26 April is World Intellectual Property Day, WIPO’s annual celebration of all things IP.  This year, the theme is “innovate for a green future”.  WIPO’s website perhaps sums it up best: “World IP Day 2020 puts innovation – and the IP rights that support it – at the heart of efforts to create a green future. Why? Because the choices we make today will shape our tomorrow. The earth is our home. We need to care for it”.

Cleantech patents “101”

It is broadly accepted that climate change cannot be redressed by means of existing non-renewable technologies. Environmental consciousness – especially as it pertains to climate change is increasing exponentially throughout the world. Climate change has gained significant attention recently with Australia having recently endured its worst bushfire season on record.  “Cleantech” – technologies that may lessen, nullify or even reverse the environmental impact of an existing product or process is a thereby a buzzword in many aspects of society – including patent law.

In this article, we look at the patent system in general, cleantech patents in focus – and consider a few “tricks of the trade” particular to (although not unique to) cleantech patents.

The essential quid pro quo of the “patent bargain” is that in exchange for providing the public with a new invention, a patentee is afforded a twenty-year exclusive period in which to exploit it. Exclusive, in the context of patent law, refers to the exclusion of third parties from being able to use the patented technology. This is “IP101” – and history has generally shown it to be sufficient inducement with which to stimulate inventive activity.  This is especially true of the cleantech industry where the strategic management of IP is underpinning rapid growth throughout the sector.

Patent issues particular to cleantech

i)      Compatibility with the “patent bargain”

Whereas new inventions are typically patented with a view to profiting the patentee, there may be some cross-over into the realm of also providing a great benefit to the public. However, what happens when an invention is of such outstanding public benefit that the patentee’s right to exclude others is arguably contrary to the interests of society? In such circumstances, the patent bargain does not fit well with the advancement of the species and gives rise to a real tension between the two.  Indeed, we’ve seen this tension play out very recently in respect of the COVID-19 pandemic and proposed Crown use of patented inventions under the banner of “the public interest”.

Pharmaceutical patents are the “classic” example of the tension between private rights and public good – and this dovetails quite nicely into another salient COVID-19 issue: the search for a vaccine.  However, it can be argued that patent exclusivity for pharmaceuticals is a necessary evil given the enormity of both R&D and clinical trials costs associated with getting a product onto the market. Moreover, while the respective definitions of “happy” may be somewhat different, a lifesaving drug sold under patent generally makes for both a happy patentee and a happy consumer/patient.

Another example – one not quite so easily reconciled, is that of cleantech. For instance, a patent for a “cleaner” method of manufacturing cement or battery technology. Clearly, it is in a patentee’s best interests to exploit the exclusivity conferred by the patent in working or licensing the invention. On the other hand, it is in society’s best interests that such an invention is placed immediately in the public domain. To generalise (perhaps unfairly), cleantech doesn’t invite the same R&D costs as pharmaceuticals. As such, it could be argued that the case of cleantech, society’s need may actually be greater than the patentee’s right – which is, of course, completely at odds with the original patent bargain.

ii)    Patent versus publish

A feature of the cleantech sector (although by no means unique to it) is the high level of industry-academia collaboration when it comes to R&D.  As will be appreciated, academics are under publication pressure and are often required to produce x-number of publications (journal articles, abstracts, oral presentations) each year (“publish or perish”) as part of their performance review.  Industry, on the other hand, is driven more by the prospect of obtaining monopoly rights via the patent system to capitalise on profit growth.

“Patent versus publish” is an age-old conundrum which, in my experience, is not all that well understood.  Many think it’s necessarily a case of one or the other.  It’s not – you can have both – on the simple condition that filing a patent application comes first (even if by just one day).

Although some countries have idiosyncratic grace period provisions that may, under certain circumstances still allow a patent application to be filed validly, these vary greatly from country-to-country and require resource expenditure (time/money) that may be better allocated elsewhere.

In short, why take the risk?  File a patent application first before proceeding via the traditional publication route.

iii)   Expedited examination platforms for cleantech patents

The national patent offices of several major jurisdictions have facilitated the expedited examination of applications relating to cleantech. For instance, the USPTO, UKIPO and IP Australia, among others, each now offer (or have offered) such a scheme. While these programs each have subtle differences, the fundamental principle is that a cleantech patentee has means to jump the queue with respect to “unclean” applications. In the case of small or start-up patentees, expedited examination may be attractive such that a granted patent is often required in order to attract investment. On the other hand, the associated legal costs may not have been budgeted for so early in the lifecycle of the patent. Moreover, the many companies who file patents for defensive reasons generally have less motivation to proceed via this route.

