date of the patent application is the date that the local patent application was filed (the beginning of this timeline) and accepted. However, the formal definition of the priority date is “the filing date of the earliest application of which priority is claimed, and where no priority is claimed, the international filing date.”  Some Member States do not require the applicant to wait 12 month under Phase I.
 
Phase V - Months 19-28 (optional): Supplementary International Search (SIS). This phase is for applicants seeking more information. If an applicant wants the ISA to provide a more thorough ISR, applicants have up to 19 months from the priority date to request an SIS. The SIS is most beneficial for applicants who are more seriously intent on seeking a patent in a specific Member State. This is common where the prior art may be complex or where language and translation complications justify a lengthier search. Not all nations provide the SIS service, additional fees apply and the SIS may add an additional 9 months before an application can reach the phase where a patent is sought in a specific nation (the national phase). The SIS should be completed approximately 28 months from the priority date.
 
Phase VI - Months 22-28 (Optional): Demand for International Preliminary Examination. This phase is also for applicants seeking more information. If you are dissatisfied with the ISR you can seek a more thorough answer from the International Preliminary Examination Authority (IPEA) of the member state. Unlike the SIS, all Member States must provide this service. The IPEA issues an International Preliminary Examination Report (IPER). As of 2004 this report has been referred to as an “International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)” which is often abbreviated as the IPRP Chapter II.
 
Phase VII – Month 28: Return of the Reports. If the applicant has sought a more thorough answer, at approximately 28 months from the priority date, one of two reports will be returned. Either the ISA will return the SIS or the IPEA will return the IPRP Chapter II report. This gives the party two months to decide what to do with those reports.
 
Phase VIII – Month 30: The National Phase. At approximately 30 months from the priority date the applicant will then enter the national phase. This is the phase where the applicant can proceed to file applications for a patent in the Member States. At this point each Member State has exclusive authority over whether to grant a patent. It may also be at this stage where the applicant seeks to have the patent of another party rescinded if the applicant feels the existing patent was improperly granted.
 
What is a Green-Patent? No Universal Definition
There is currently no definition for green or environmentally-friendly technologies in PCT glossary.  Resistance to a universal definition can be found in the initial response to the IB call for fast-tracking at the Rio conference. “All Authorities which took the floor on the matter expressed concerns about the difficulty to determine which applications indeed related to green technologies, noting the absence of an agreed definition…(noting) the absence of an agreed definition of what constituted ‘green’ technologies and the concerns raised with regard to the reliability of self-certifications by applicants, all Authorities which took the floor on the matter also expressed concerns with regard to the idea to specifically indicate and/or draw attention to published international applications which claimed to relate to ‘green’ technologies in order to facilitate licensing and commercialization.” 
 
Given the lack of a definition and the unreliability of applicants, it is unlikely that anything can be done to speed up the PCT process at this point. In fact, most have resolved themselves to the fact that applicants will remain reliant on the national phase for the foreseeable future and note that this dialogue is mainly to improve communications. As stated in the report, “all Authorities which took the floor on the matter shared the concern, as raised in (the IB request), that the scope under the PCT for accelerated processing of international applications was quite limited, noting the already tight time limits during the international phase. If at all, such acceleration could only be offered in the case of PCT first filings. One Authority stated that its users had indicated that they were not interested in accelerated processing of applications but in a better dialogue during Chapter II processing and exploitation of PCT work products during national phase processing.” 
 
The IB’s Call to Action on Green Patents: Current Fast-Track Contenders
Since there is no agreement on what qualifies as a green technology, applicants must be aware of the rules for their target country. In the fast-track announcement the IB gave the following examples of how Member States are allowing applicants to fast track their patents. In its announcement the IB noted that the UK, China, Korea and the US were offering faster green patents. This analysis will be limited to a summary of the UK’s system.
 
The UKSIPO Green Channel System
The UK was the first country to respond to the need to fast track green patents.  The UK has a remarkably brief and straight-forward system. The UK Intellectual Property Office (UKSIPO) describes the process as follows:
 
“1. On 12 May 2009, a ‘Green Channel’ for patent applications will come into force. Under this service applicants will be able to request accelerated processing of their application if the invention relates to a ‘green’ or environmentally-friendly technology.
 
