French IP Lawyers Prefer No Favours For Green Tech Patents; Welcome America Invents Act

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PARIS – A meeting of IP professionals held in Paris last week reaffirmed the importance to the private sector of intellectual property and its protection. Meanwhile, panellists at the event argued that green technologies should not benefit from a special regime. They also hailed the new America Invents Act as facilitating patent applications in the United States.

The 7th edition of the International Conference on Intellectual Property was held in Paris on 15-16 March and organised by the French Institute of Patent & Trademark Attorneys, and Premier Cercle, an event organiser based in Paris and Brussels.

At a panel entitled “Green Technologies: Are Patents Barriers or Catalysts For Their Development,” speakers were unanimously in favour of strong IP rights and protection, and of the opinion that no special treatment should be arranged for green technologies, including expedited patent processing.

According to Martine Planche, senior executive vice president of the French National Institute of Industrial Property, the definition of green technologies is technology aimed at limiting toxic waste entering the environment. And this context created an “El Dorado” for green technologies, which are developed mainly in the sectors of energy, transport, construction and pollution clean-up, she said.

Georges Picard, executive vice president of IFP Energies nouvelles, a public-sector research, innovation and training centre (formerly the French Institute of Petroleum), said that innovation and patents to protect its results were crucial. The centre works half on fossil fuels and half on new energies. They own some 15,000 patents throughout the world. Their main aim is to produce energy while reducing the impact on the environment such as the development of hybrid and electric vehicles, he said.

Green Technology, Business as Usual

For green technologies, the patent strategy and way to acquire patents is no different than for other technologies, Picard said. Markets are not in existence yet or only in a small way, so patents need to be maintained over a long period, which has a cost. Investments to develop those new technologies are substantial and it is impossible to face the cost of investments alone, he said. The sharing or pooling of intellectual property is very important, and can be achieved through partnering with large groups to be able to invest in these areas, he added. The returns on investment are sometimes too remote and risky for industries and research and development needs public funding, including for pre -industrial research, he said.

For Jacques Bauvir, director of intellectual property for French global tire manufacturer Michelin, the mission is to contribute to sustainable mobility. Everything Michelin works on “is green technology,” he said. The aim is to improve tire rolling resistance with impacts that lead to fuel economy and reduced CO2 emission. Tires represents about 20 per cent of the fuel used by a car and can reach 30 percent for an urban electric vehicles or a heavy truck, he said, so this has an important leverage effect on technical progress.

Intellectual property must assume its usual role in green technology, he said, to be able to finance research and protect results. There is no reason to establish a special regime for green technology, he said, adding that the absence of patent protection would prevent investment in emerging countries,

During negotiations in the context of the United Nations Framework Convention on Climate Change (UNFCCC), developing countries have said that intellectual property rights could hinder the diffusion of green technologies to countries which need it the most.

On the advantages of an accelerated procedure for green patents, Planche said that for France it would hardly be feasible to accelerate patent procedure for green technologies since those can be found in almost all areas, from cosmetics to automobiles to high technologies. She added that in France very few requests for an accelerated procedure were ever put forward. Accelerated procedure should also not endanger the quality of patents, she said.

According to Lionel Vial, an intellectual property attorney and moderator of the panel, green technologies cover a vast area and the requests for accelerated procedures, which are in effect in some countries such as England, are not always desirable for the patent applicant but mostly interesting for competitors or consumers. Patent applicants are not often the ones requesting that the patent procedure be accelerated, he said.

America Invents Act through the European Lens

Another panel during the meeting tried to measure benefits for European Union companies of the new American Invents Act (IPW, US Policy, 6 January 2012), and participants welcomed the new act as a major positive change for European companies filing in the US.

Deputy Under Secretary of Commerce for IP and Deputy Director of the US Patent and Trademark Office (USPTO) Teresa Stanek Rea said that the goals of the patent reform legislation are mainly to encourage innovation and job creation, improve quality of patents and reduce the mounting patent backlog. The USPTO under the new system plans to remove the backlog by 2015-2016, she said. The new legislation will also help establish secure funding mechanisms and help smooth management. The USPTO overall budget is US$2 billion, she said, and in the next three years it could reach US$3 billion.

One of the characteristics of the new law is more attention devoted to prior art. For example, pre-issuance submissions will bring prior art to the attention of the examiners, Stanek Rea said. Prior art is to be captured as early as possible, she added.

The America Invents Act should be effective on 16 March 2013, she said, including one of the main features of the Act, the first-to-file disposition. “We will join the rest of the world on 16 March 2013,” she said, as an audible sigh of relief went through the assistance mainly composed of IP attorneys.

“We should not underestimate what the US have been doing, and what it means for us,” said Thierry Sueur, vice president for intellectual property at Air Liquide, a French global producer of gases for industry, health and the environment.

The new Act brings important changes for EU users, he said. It brings US laws closer to international standards and moved toward a first to file system. The date of invention is no longer relevant, he said, and this is a major reform for Europeans, he added. However, some open issues remain on which Europe should further reflect, he said. For example, should a grace period system become an international standard? Should full prior art effect be given to prior unpublished patent applications, including the Patent Cooperation Treaty (PCT) applications subject to an exception in favour of the inventor or the owner of the prior patent application?

The new US Act also was hailed by Denise Hirsch, director of intellectual property for INSERM Transfer, which is a private subsidiary of the French National Institute of Health and Medical Research. She said her organisation welcomes the new reform, which brings the system closer to what European companies are used to and to common practice. The previous system was detrimental to foreign organisations in the US as there was no record of the day of conception in the EU, and this brought uncertainty about the outcome of applications.

Catherine Saez may be reached at info@ip-watch.ch.

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