Expedited examination is an option, although not essential, for cleantech patentees.  As always, a decision to proceed or not to proceed should be based on a thorough consideration of all commercial/legal factors, made in conjunction with the best professional advice.

iv)   Other issues

There have been other recent developments toward establishing a more efficient cleantech community within the existing patent system. For instance, in 2010, WIPO launched the IPC Green Inventory – an online tool intended to assist users in identifying existing and emerging cleantech, as well as isolating potential commercial partners. The most recent iteration is simply named WIPO Green.

Further, certain other measures may be adaptable to cleantech. For example, a fair dealing defence, perhaps analogous to that found in copyright law is largely self-explanatory. However, it is worthwhile noting that the judicial parameters of “fair” would possibly invite a significant amount of otherwise-avoidable litigation.

Next, the patent pools model purports to facilitate the efficient trading of patent rights. In this respect, a significant impediment to any potential developer of cleantech has been the emergence of patent thickets which cover every foreseeable twist and turn along the path to a new technology; such thickets have arisen in respect of fuel cells, wind energy, and carbon sequestration technologies, to name but a few. Accordingly, money initially earmarked for cleantech R&D risks being siphoned off to pay for infringement opinions and cross-licensing arrangements.  Significantly, however, the various competition authorities have placed stringent conditions on such patent pools in recent years, which may have restricted their uptake and appeal.

Bringing all the pieces together

The intrinsic nature of cleantech means that whilst patenting is essential, it is nonetheless a somewhat imperfect fit.  During the initial R&D phase, IP will often be a cleantech company’s most valuable asset. Moreover, patenting creates opportunities for cross-licensing deals and strategic use to negotiate joint venture arrangements. Finally, patents can be instrumental in a cleantech company’s exit strategy, by way of going public or being acquired.

That said, the somewhat uneasy marriage between cleantech and the patent system has never been better reflected than in 2009, when patents (in combination with the closely related field of technology transfer) effectively torpedoed a global climate treaty being agreed at the United Nations Climate Change Conference (COP15) in Copenhagen.  Cleantech and patents need to be linked, but do not mesh easily.

The above discussion represents what is likely only the opening stanza in what is sure to be a fascinating period in patent law. Cleantech will continue to poke and prod the patent system in ways that were probably never envisaged – and it will be interesting to see if, when and how any changes eventuate so as to better accommodate “public” clean technologies within the “private” patent system. While the cynic may suggest that an agreement in Copenhagen would have materialised if the climate change issue was perceived as real, the pragmatist would likely counter that if a genuine fix was apparent from within a short, 1500-word article, it would have been adopted long before now.

Three takeaway tips

  • Interpret “cleantech” broadly. A “dirty” technology can still be “clean” if it’s cleaner than competitors’ existing technologies – it’s all relative.
  • To expedite or not to expedite (examination). There are pros and cons depending upon where a cleantech organisation is at legally, financially and commercially – one size certainly doesn’t fit all.
  • Patent versus publish. You can have both, provided filing a patent comes first (even by one day).

2020 – A World IP Day with a difference

In light of the coronavirus pandemic, and the need to keep everyone safe and well, WIPO will not organise any physical events this year, and encourages the World IP Day community to move celebrations to virtual channels – something most of us have had to get used to very quickly over the past few weeks.

David Hvasanov, PhD and Gareth Dixon, PhD

In recent years, IP “buzzwords” have included superconductors, gene patents, business methods and computer software.  Society’s ever-increasing environmental awareness now dictates that “cleantech” is the latest vogue.  The Australian Patent Office offers the facility to request expedited examination of any patent application if the applicant provides good reason (this may be as vague as “commercialisation”).  However, the Office singles out cleantech-related applications by not requiring a reason other than that the invention is in the (somewhat imperfectly-defined) area of “green [clean] technology (climate ready)” research.  In this article, we consider some of the pros and cons of proceeding toward accelerated patent grant in Australia for cleantech inventions.

Cleantech and the “patent bargain”

Unlike gene patents, business methods and computer software (each of which have been uniquely polarising) there is a general acceptance that clean technologies should be patentable.  The minority dissenters who argue that such technologies should be in the public domain appear to overlook the basic quid pro quo of the “patent bargain” – being that without the prospect of patent protection, researchers would have no incentive to develop such technologies in the first place.  In this respect, any patentability issues surrounding clean technologies are more closely akin to those experienced a quarter century ago in relation to superconductors – in other words, how can the patent system be poked and prodded in order to better accommodate these technologies?

How clean is “clean”?

Any special treatment for clean technologies of course first requires a standard definition of precisely how “clean” (or “green”) any new technology must be in order to qualify.  On the one hand, a technology that must be shown to mitigate an environmental problem or provide a solution sets the bar rather high – and excludes “net-red-relative-green” technologies that although “cleaner” than existing competitor technologies, may still cause some degree of environmental damage.  On the other hand, it could be argued that these technologies (for instance, a more environmentally-friendly method for manufacturing cement) are just as deserving.  Accordingly, at least in the patent world, the term “cleantech” appears to be interpreted fairly broadly.

