US IP Industry Group Pushes ‘Green’ Patents; Adopts Resolution On Compulsory Licences

By Liza Porteus Viana for Intellectual Property Watch
BOSTON – More companies have joined a global effort to improve the environment by pledging “green” patents for use in the public domain. Meanwhile, a US IP law group passed a resolution on IP and public health, including provisions urging restriction of compulsory licences.

It was announced this week that Bosch, DuPont and Xerox Corporation have joined the Eco-Patent Commons (EPC), an industry-led effort aided by the World Business Council for Sustainable Development (WBCSD). The EPC aims to create a collection of patents on technology that directly or indirectly protect the environment to facilitate innovation and encourage collaboration between businesses, such as patents for energy conservation, pollution control, or materials reduction. These patents are not for companies’ “crown jewels,” or super-secret intellectual property, and are made available to anyone free of charge.

“It represents an effort to gain strategic leverage with patents that have an intersection with ecology and the environment,” David Kappos, vice president and general counsel of EPC co-founder IBM, told those attending the 41st Annual Congress of the International Association for the Protection of Intellectual Property Congress here on Monday. The EPC “represents a leadership opportunity for global businesses to help protect the planet.”

Launched by IBM, Nokia, Pitney Bowes and Sony in partnership with the WBCSD in January, the EPC is also going to expand to include ideas that may be beneficial to the environment, but not yet patented.

“So far, we’re going in the right direction” and the collaboration atmosphere has been very creative, said Donal O’Connell, intellectual property director of Nokia House in the UK.

The newly pledged patents include: 11 for Xerox technology that significantly reduces the time and cost of removing hazardous waste from water and soil and pollution-detection technology; four for DuPont technology that converts certain non-recyclable plastics into beneficial fertilizer; Bosch automotive technologies that help lower fuel consumption, reduce emissions, or convert waste heat from vehicles into useful energy; and three for technologies developed by Sony that focus on the recycling of optical discs.

Kappos said the EPC should act as a “relief valve” and a “way to release some of that tension” that exists between intellectual property and the environment, much like that that exists between intellectual property and health issues.

“Ecology and social development are starting to look like the next pharma,” Kappos continued. “People are already looking at how to get the patent system out of the way of social development. Those of us in this room are probably thinking that’s a very dangerous way to think.”

“We need to find ways for intellectual property to be viewed as part of the solution to our environmental problems, not as an inhibitor to the solution,” he added.

Kappos described the EPC as a “win-win” for businesses. Free access to patents and knowledge allows a company to leverage and improve environmental aspects of operations, cut costs and labour.

“This is a new way to use patents for a strategic purpose that creates bottom-line business benefit to your company,” he said.

Greater sensitivity to environmental impact is the “in” thing, and an increasing number of customers are demanding that products they buy have some sort of green standard. That means more companies will be focusing on making the intellectual property in their products more enviro-responsible.

“It’s having a huge impact on companies … how companies are thinking about compliance and how governments are thinking about enforcement,” said Ken Rivlin, a partner in the global environment practice at Allen & Overy law firm in New York. “Environmental compliance is going to either be used as a sword or a shield.”

Rivlin noted the movement in Europe and the United States to require additional disclosure about the contents of products, how they are made, and what happens at the end of their life cycle. The June 2007 REACH Directive in Europe, for example, requires the registration and testing of more than 30,000 existing chemical substances prior to selling them in the European Union.

Since that product information is being forced out into the open, Rivlin said, “there’s a real question now about how you protect that information.”

According to the World Intellectual Property Organization, 2007 saw 1,780 environmental technology patent applications filed as part of the Patent Cooperation Treaty – more than 400 more than just four years prior and a 12.3 percent increase over 2006. The PCT allows inventors to file one “international” patent application while protection of an invention is sought simultaneously in several countries.

AIPPI Passes Public Health Resolution

An AIPPI working committee on health presented a third draft resolution to the Boston Congress on the impact of public health issues on exclusive patent rights. The focus is the limitations imposed on exclusive patent rights under patent laws that may play a role in providing access to patented medicines and other medical or biological products. The working panel received reports from 33 countries – including Argentina, Brazil, China, Denmark, France, Germany, Japan, Malaysia, Portugal, Korea, Switzerland, Thailand, the UK and the US. The committee summary of those 33 reports is here.

The committee said that exceptions to patent law alone cannot resolve the issue of access to affordable medicines and related products.

The resolution resolves, among other things, that: patent law should provide for an exception to the rights of a patentee, allowing a party to undertake – without the patentee’s authorisation – experiments relating to the invention, regardless of whether the product is for commercial use; patent law should allow a party to undertake, without the patentee’s authorisation, acts necessary to obtain regulatory approval for medicines and other medical products; if patent law provides for an individual prescriptions exception, the exception should be limited to preparation of medicines for an individual patient and not on a large scale; patent law should provide for compulsory licensing but that licence should only be granted in exceptional and “strictly defined circumstances”; and that “the law should not permit expropriation of patent rights.”

It also states that Article 31bis of the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement should be quickly ratified by World Trade Organisation members who have not yet signed on.

That article, a 2005 amendment to TRIPS, expands access to generic pharmaceuticals by waiving the restriction that says use of compulsory licences on pharmaceutical patents must be “predominantly for the supply of the domestic market of the member authorising such use.” It allows any WTO member to grant compulsory licences on pharmaceutical patents to produce drugs for other nations, specifically for least-developed countries.

There is a “large consensus” as to the necessity of a research and experimental use exception, the committee said, but what still needs to be debated in committee is whether countries want this exception if it does not rule out a commercial use, so long as the trials are experiments.

The group also concluded that the committee “will have to consider whether AIPPI should support initiatives which provide for incentives, including patent term extension and market exclusivity, for development of new medical products.”

A number of resolutions on different committee areas were expected to be adopted at the meeting.

Liza Porteus Viana may be reached at info@ip-watch.ch.