As readers of this blog are aware, there are a number of patent offices worldwide that currently offer expedited examination regimes for patent applications directed to inventions that promise to deliver environmental benefits.
As chronicled by this blog, the United Kingdom Intellectual Property Office (UKIPO) has had such a program in place since May 2009.
So how has the program performed as it approaches two years in force? This two-part post will attempt to answer this question, after providing some background about the UKIPO’s program.
The UKIPO’s “Green Channel” is a no-fee added service offered by the UKIPO for accelerated prosecution of patent applications directed to inventions with alleged environmental benefits. Any pending application is eligible for the program, assuming the applicant complies with the minimal requirements for inclusion.
Depending on the prosecution aspects the applicant chooses to accelerate, the UKIPO’s “Green Channel” could result in issued patents in as little as nine months. The regular pathway to an issued patent is estimated to average between two and three years in the UKIPO.
The UKIPO does not guarantee, of course, if and when applications in the “Green Channel” will issue, but rather affords applicants the option of accelerating some or all of the prosecution process for “green” inventions (see Green Channel FAQ here).
As set forth below, the actual requirements for inclusion in the program are straightforward and designed to encourage participation.
There is no separate petition process for inclusion in the Green Channel, in contrast to the USPTO’s Green Technology Pilot Program. Applicants do not even have to file a form to have their pending applications considered under the Green Channel; a written request pointing out which aspects of the prosecution process the applicant wishes to accelerate and how the invention has an environmental benefit suffices.
The applicant can choose to accelerate any or all of the following prosecution process aspects: Search, Combined Search and Examination, Publication, and/or Examination.
With respect to the “environmental benefit” prong of the written request, the Green Channel as set up by the UKIPO recognizes that environmental benefits can be found in inventions of all types, and accordingly does not limit participation on the basis of technology areas or IPC classification. Nor does an applicant need to demonstrate that the invention meets any specific environmental standard.
Having an application drawn to an invention in an established “green” technology area, will, however, make the showing of environmental benefit in the applicant’s written request more straightforward. The UKIPO has indicated that in such technology areas, a “simple statement is likely to be sufficient.”
For inventions with less obvious environmental benefits, “a more detailed explanation is likely to be necessary to explain how the invention has an environmental benefit”, and the applicant’s written request should endeavor to meet that standard. While the UKIPO “will not conduct any detailed investigation into these assertions”, it reserves the right to “refuse requests if they are clearly unfounded.”
In all cases, participation is by applicant request, however, so even applications directed to inventions in established green technology areas, e.g. solar panels, are not automatically moved into the Green Channel by the UKIPO.
Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP. Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate. Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.