Expedited examination for cleantech applications in Australia

Notwithstanding any posturing as to what is or isn’t properly “cleantech”, the Australian Patent Office offers to expedite the examination of patent applications on the grounds that it relates to clean technologies.  Of itself, this is nothing new – indeed, expedited examination has been offered for many years, irrespective of technology.  However, as a reason must be given in order to have examination expedited, this platform has largely been the domain of applicants wishing to expedite grant of their application with a view to commencing infringement proceedings as soon as possible thereafter – or those requiring a granted patent as a condition of obtaining investor funding.  At present throughputs, expedited examination typically saves the applicant around 12 months of waiting for a first examination report to issue – and the potential benefits are clear in this regard.  As such, literally checking a box asserting that an application relates to clean technology will be just as valid any reason typically employed in the past.  The Office then makes a fairly subjective assessment as to whether the technology is clean enough to qualify under the scheme.

Faster isn’t necessarily better…

On the other hand, proceeding in the “regular” manner and not applying for expedited examination provides an applicant with additional time in which to determine whether their invention is commercially viable; this is important on a cost-basis given that a decision to proceed with patent prosecution is sometimes akin to a “commitment to pay”.  Of course, as with everything in the patent game, how best to proceed is a delicate balancing act and will vary from applicant to applicant, country to country and technology to technology.

Claim scope and eventual validity

Another aspect that must be considered when deciding whether to request expedited examination of a cleantech patent application – especially in Australia, relates to claim scope.  Australian patent examiners frequently draw upon the prosecution history of any US or EP counterpart applications.  Accordingly, there is the potential to obtain relatively broad coverage in Australia by first requesting expedited examination – and relying on the possibility that the corresponding US/EP prosecutions are not yet significantly advanced.  Of course, this must be counterbalanced against the likelihood – and with it, expense, of later needing to file post-acceptance voluntary amendments to the Australian claims in order to keep them “valid” in view of prior art later uncovered elsewhere.  The facility to file divisional patent applications is another means of maintaining pendency, and with it, flexibility.

The international picture

Australia is not the only country to offer expedited examination for cleantech patent applications – indeed, the United Kingdom, United States, South Korea, Japan, China, Israel and Canada (amongst others) offer (or have offered in the recent past) such a platform.  Although the respective rules and eligibility criteria may be slightly different from those of Australia, the above-noted “pros and cons” are just as applicable in an international context.

There is evidence – both anecdotal and tangible, that patent applicants are making good use of the expedited examination platform.  For instance, the United Kingdom Intellectual Property Office has granted well over 100 patents under the Clean Channel Patent Examination Acceleration scheme, which was purported to reduce the average pendency of a UK patent application from around 36 months to less than eight.

Furthermore, in 2013, the International Centre for Trade and Sustainable Development published an empirical analysis of several fast-track examination programs. It concluded that such platforms for cleantech applications reduced the average grant time of a patent by up to 75%.  It further concluded there was strong demand for such programs, especially from SMEs (small-to-medium enterprises), and that fast-tracked patents were of good commercial value.

Cleantech and the Patent Prosecution Highway

Another way in which expedited examination of cleantech patents may be attractive is that it allows applicants to take advantage of the various Patent Prosecution Highway (“PPH”) agreements that exist between certain countries.  For instance, one may look to invoke the AU-US PPH by using a quickly-granted Australian cleantech patent as the basis for expedited examination in the USPTO.  However, anecdotal evidence suggests that proceeding via the dedicated route for cleantech patents is likely to be the quicker option.  Nonetheless, the various PPH mechanisms remain useful supplementary options for the expeditious grant of a cleantech patent in certain foreign jurisdictions.

So I’ve got a fast-granted Australian (cleantech) patent – now what?

A quickly-granted Australian patent is actually quite a powerful prosecution tool when it comes to our little corner of the world.  For instance, an Australian allowance opens up the GPPH route in Singapore and the modified examination procedure in Malaysia.  A fast-granted Malaysian or Singaporean patent in turn unlocks the ASPEC pathway, which includes Brunei Darussalam, Cambodia, Indonesia, Laos, Myanmar, the Philippines, Thailand and Vietnam (and Malaysia or Singapore, if not actioned earlier).  Net result: much of Asia-Pacific is taken care of with an absolute minimum of fuss and bother.  Of course, our attorneys are well-versed in managing this sort of filing program and the potential benefits, which include from our end, bulk purchasing power and compatible time zones should not be underestimated.

What about New Zealand?

Expedited examination is also offered in respect of New Zealand patent applications where “good and substantial reasons” exist (Reg.77(1)(b)) and where the request is accompanied by evidence in support of the request (Reg.77(2)).  Experience suggests that the evidentiary bar has been set rather high.  However, on the other hand, proving that an application relates to clean technology shouldn’t be especially onerous given that much of the “hard work” (IPC codes and the like) has been done already.

