Introduction
Climate change mitigation technology-related patent analytics
Pursuing climate change mitigation technology-related patent protection
Comment
With the Paris climate agreement having recently come into effect, climate change mitigation technologies have been the focus of widespread discussion and debate. The Canadian IP Office (CIPO) has added to the conversation in its IP Canada Report 2016, which includes a spotlight previewing its ongoing analytics study on Canadian climate change mitigation-related patent filings. CIPO's data is not limited to patent filings in Canada, and it is clear from the study that Canadian climate change mitigation innovators are pursuing patent protection both at home and abroad. Measures put in place by CIPO and many other national IP offices to fast track such 'green' patent applications reflect the increasing importance attributed to this sector of the economy.
Climate change mitigation technology-related patent analytics
The key findings in CIPO's spotlight show that Canadian innovators are active in virtually every area of climate change mitigation. This finding is consistent with a 2009 Chatham House report which ranked Canada as a top 10 country based on patent filings relating to wind, photovoltaics, biomass-to-energy, concentrated solar power, cleaner coal and carbon capture technologies. CIPO's more recent data set makes clear that Canadian innovators are continuing to advance the state of the art across the climate change mitigation spectrum. The spotlight also provides an indication of Canada's relative specialisation in various climate change mitigation areas by normalising Canadian patent filing data with a so-called 'technological advantage index'. The figure identifies carbon capture as the area in which Canadian innovation is most concentrated. While this finding is to be expected in view of the applicability of carbon capture technology to Canada's traditional energy sector, this will be an interesting metric to follow given that numerous Canadian innovators are moving towards commercialisation in various sub-sectors of the carbon capture space.
Pursuing climate change mitigation technology-related patent protection
In an effort to foster investment and expedite the commercialisation of climate change mitigation technologies, CIPO and other national IP offices have put measures in place to prioritise the prosecution of 'green' patent applications. As a result, innovators may have options for fast tracking their applications through to grant at little or no extra cost. These measures are proving very effective, with fast-track examination outpacing ordinary examination by between 42% and 75% across participating IP offices.
Canada is widely considered a favourable jurisdiction for fast tracking patent applications directed to environmentally friendly technologies, due to relatively liberal eligibility rules and minimal formal requirements. With respect to eligibility, the Patent Rules simply require that applicants submit a declaration stating that their application relates to a technology "the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources".(1) There is no fee for expediting examination in this manner and there are no limits on the number or type of claims allowed. As an alternative, applicants may also expedite examination in Canada by requesting 'special orders', which requires payment of a nominal government fee. Such special orders have historically been obtained without difficulty and are not restricted to green technology. CIPO's service standards are the same, regardless of which method is used to qualify for expedited prosecution. According to CIPO, applicants can expect to receive a substantive office action less than two months after filing a request for examination or a response to an examiner's report.
The national IP offices of many other jurisdictions have implemented comparable green patent fast-track programmes. However, while the potential for expedited prosecution across multiple jurisdictions can provide considerable benefits for climate change mitigation technology innovators, taking advantage of them is not always straightforward due to a lack of harmonisation. Indeed, programme eligibility rules vary considerably between offices, with little consensus as to what qualifies as a 'green' technology. At one end of the spectrum, the IP offices of Australia and the United Kingdom have relatively liberal eligibility requirements similar to those touched on above with respect to CIPO. On the other end of the spectrum is South Korea, which limits eligibility for its fast-track programme to renewable energy technologies either that are government funded or accredited or that have received 'green certification' under local environmental laws. Brazil, China, Japan, Israel and the United States fall somewhere in the middle in terms of the restrictions placed on the technology classes permitted. In addition to various eligibility rules, fast-track programmes have various cost structures and formal requirements, including limits on the number and type of claims permitted. The Japanese Patent Office is notable in this respect, as it charges fees on a per-claim basis and requires that applicants conduct prior art searches and submit comparisons between claimed inventions and the closest prior art.
Developing a coherent prosecution strategy to navigate the various eligibility rules and formal requirements of multiple fast-track programmes can be complex and often requires the preparation of jurisdiction-specific claim sets and remarks.
For further information on this topic please contact Houston Brown at Smart & Biggar/Fetherstonhaugh's Ottawa office by telephone (+1 613 232 2486) or email ([email protected]). Alternatively, contact James Jun Pan at Smart & Biggar/Fetherstonhaugh's Toronto office by telephone (+1 416 593 5514) or by email ([email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
Endnotes
(1) Please see here.