Green IPOs: Accelerating Prosecution of Green Tech Patent Applications Part I

Many Intellectual Property (IP) offices around the globe recognise the importance of environmentally friendly innovation, and have launched a variety of policies and programs to facilitate innovation in the green tech space [1]. However, it can be difficult to find specific information on what is on offer, especially when multiple jurisdictions are of interest. If you consider your company to be a green tech innovator, or if you are generally interested in the sector, read on!

One hurdle that has been recognised as a barrier to green tech applicants is the long time periods associated with the patent application process. To combat this, some IP offices have created specific programs by which prosecution on green patent applications can be accelerated [1] [2] [3].  This article is the first in a series covering what green tech accelerated prosecution schemes are available and how to access them.

Accelerated Prosecution Schemes

United Kingdom Intellectual Property Office (UKIPO) – UK

The UKIPO offers a “Green Channel” for patent applications where the invention has an environmental benefit. No particular restrictions are placed on what constitutes ‘environmental benefit’. The service is available to any patent applicant who makes a reasonable assertion that the invention has some environmental benefit, and the UKIPO does not conduct any detailed investigation regarding the assertions made; accordingly, inventions with simply environmental benefits (e.g. a solar panel or wind turbine) may only require a simple accompanying statement whereas a less straight-forward benefit (e.g. a manufacturing process that requires less energy) is likely to need more explanation [4].

Applicants who wish to make use of the scheme should make a request in writing, indicating the following:

1. How their application is environmentally friendly, and
2. Which of the following actions they wish to accelerate:
   1. search,
   2. examination,
   3. combined search and examination, and/or
   4. publication [5].

As an additional benefit, any published application or granted patent that has been accelerated under the Green Channel is published in a database [6]; companies may find this helpful for publicising green innovations and/or attracting investment.

United States Patent and Trademark Office (USPTO) – USA

After the success of the success of the USPTO’s Green Technology Pilot Program in 2012 [3], the USPTO has launched a new Climate Change Mitigation Pilot Program for environmentally friendly applications. Under the pilot program, utility patent applications that qualify for the program may have their first Office Action expedited [7].

In order for a utility patent application to qualify for the program, the application should contain one or more claims to a product or process that mitigates climate change by doing one of the following:

1. remove greenhouse gases already present in the atmosphere,
2. reduce and/or prevent additional greenhouse gas emissions, and/or
3. monitor, track, and/or verify greenhouse gas emissions [8].

The program also stipulates various administrative requirements for applications taking part in the program, a list of which is available on the USPTO website [8]. In order to take part in the program, applicants should file an electronic form requesting to take part in the program either on entry into the national phase (for international applications) or within 30 days of the filing date or entry date of the application. There is no official fee associated with using this service [8].

It should be noted that this is a temporary program;  the USPTO will accept petitions for accelerated processing under this program until 7 June 2027, or the date when a total of 4,000 applications have been granted special status under this program, whichever occurs earlier. As of 25 July 2023, 326 applications have been granted special status under the program [8].

Japanese Patent Office (JPO) – Japan

The JPO operates an accelerated examination and accelerated appeal examination system, where applicants can request accelerated examination for applications and appeals falling within certain criteria. One such criteria is that the application is a “Green-technology related application”, which is defined by the JPO as applications that intend to obtain a patent for “a kind of invention that has an energy-saving effect and contributes to CO2 reduction” [9].

Applicants who want to make use of the system should make a written request for accelerated examination/appeal, providing a short description that explains that the claimed invention has an advantage in reducing consumption/reducing CO2. The applicant should also conduct a prior art search and provide the JPO with the results of the search and a comparison of the claimed invention with the prior art [2] [9].  If the applicant does not have an address or domicile in Japan, the request will need to be made through a Japanese representative [9].

Requesting accelerated examination of appeal for green-technology applications at the JPO does not incur any additional official fees [9].

China National Intellectual Property Administration (CNIPA) – China

CNIPA offers prioritized examination for patent application or re-examination cases where “energy conservation and environmental protection are involved” [10]. Prioritized examination is available for patent applications undergoing substantive examination, applications for a utility model or design, re-examination of a patent application for an invention/utility model/design, and invalidation of a patent for an invention/utility model/design [11].

There is no official fee associated with requesting prioritized examination, and both Chinese and non-Chinese applicants are eligible to make a request [12]. Applicants who wish to request prioritized examination at CNIPA should provide the following:

• a priority exam request,
• copies of any known prior art or available design information,
• a statement regarding why the application is relating to energy conservation or environmental protection, and
• approval by state council or provincial IP office [12].

If the request is approved, accelerated patent applications for inventions should receive a first Office Action within 45 days, and a final decision provided within one year. For patent applications for utility models and designs, a final decision should be issued within 2 months. For patent re-examination cases, a final decision should be issued within 7 months. For invalidation cases of inventions and utility models a final decision should be issued within 5 months, and for invalidation cases of designs a final decision should be issued within 4 months [11].

Korean Intellectual Property Office (KIPO) – Republic of Korea

Patent applications directly relating to green technology are entitled to expedited examination at the KIPO under the Framework Act on Carbon Neutrality. Patent applications and utility model applications at the KIPO may be eligible for accelerated examination if they fall under one of the following categories:

1. the applicant is a business which is confirmed as a green-specialised business under the Act,
2. the applicant has been granted subsidies under the Act,
3. the applicant resides within a green technology or green industrial agglomeration and complex established under the Act, and/or
4. the application is certified or financially supported in conjunction with other government policies [13].

As a result of the above category requirements, the number of applicants that are eligible to make use of accelerated processing for green applications at the KIPO is significantly more restricted than at other IP offices that offer similar schemes.

The application itself should also be directed to a green technology, and applicants requesting accelerated examination should provide a statement as to why the filed invention is validly directed to green technology; however, the definition of green technology provided by the KIPO is broad and inventions are to be considered green technology unless there are grounds to deny that the filed inventions are practically directed to technology that minimizes emissions of greenhouse gases and pollutants by efficiently using and saving energy and resources [13].

Conclusion

Thus concludes part one of this run-through of green tech accelerated prosecution schemes. In the next instalment of this series, we will look at accelerated processing schemes available in: Canada, Australia, Brazil, Israel, Taiwan, and Finland.