Any decision to request expedited examination in New Zealand should be offset against the fact that even if proceeding via the “regular” route, a first examination report typically issues from IPONZ within about 6 months.  Jumping through a few extra hoops in order to save only a couple of months wait time may not be to everyone’s taste.

Shelston IP’s cleantech team

In response to the increasing recognition being afforded to clean technologies throughout the patent world, Shelston IP has in place a “cleantech IP Team” comprising professional staff from varying scientific, engineering and legal backgrounds.  We are well placed to advise clients as to how best to prosecute their clean technologies by making best use of the various facilities available under the Australian and international patent systems.

Authored by Gareth Dixon, PhD

This article was published originally in the LexisNexis Australian Intellectual Property Law Bulletin, Volume 31, Number 6, pp.111-114 (2018), and is republished here with permission. The published article can be found here.

This article was has also been republished in Wolters Kluwer’s The Licensing Journal, January 2019; the republished article can be found here.

It is generally accepted that climate change cannot be redressed by means of existing technologies. “Cleantech” – technologies that may lessen, nullify or even reverse the environmental impact of an existing product or process is thereby a buzzword in many aspects of society – including patent law. However, what happens when a patented cleantech invention is of such outstanding public benefit that the patentee’s right to exclude others is arguably contrary to the interests of society? In such circumstances, the patent bargain does not fit well with the advancement of the species and gives rise to a real tension between the two.

Cleantech101 and IP101

Environmental consciousness – especially as it pertains to climate change is increasing exponentially throughout the world. Moreover, it is generally accepted that pollution cannot be stabilised with existing technologies.[1] “Cleantech”[2] – technologies that may lessen, nullify or even reverse the environmental impact of an existing product or process is a thereby a buzzword in many aspects of society – including patent law.[3]

The essential quid pro quo of the “patent bargain” is that in exchange for providing the public with a new invention, a patentee is afforded a twenty-year exclusive period in which to exploit it. This is “IP101” – and history has generally shown it to be sufficient inducement with which to stimulate inventive activity.

Whereas new inventions are typically patented with a view to profiting the patentee, some cross-over into the realm of also providing a great benefit to the public. However, what happens when an invention is of such outstanding public benefit that the patentee’s right to exclude others is arguably contrary to the interests of society? In such circumstances, the patent bargain does not fit well with the advancement of the species and gives rise to a real tension between the two.

Pharmaceutical patents are one example of this tension. However, it can be argued that patent exclusivity for pharmaceuticals is a necessary evil given the enormity of both RD&E and clinical trials costs associated with getting a product onto the market. Moreover, while the respective definitions of happy may be somewhat different, a lifesaving drug sold under patent generally makes for both a happy patentee and a happy consumer.

“Public” benefits versus “private” rights

Another example – one not quite so easily reconciled, is that of cleantech. For instance, a patent for a “cleaner” method of manufacturing cement. Clearly, it is in the patentee’s best interests to exploit the exclusivity conferred by the patent in working or licensing the invention. On the other hand, it is in society’s best interests that such an invention is placed immediately in the public domain. To generalise, cleantech doesn’t invite the same RD&E costs as pharmaceuticals. As such, it could be argued that the case of this cleantech, society’s need may actually be greater than the patentee’s right – which is, of course, completely at odds with the original patent bargain. At first glance, there appear two main ways in which this impasse may be reconciled.

First, governments may provide for a non-commercial use exception to infringement (NCUE), under which a third party is able to exploit a patented clean technology if it can be shown that their motives are not commercial in nature; and/or second, provide for a compulsory licensing regime allowing governments to commandeer patented clean technologies and exploit them for the good of the environment.

Of course, these alternatives – and indeed any other “altering” in favour of the public, erode a patentee’s basic right to exclusivity. Erode the right and you lessen the incentive to invent in the first place. Clearly, some measure of compensation is due. Perhaps the most obvious include making cleantech patents easier to obtain by, for instance, lowering the inventive step threshold; and/or making the effective life of cleantech patents longer than the standard twenty years.[4]

Unfortunately, neither of these measures is satisfactory. Lowering the bar on inventive step may result in more cleantech patents being granted at the lower end of the spectrum – but it would fail to adequately stimulate the high-end inventions that would more likely be subject to the above-suggested NCUE or compulsory licensing (and would be more likely to save the planet). Moreover, extending the patent term necessarily ignores the fact that much cleantech is likely to be short-lived or incremental in nature.

On this basis, there appears no obvious statutory tweak that would provide adequate compensation for a cleantech patent being effectively hijacked in the name of the public good.