Procedure
2. To enter the Green Channel, the applicant must make a request in writing, indicating:
    * that their application relates to a ‘green’ or environmentally-friendly technology and
    * which actions they wish to accelerate: Search, Combined Search and Examination, Publication, and/or Examination.
 
The Office will require no further reasons for accelerated processing.”
 
That is it. There is no analysis or definition of green or environmentally-friendly. A search of the UKIPO reveals no definition of these terms. The PDF document outlining the procedure, which can be found at http://www.ipo.gov.uk/p-fastgrantguide.pdf, indicates that whether you qualify for preferential treatment will be made on a case by case basis. The site states that “Whether or not the reasons provided will be sufficient for us to allow a request for accelerated search or examination in other areas of technology will depend very much on the circumstances of the case in question.”
 
However, it is not absolutely necessary to give the UKSIPO any reason when requesting accelerated service. The above references “Fast Grant Guide” state as follows:
 
“Even if you are not able or do not wish to provide us with adequate reasons for wanting things accelerated, you can still request combined search and examination and early publication which, if you respond promptly to our reports and letters, can still get your patent granted quickly…. It is helpful to us if you clearly mark any correspondence for example, as “URGENT – ACCELERATED PROCESSING REQUESTED” or using similar words if your application is being accelerated. This will help us to identify correspondence relating to accelerated applications as early as possible after the Office has received the correspondence and thus ensure that the examiner receives this correspondence as quickly as possible.”
 
If a party wants preferential treatment for a green-patent, all one needs to do is ask. Whether you qualify depends on the circumstances. Justification is not required though it is likely to be helpful. For example, the sites states that “If you demonstrate that you need a patent granted quickly because you are aware of a potential infringer, or need a faster search, examination or grant in order to secure an investor, then we are likely to accede to your request for accelerated processing.”
 
The UK Green Channel reduces the time for a patent by offering three types of accelerated services: Combined search and examination (CSE), Accelerated search and/or examination (and) early publication. “The IPO pledged that waiting times for applications under the PCT Fast Track procedure will be cut by more than a year, which bears similarity to the existing green channel.  However, the PCT Fast Track Procedure will be more useful for applicants seeking patent protection on the international stage.
    * The application is filed under the PCT and specifies that patent protection is sought in the UK;
    * Once the clear search has been received, the applicant applies to register the patent in the UK; and
* If requested, the application will then be dealt with under the accelerated procedure.” 
 
The UKSIPO does not state how long a normal patent takes. This is often up to the applicant. Failing to respond to UKSIPO questions and not following procedures slows the process down. However, if an applicant handles the Green Channel process effectively the site states that it is possible to receive a patent in less than a year.
 
Summery
The slow international pace of IP protection and the fast pace of green-technology are an inherent source of frustration. Though the WIPO and treaties such as the PCT have made great strides in bridging the gap between developed and developing nations, there is a lot of work to be done. Unfortunately no silver bullet has surfaced for those seeking to introduce new technology into an old system. This means that those seeking green patents will need to be proactive. Companies need to have an established patent strategy in place before filing. The PCT is a useful tool if you have an old idea and are seeking new international markets and time is not an issue. If you have a new idea and time matters the PCT alone may be insufficient.
 
The PCT is not the ideal mechanism for dealing with an ongoing infringement. In these circumstances patent seekers will need to go directly to their target market. If that market is a signatory of the PCT then simultaneous use of the national phase and PCT may be useful. However, the one-track system and lack of a universal definition of “green technology” makes the PCT an inappropriate forum for those seeking fast action on green patents for ongoing infringements. If this is your issue then you will need experienced counsel from someone familiar with the local national phase.
 
The PCT cannot grant patents, cancel patents or speed up the national phase. For the foreseeable future green-patent applicants or those seeking to redress an on-going infringement of an existing patent are best advised to seek experienced counsel and go the IP office of the target country first. Whether simultaneous action through the PCT is right for you is mainly determined on a case-by-case basis and applicants are advised to seek the guidance of experienced IP counsel to determine which process best suits their IP needs.

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