Softbank, a Japanese telecommunications and internet company, recently formed a joint venture with U.S. fuel cell maker Bloom Energy to sell electricity from Bloom’s natural gas fuel cells in Japan.
A theme of this Greentech Media article about the JV is that Japan is “energy-poor” after the almost complete shutdown of its nuclear energy program. SoftBank believes Bloom’s fuel cells are a perfect fit for the country.
The article quotes the companies’ press release, which notes “a significant electrical power deficit in Japan” and a recent increase in energy imports to Japan. The article also observes that the country’s solar industry is trying to fill the gap.
All of this got me thinking about patenting green technologies in Japan.
Initially, I was curious whether Bloom owns any Japanese patents for its fuel cell technology. The Greentech Media article says the JV with SoftBank is Bloom’s “first foray” into international markets.
Indeed, a search of a couple of international patent databases does not turn up any Japanese patents or published applications in the name of Bloom Energy. Bloom does own a number of international, or PCT, patent applications, which, depending on their priority dates, may still be eligible for filing in Japan.
But filing a patent application in Japan is expensive. Unlike the U.S. Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) does not allow any free claims; it charges for each claim. In addition, translation costs can be very high for technical documents such as patent applications.
Factor in the cost of retaining a Japanese law firm for prosecuting the application, translating and responding to office actions, etc., and the total cost of obtaining a Japanese patent can set you back $15-20K or more.
JPO does have a green technology fast track program should you wish to expedite examination of your patent application. However, the program is fairly burdensome.
To be admitted to the program the applicant must (1) submit a brief description of the invention explaining that the claimed invention reduces energy consumption or carbon dioxide emissions, and (2) conduct a prior art search, disclose the prior art, and submit an explanation comparing the invention to the prior art.
The search and explanation requirement shifts what would typically be the JPO patent examiner’s burden to the applicant. Thus, the applicant has to pay its patent attorney to do substantial additional work, increasing the cost of the patent application.
Moreover, the comparative prior art explanation submission is analogous to the Examination Support Document (ESD) required for the USPTO’s Petition to Make Special for ordinary expedited examination.
In addition to the added expense, the ESD has been dubbed the “Express Suicide Document” because of the heightened risk of inequitable conduct applicants face based on the representations made in the ESD. The comparative prior art explanation submission for the JPO green patent fast track program could expose the applicant to similar risks.
While Bloom is getting in, it and other green tech patent applicants face a costly and perhaps difficult process to obtain patents in Japan.
Eric Lane is a patent attorney at McKenna Long & Aldridge LLP in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at elane@mckennalong.com