Copenhagen 2009 – Things come to a head

This theoretical tension actually played out a few years ago in real life. At the Copenhagen Summit[5] of December 2009, China sought special exemptions so that it could exploit certain cleantech patents for hybrid cars without paying license fees. Acceding to the Chinese requests would have altered the patent bargain for the patentees, ultimately affecting their bottom lines – and threatening the future development of hybrid technologies. On the other hand, the environmental good that could be accomplished through making hybrid cars accessible to the Chinese population is staggering. In the alternative, pass on a license fee to consumers and you limit the uptake of the related cleantech, which will be ultimately to the detriment of the environment. Which answer is correct?

Of course, what China was asking for was the introduction of a compulsory licensing regime. However, the fact that a final binding agreement required the consensus of all countries party to the Copenhagen negotiations effectively sounded the death-knell for any form of compulsory licensing based on the “government takes what it wants” model.

In cases where no solution is apparent, it is commonplace to call for government intervention. The simplest way in which cleantech patents may adequately benefit both the patentee and the public is for the relevant government/s to step in and pay an appropriate royalty in exchange for its compulsory license. However, it is improbable that any government would wish to match the free market value of a breakthrough cleantech invention. This again undermines the incentive to invent – or alternatively, provides almost a reverse-incentive to invent mediocrity that will not risk being subjected to a compulsory license. An alternative is that cleantech investors simply alter their focus – their RD&E dollar is directed elsewhere; a “eureka-type” invention in pharmaceuticals could net billions on the free market.

A non-commercial use exemption?

The NCUE is perhaps best considered an adaptation of the experimental use exception (EUE) to patent infringement. It is widely accepted throughout much of the world that experimenting with a patented invention is permissible to the extent that such actions are not commercial in nature. However, any NCUE must necessarily go beyond mere experimentation and provide for actual use of the patented product or process. This of course, conflicts with TRIPs,[6] which confines exceptions to a patentee’s rights to circumstances that are “limited” and do not “unreasonably conflict with a normal exploitation of the patent”. For instance, if one vendor offers a product or service for free (or a nominal cost-neutralising fee) – and another charges a premium for the exact same thing, who’s going out of business first?

Another clear drawback of the NCUE is that it could become susceptible to abuse. With the EUE, the differing social, political and economic climate of individual countries necessitates a unique line in the sand as to precisely where experimentation ends and exploitation begins. However, with any proposed NCUE, presumably all that would need to be shown is a zero on an alleged infringer’s balance sheet – and there are various ways and means to this end.

Notwithstanding, the principle shortcoming of the NCUE has already been alluded to above. A patentee cannot make a return on their investment where another is allowed to undersell them in the market. Moreover, government compensation to redress this disparity is probably more readily administered through a compulsory licensing regime than via the NCUE. On this basis, the NCUE is ultimately an unworkable ideal.

Other measures

While somewhat less extreme than the measures proposed above, there have been other recent developments toward establishing a more efficient cleantech community within the existing patent system. For instance, in 2010, WIPO[7] launched the IPC Green Inventory[8] – an online tool intended to assist users in identifying existing and emerging cleantech, as well as isolating potential commercial partners. The most recent iteration is simply named WIPO Green.[9]

Further, the national patent offices of several major jurisdictions have facilitated the expedited examination of applications relating to cleantech. For instance, the USPTO,[10] UKIPO[11] and IP Australia,[12] among others, each now offer (or have offered) such a scheme. While these programs each have subtle differences, the fundamental principle is that a cleantech patentee now has means to jump the queue with respect to “unclean” applications. In the case of small or start-up patentees, a granted patent is often required in order to attract investment. On the other hand, the associated legal costs may not have been budgeted for so early in the lifecycle of the patent. Moreover, the many companies who file patents for defensive reasons generally have less motivation to proceed via this route.

As highlighted in the ACIP Review,[13] certain other measures may be adaptable to cleantech. For example, a fair dealing defence, largely analogous to that found in copyright law[14] is largely self-explanatory. However, it is worthwhile noting that this would necessarily overlap to some degree with the NCUE – and that the judicial parameters of “fair” are likely even more of a minefield than the proposed zero profit criterion for the NCUE.

Next, the patent pools model purports to facilitate the efficient trading of patent rights. In this respect, a significant impediment to any potential developer of cleantech has been the emergence of patent thickets which cover every foreseeable twist and turn along the path to a new technology; such thickets have arisen in respect of fuel cells, wind energy, and carbon sequestration technologies. Accordingly, money initially earmarked for cleantech RD&E risks being siphoned off to pay for infringement opinions and cross-licensing arrangements.

One such pool is the CleanXchange,[15] based on the Creative Commons[16] project for copyright. A variant is the Eco-Patent Commons,[17] which requires members to forego suing other members who exploit commons patents for environmentally-beneficial uses. However, the various competition authorities have placed stringent conditions on such patent pools in recent years, which could be argued to have restricted their uptake and appeal.

