Fast-Tracking Green Patents Reduces Wait Time, Appeals To Start-Ups, Study Finds

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Several countries have established fast-track programmes to expedite the examination of environmentally oriented, or “green,” patents. Preliminary findings from a study assessing the success of those programmes were presented last week to Geneva intellectual property professionals.

Over the last three years, seven national intellectual property offices implemented programmes to fast-track green patents. The United Kingdom was first, in May 2009 (IPW, IP Live, 14 May 2009). Other countries followed the same year: Australia, South Korea, Japan, the United States, and Israel. Canada launched its programme in 2011, Brazil and China in 2012.

The study of their success was commissioned by the International Centre for Trade and Sustainable Development and authored by Antoine Dechezleprêtre of the Grantham Research Institute on Climate Change and the Environment at the London School of Economics and Political Science. It aims to evaluate how useful and successful those programmes have been since their launch. Fast-track programmes allow green patent applications to be examined as a matter of priority by intellectual property offices.

The overall preliminary results of the study show that fast-track programmes are in demand. Although patent applicants may not have incentives to use these programmes, the programmes keep their promise to reduce the time to grant patents and accelerate the diffusion of technical knowledge in green technologies in the short run, said Dechezleprêtre.

Fast-track programmes were put in place to circumvent the patent backlogs that most IP offices face, in order to have green technologies more readily available in the context of environmental challenges, such as climate change.

One of the issues linked to fast-tracking is to determine what is a green technology, said Dechezleprêtre. Some patent offices use a list of eligible technologies, but in most, “patent applicants can just state that their patent has an environmental benefit and it is up to the patent examiner to decide whether the claim is true or not,” he said.

One of the consequences of having a patent granted earlier is that patent applicants can licence and use their technologies sooner, which increases the diffusion of the technology, he said. If patent applicants apply for an expedited examination very early in the process that might also lead to an early publication of the patent, he added, and this could also increase the diffusion of the technological knowledge associated with the patent. Some see patenting as a barrier to the diffusion of knowledge for those who cannot afford to licence it.

Patent Applicants Ambivalent

The study provides an empirical analysis of data coming from the seven patent offices, Dechezleprêtre said. The number of patent applications that have requested accelerated examination is rather limited, with 43 in Australia, 220 in Japan, 67 in Canada, 776 in the United Kingdom, and 3,500 in the United States. That translates in proportion to annual green patents to less than 1 percent in Australia, 1.4 percent in Japan, 1.6 percent in Canada, 8 percent in the United States, and 20 percent in the United Kingdom. The high percentage found the UK office shows that there is interest in fast-tracking schemes, he said.

After he interviewed IP professionals, Dechezleprêtre said he found out the main reason behind the relatively low numbers is that patent applicants have a strong incentive not to use the fast-tracking programmes in general. In particular, patent applicants face a trade-off between early filing and the publication of the patents.

Once the patent is filed, and its protection is secured, “you really don’t want your patent to be published,” he said, because it releases information to the public and this increases the risk of imitation. “Even if the patent is published you might still want to buy time to continue research and development activities, determining what exactly the invention is going to be, and continue discussing with the patent office to determine precisely what the final claims will be in the patent,” he explained.

Favoured by Start-Ups in Climate Change Technologies

Patent applicants have incentives to use fast-tracking programmes in specific circumstances, he said. In particular, start-up companies may wish to licence their technology to start making revenue, or may be eager to secure a patent in order to raise capital.

Start-up companies in the green technology business are heavy users of fast-track schemes, according to Dechezleprêtre, and are mainly domestic applicants. The majority of patent applications using the fast-track programmes are climate change related technologies, in particular renewable energy technologies.

The study also showed that the value of patents that are fast-tracked have a higher value than patents that are not. Dechezleprêtre found that patent applicants requesting accelerated examination tend to favour patents that are of the highest commercial value in their portfolio.

Reduced Time to Grant

In all, the preliminary results of the study indicate that the time from application to grant, which is the major aim of fast-tracking programmes, is significantly reduced, the author said. There appeared to be an indication that fast-tracked applications are more likely to be granted.

The earlier granting of patents also fosters technological knowledge diffusion, he said, after having considered patent citations in subsequent patents as a measure of how much the knowledge is used in subsequent inventions. Fast-track patents receive twice as many citations in the same period as other green patents, he said. However, if the early granting of patents can accelerate the technological knowledge diffusion, that might not be true in the long run, he added.

WIPO Chief Economist Comments

World Intellectual Property Organization Chief Economist Carsten Fink, invited to provide comments on the preliminary findings of the study, said the paper was both interesting and timely.

Among his comments, he said that one of the issues he found in the study is the argument that many companies are not using the system is because they are afraid of disclosing information about their invention.

According to Fink, many patent applicants are not necessarily interested in an early grant, not because they are afraid that their technology would leak to others, but rather they want to retain an option of holding onto the patent. Once a patent is filed it is not clear that applicants want an early patent grant because a grant implies additional costs, he said. Companies first want to see how the technology and the market develop, to evaluate whether the invention will be commercialised, as many patents will not have any application, he said.

Fink also said the study should use caution in attributing patent citations to knowledge diffusion. Depending on the patent office, the citations are made by the examiners and not the applicants. It is thus not clear whether the patent applicant has considered prior patents, he said.

The patenting of the green economy has been a sharp issue in international fora, in particular in the context of the transfer of technology. In the June Rio+20 summit, developing countries argued that intellectual property on green technologies can hinder the diffusion and the use of those technologies by countries that need them the most, unable to afford the high prices of those technologies (IPW, Environment, 18 June 2012).

The United Nations Framework Convention on Climate Change is holding the 18th session of the Conference of the Parties and the 8th session of the Conference of the Parties serving as the Meeting of the Parties to the Kyoto Protocol, from 26 November-7 December in Doha, Quatar.

IP issues are expected to be discussed in the context of the Ad Hoc Working Group on Long-term Cooperative Action under the Convention, in particular on technology transfer.

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

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