Readers of this Bulletin will doubtless be aware that "green" technology – also know as "cleantech" - is the new buzzword that promises much for our environment. Innovation, the very essence of an economy for the jobs and wealth it creates, is often stifled by patent systems that are slow to respond to changes in the technology they seek to protect. Several patent offices worldwide, most notably in Australia, the United Kingdom, the United States, Israel, Japan and South Korea, have been quick to recognize this and have begun "fast tracking" green patent applications through examination, the aim of which is to fuel innovation and create jobs in flagging markets.
In a welcome move earlier this month, the Canadian Intellectual Property Office (CIPO) implemented The Rules Amending the Patent Rules ("Amended Rules") to permit expedited examination of patent applications for green technologies in the hope that they will be whisked from patent pending status to patent granted status. The objective is to secure funding, create businesses and bring green technology to market sooner.
The Amended Rules include newly added paragraph 28(1)(b), which lays out the uncomplicated criteria for participation in the fast tracking process. The applicant merely files a declaration with the Commissioner of Patents that the patent application "relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources". Unlike the "special order" provisions for advanced examination that the Patent Act also provides, no additional fees are needed and the applicant need not state that its rights would be prejudiced if the application does not issue to patent sooner rather than later. The CIPO criteria are a good balance, which fall somewhere between the United Kingdom's broad, catch-all definition of anything that "relates to green or environmentally friendly technology" and the United States' overly restrictive approach, which these patent offices are using.
Unfortunately, innovators hoping to bypass the strict criteria for patentability will be disappointed. While fast tracking will hasten issuance of a first office action, it will not make it easier to obtain a patent; applications will still be subject to the same scrutiny their non-fast track counterparts endure.
While all of this aims to encourage established industry to invest in green technology, and help start-ups and small-to-medium sized companies protect and build a patent portfolio earlier to attract investors, it has raised concerns among some patent practitioners. For example, the declaration might be open to abuse by applicants who falsely claim eligibility to participate, leading to a host of potentially invalid patents. CIPO's position on this is that the Amended Rules in conjunction with the existing legislative framework already provide adequate tools to efficiently address this. Another more logistical problem concerns what many see as a potential flood of new applications which may threaten to overwhelm the CIPO staff that is already at full capacity. These concerns although real are small compared to the positive impact these changes will undoubtedly have on the Canadian economy.