While it appears – at least for now – as though cleantech may be a square peg within the round hole of the existing patent system, studies have suggested that any barriers patents provide to the adoption of cleantech are not insurmountable.[18] For instance, a study of the solar and biofuels sectors revealed that each is sufficiently competitive as to allow developing countries to take advantage of the respective technologies without paying crippling licensing fees.[19]

A square peg in a round hole?

As discussed above, cleantech RD&E may be cheap only by comparison with pharmaceuticals. This hints at the desirability of maintaining the regular patent bargain for cleantech, given that during the initial RD&E phase, IP will often be a cleantech company’s most valuable asset. Moreover, patenting creates opportunities for cross-licensing deals and strategic use to negotiate joint venture arrangements. Finally, patents can be instrumental in a cleantech company’s exit strategy, by way of going public or being acquired. The argument therefore, is that any diminution of a cleantech patentee’s rights may amount to a distortion of the free-market principles that are a staple of the various competition authorities. However, the counterargument is likely just as applicable.

For completeness, it is also worth noting that patents weren’t the only spanner in the works of a global climate treaty in Copenhagen; the related field of technology transfer appears to have been equally implicated.[20] To a large extent, improving technology transfer will ultimately be reliant upon the incentives offered for the sharing of cleantech, which leads immutably to the same issues faced – and ultimately unaddressed in respect of cleantech patents.

The above discussion represents what is likely only the opening stanza in what is sure to be a fascinating period in patent law. Cleantech will continue to poke and prod the patent system in ways that were probably never envisaged – and it will be interesting to see if, when and how any changes eventuate so as to better accommodate “public” clean technologies within the “private” patent system. While the cynic may suggest that a Copenhagen Agreement would have materialised if the pollution issue was perceived as real, the pragmatist would likely counter that if a genuine fix was apparent from within a 2000-word article, it would have been adopted long before now.

Three takeaway tips

  • Interpret “cleantech” broadly: A “dirty” technology can still be “clean” if it’s cleaner than competitors’ existing technologies – it’s all relative.
  • To expedite or not to expedite (examination): There are pros and cons depending upon where your client is at legally, financially and commercially – one size certainly doesn’t fit all.
  • Cleantech is a “feelgood” industry: Combining making a living with cleaning up the planet is a win-win situation.

[1]See, e.g., Wiley’s Remediation Technologies Handbook: Major Contaminant Chemicals and Chemical Groups, Jay H. Lehr, Wiley-Interscience, 2004; and Handbook of Pollution Control Processes, Robert Noyes, Noyes Publications, 1991.

[2]a.k.a., “greentech”, “envirotech”, “environmentally sound technologies (ESTs)”, etc.

[3]See, e.g., http://www.inhabitat.com/2010/04/29/green-techs-big-patent-problem

[4]Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”), Article 33.

[5]United Nations Climate Change Conference, Copenhagen, Denmark, 7-18 December 2009, incorporating the 15th Conference of the Parties (COP15) to the United Nations Framework Convention on Climate Change and the 5th Meeting of the Parties (MOP5) to the Kyoto Protocol.

[6]Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”), Article 30.

[7]The World Intellectual Property Organisation, see, http://www.wipo.int

[8]http://www.wipo.int/classifications/ipc/en/green_inventory/

[9] http://www.wipo.int/policy/en/climate_change/

[10]United states Patent and Trademark Office, see, http://www.uspto.gov/patents/init_events/green_tech.jsp

[11]The United Kingdom Intellectual Property Office, see, https://www.gov.uk/guidance/patents-accelerated-processing#green-channel

[12]https://www.ipaustralia.gov.au/patents/applying-patent/standard-patent-application-process/examination-standard-patent/expedited-examination-standard-patents

[13]The Advisory Council on Industrial Property, “Patents and Experimental Use”, October 2005, see, https://www.ipaustralia.gov.au/sites/g/files/net856/f/acip_final_report_patents_and_experimental_use_archived.pdf

[14]Copyright Act 1968 (Cth), ss.40-43(2) and 103A-C.

[15]https://en.wikipedia.org/wiki/GreenXchange

[16]http://creativecommons.org

[17]http://www.corporateecoforum.com/welcome-to-the-eco-patent-commons/

[18]See, e.g., https://www.theglobeandmail.com/report-on-business/rob-commentary/patents-are-no-barrier-to-innovation-despite-the-myths/article29663542/

[19]John H. Barton, World Intellectual Property Organisation Magazine, March 2009, see, http://www.wipo.int/wipo_magazine/en/2009/02/article_0005.html

[20]See, e.g., http://www.dw.com/en/assessing-the-role-of-patents-in-combating-climate-change/a-6299080

Authored by Gareth Dixon, PhD

Australian start-ups are often cash-poor – and IP costs money. We get that. To that end, Shelston IP’s “Cleantech” team is constantly on the lookout for ways in which our local start-up community can combine the “necessary evil” of expenditure on intangible assets with funding sources specifically dedicated to such purposes. With ARENA, we may just have found one.

