New Strategies for Green Tech Patents Bloom in Canada and the U.S.
July 20, 2012
The United States Patent and Trademark Office (USPTO) Green Technology Pilot Program has closed and is no longer accepting additional applications. Applicants can no longer request advanced examination for inventions related to green technologies without paying additional government fees. The program officially closed earlier this year upon acceptance of the 3,500th petition to enter the program.
The pilot program began in December 2009 and ran for over two years. During that time, patent applications within the program were examined on an expedited basis, with applicants typically receiving a first Office Action within 3 – 6 months and final disposition within 12 months. The program was a remarkable success, resulting in nearly 1,000 issued patents within the 2 years. In contrast, it typically takes about 2 years before a patent application is first examined and a first Office Action received, and it can often take another 1 – 3 years of prosecution before receiving an issued patent.
Even though the USPTO’s Green Technology Program has ended, there are still other remaining options available to applicants who are seeking expedited examination at the United States Patent Office.
The first option is the Prioritized Examination (Track I) Program, which was implemented last September as part of the America Invents Act. However, the cost of participating in this program is a hefty $4,800 USD in government fees (reduced to $2,400 for a small entity).
Thankfully there is another cost-effective option for applicants seeking patent protection in both Canada and the U.S. The Canadian Intellectual Property Office (CIPO) has an ongoing Green Technology initiative, which is free. This program offers advanced examination of a Canadian patent application if an applicant submits a Declaration indicating that the application relates to a technology, which upon commercialization would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.
Similar to the U.S. program, substantive examination of a Canadian Green Technology patent application usually begins within about two months of receiving a request to enter the program.1 Furthermore, once an application is allowed in Canada, an applicant can leverage their allowed Canadian claims to request expedited examination of their corresponding U.S. patent application using the Patent Prosecution Highway (PPH). Unlike the Prioritized Examination (Track I) Program, there are no additional fees to utilize CIPO’s PPH program.
While CIPO’s Green Technology program has been available for over a year, very few applicants have taken advantage of this option and CIPO currently lists only about 50 green technology applications. One possible reason for the initial lack of interest is that applicants may have been concerned that filing the required Declaration could provide a basis for invalidating their patent for lack of good faith under section 73(1)(a) of the Patent Act.2 However, in view of the recent decision in Weatherford Canada Ltd. v. Corlac Inc.3, fears that an issued patent can be invalidated on the basis of lack of good faith during prosecution have largely been put to rest.
Applicants interested in filing a patent application under any of these advanced examination programs should consult a qualified patent practitioner to discuss options, strategies, costs, and risks, as these programs tend to be highly technical and are often more complicated than a standard patent filing.
Ryan Tremblay, B.A.Sc. (Mech. Eng.), LL.B., is an associate lawyer in Bereskin & Parr LLP's Electrical & Computer Technology practice group.
Isi E. Caulder, B.A.Sc. (Eng. Sci.), M.A.Sc. (Elec. Eng.), J.D., is a partner in Bereskin & Parr LLP's Electrical & Computer Technology practice group. She can be reached in Toronto at 416.957.1680 or firstname.lastname@example.org.
1 CIPO has set a two-month service standard for all applications proceeding under the Green Technology Program. This service standard applies to the first office action as well as all subsequent office actions.
2 Previously, the decisions in G.D. Searle & Co. v. Novopharm Ltd., 2007 FC 81, and Lundbeck Canada Inc. v. Ratiopharm Inc., 2009 FC 1102 suggested that a patent could be invalidated on the basis of retroactive deemed abandonment of a patent application for lack of good faith under section 73(1)(a).
3 2011 FCA 228, leave to appeal denied March 29, 2012.
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