What is ARENA?

One of the most critical steps for any start-up is finding the capital to successfully bring a new product to market. This is especially true for renewable energy projects which typically require significant R&D expenditure to produce a viable product and test it on a commercially-relevant scale. The Australian Government has recognised this entry barrier and has established the Australian Renewable Energy Agency (“ARENA”) to assist Cleantech innovators in bringing their ideas to fruition. ARENA funds projects that advance renewable energy technologies along the innovation chain, from the early research stage in the lab to the later demonstration stage in the field.

Criteria for eligibility

Successful applicants for ARENA funding must be able to demonstrate that their project satisfies the following three fundamental criteria:

  1. The project is innovative or novel;
  2. Has a clear pathway to commercialisation; and
  3. Has the ability to unlock future investment.

Establishing these points helps validate the project as one that is potentially commercially-viable and therefore worthy of taxpayers’ support.

Priority for ARENA funding is given to applicants based on the alignment of their project objectives with ARENA’s investment priorities. The four current investment priorities for ARENA are:

  • Delivering secure and reliable electricity; including grid stability technologies that could balance the grid with higher shares of renewable energy, new ways to evolve electricity grids to integrate more distributed energy sources, and projects that provide knowledge and information relevant to deliberations on energy policy, market rules, regulation or network practices and procedures.
  • Accelerating solar PV innovation; including new technologies and tools to reduce installed costs of PV systems, improve system reliability and longevity and develop materials for new markets or applications as well as opportunities to translate thee ideas into PV manufacturing supply chains.
  • Improving energy productivity; accelerated improvements in energy productivity and adoption of renewable energy by industry, innovative building technology, improved energy productivity in the transport sector, and opportunities to improve energy productivity and integrate renewable energy by optimising value chains across sectors.
  • Exporting renewable energy; including innovative technologies to improve cost and efficiency of using renewable energy to supply export value chains and feasibility studies for first-of-a-kind projects that use renewable energy to supply export value chains.

How can patents help Australian start-ups obtain ARENA funding?

Establishing that a project involves novel and innovative ideas is the first fundamental criterion for ARENA funding eligibility. These ideas form a basis for the other two fundamental criteria in that they provide a point of distinction and advantage in the marketplace, opening the door to future investment and highlighting a pathway to commercialisation. The novel and innovative aspects of the project can often be embodied as intellectual property, which are, in effect, an asset (and indeed for many start-ups, the only asset). Intellectual property can be documented and protected through registrable rights such as patents for inventions.

Seeking patent protection through a patent application therefore helps demonstrate the novelty and inventiveness of an idea by documenting the intellectual property assets relating to a project from which investment can be attracted and a commercialisation pathway developed. As a bonus, the investment in the intellectual property can be recouped by funding obtained through a successful ARENA funding application.

Shelston IP specialise in creating and developing IP portfolios, turning ideas into intellectual assets for start-ups, which can be used as commercial tools such as in applications for ARENA funding.

If you would like more information on how Shelston IP can assist in relation to obtaining ARENA funding, please contact Shelston IP’s dedicated Cleantech team or the authors below. The ARENA website can be found here.

Shelston IP’s Cleantech team

In response to the increasing recognition being afforded to clean technologies throughout the patent world, Shelston IP has in place a “Cleantech IP Team” comprising professional staff from varying scientific, engineering and legal backgrounds.  We are well placed to advise clients as to how best to prosecute their clean technologies by making best use of the various facilities available under the Australian and international patent systems. Shelston IP’s Cleantech IP Team and their capabilities can be viewed here.

Authored by Gareth Dixon, PhD

In recent years, IP “buzzwords” have included superconductors, gene patents, business methods and computer software. Society’s ever-increasing environmental awareness now dictates that “cleantech” is the latest vogue. The Australian Patent Office offers the facility to request expedited examination of any patent application if the applicant provides good reason (this may be as vague as “commercialisation”). However, the Office singles out cleantech-related applications by not requiring a reason other than that the invention is in the (somewhat imperfectly-defined) area of “green [clean] technology (climate ready)” research. In this article, we consider some of the pros and cons of proceeding toward accelerated patent grant in Australia for cleantech inventions.

Cleantech and the “patent bargain”

Unlike gene patents, business methods and computer software (each of which have been uniquely polarising) there is a general acceptance that clean technologies should be patentable.  The few dissenters who argue that such technologies should be in the public domain appear to overlook the basic quid pro quo of the “patent bargain” – being that without the prospect of patent protection, researchers would have no incentive to develop such technologies in the first place.  In this respect, any patentability issues surrounding clean technologies are more closely akin to those experienced a quarter century ago in relation to superconductors – in other words, how can the patent system be poked and prodded in order to better accommodate these technologies?

How clean is “clean”?

Any special treatment for clean technologies of course first requires a standard definition of precisely how “clean” (or “green”) any new technology must be in order to qualify.  On the one hand, a technology that potentially mitigates an environmental problem or provides a solution sets the bar rather high – and excludes “net-red-relative-green” technologies that although “cleaner” than existing competitor technologies, may still cause some degree of environmental damage.  On the other hand, it could be argued that these technologies (for instance, a more environmentally-friendly method for manufacturing cement) are just as deserving.  Accordingly, at least in the patent world, the term “cleantech” appears to be interpreted fairly broadly.

Expedited examination for cleantech applications in Australia

Notwithstanding any posturing as to what is or isn’t properly “cleantech”, the Australian Patent Office offers to expedite the examination of patent applications on the grounds that it relates to clean technologies.  Of itself, this is nothing new – indeed, expedited examination has been offered for many years, irrespective of technology.  However, as a reason must by given in order to have examination expedited, this platform has largely been the domain of applicants wishing to expedite grant of their application with a view to commencing infringement proceedings as soon as possible thereafter – or those requiring a granted patent as a condition of obtaining investor funding.  At present throughputs, expedited examination typically saves the applicant around 12 months of waiting for a first examination report to issue – and the potential benefits are clear in this regard.  As such, literally checking a box asserting that an application relates to clean technology will be just as valid any reason typically employed in the past.  The Office then makes a fairly subjective assessment as to whether the technology is clean enough to qualify under the scheme.

On the other hand…

On the other hand, proceeding in the “regular” manner and not applying for expedited examination provides an applicant with additional time in which to determine whether their invention is commercially viable; this is important on a cost-basis given that a decision to proceed with patent prosecution is sometimes akin to a “commitment to pay”.  Of course, as with everything in the patent game, how best to proceed is a delicate balancing act and will vary from applicant to applicant, technology to technology.

Claim scope and eventual validity

Another feature that must be considered when deciding whether to request expedited examination of a cleantech patent application – especially in Australia, relates to claim scope.  Australian patent examiners frequently draw upon the prosecution history of any US or EP counterpart applications.  Accordingly, there is the potential to obtain relatively broad coverage in Australia by first requesting expedited examination – and relying on the possibility that the corresponding US/EP prosecutions are not yet significantly advanced.  Of course, this must be counterbalanced against the likelihood – and with it, expense, of later needing to file post-acceptance voluntary amendments to the Australian claims in order to keep them “valid” in view of prior art later uncovered elsewhere.  The facility to file divisional patent applications is another means of maintaining pendency, and with it, flexibility.

The international picture

Australia is not the only country to offer expedited examination for cleantech patent applications – indeed, the United Kingdom, United States, South Korea, Japan, China, Israel and Canada (amongst others) offer (or have offered in the recent past) such a platform.  Although the respective rules and eligibility criteria may be slightly different from those of Australia, the above-noted “pros and cons” are just as applicable in an international context.

There is evidence – both anecdotal and tangible, that patent applicants are making good use of the expedited examination platform.  For instance, the United Kingdom Intellectual Property Office has granted well over 100 patents under the Clean Channel Patent Examination Acceleration scheme, which is purported to reduce the average pendency of a UK patent application from around 36 months to less than eight.

Furthermore, in 2013, the International Centre for Trade and Sustainable Development published an empirical analysis of several fast-track examination programs. It concluded that such platforms for cleantech applications reduced the average grant time of a patent by up to 75%.  It further concluded there was strong demand for such programs, especially from SMEs, and that fast-tracked patents were of good commercial value.

Cleantech and the Patent Prosecution Highway

Another way in which expedited examination of cleantech patents may be attractive is that it allows applicants to take advantage of the various Patent Prosecution Highway (“PPH”) agreements that exist between certain countries.  For instance, one may look to invoke the AU-US PPH by using a quickly-granted Australian cleantech patent as the basis for expedited examination in the USPTO.  However, anecdotal evidence suggests that proceeding via the dedicated route for cleantech patents is likely to be the quicker option.  Nonetheless, the various PPH mechanisms remain useful supplementary options for the expeditious grant of a cleantech patent in certain foreign jurisdictions.

Shelston IP’s cleantech team

In response to the increasing recognition being afforded to clean technologies throughout the patent world, Shelston IP has in place a “Cleantech IP Team” comprising professional staff from varying scientific, engineering and legal backgrounds.  We are well placed to advise clients as to how best to prosecute their clean technologies by making best use of the various facilities available under the Australian and international patent systems.

Authored by Gareth Dixon, PhD