Legal firm comments on ‘green’ patents

A 'Green channel' will speed up patent protection for clean tech inventions but those using it should be aware of the pitfalls, says Withers & Rogers LLP

As part of a wider-reaching government measure to tackle climate change, the UK Intellectual Property Office (IPO) has launched the ‘green channel’ – an initiative to enable patent applications for environmentally-friendly inventions to be fast-tracked.

However, it is not yet clear which inventions will qualify for the new channel and R&D managers need to be aware of the potential pitfalls, according to patent experts at Withers & Rogers LLP.

The ‘green channel’ represents an expansion of the existing set of reasons that can be used, when applying for patent protection from the UK IPO, to support a request for accelerated consideration of the application.

Before the green channel was introduced on 12 May 2009, an applicant had to argue that a patent had to be granted quickly due to a potential infringement in the UK or for commercial reasons, such as to secure an investor or licensee.

Dave Croston, patent attorney at Withers & Rogers LLP, said: “The introduction of the green channel is a positive move that will support R&D activity in dynamic sectors such as clean tech industries.

“It is a bit like opening up a new motorway for companies investing in green technologies and will strengthen the UK’s positioning in this fast-growing marketplace.”

“However, it is not yet clear where the IPO will draw the line. It is uncertain whether all companies who are investing in the development of products that are greener than their predecessors will be able to benefit from a faster route to patent protection.”

Based on the rules provided by the IPO, it will be necessary for applicants to make a reasonable case that ‘some environmental benefit’ is associated with the invention.

Obviously this criteria could be applied to a wide range of inventions, such as those that are more energy-efficient than known equivalents, formed using greener processes and/or materials, as well as more mainstream ‘green’ technologies, like renewable energy systems.

According to Dave Croston, it may not always be a good idea for a company to choose to fast-track its patent application. He explains:

“Using the ‘green channel’, the UK IPO suggests it is possible that a patent can be granted in as little as nine months, which would require putting the invention in the public domain much more quickly than it would usually.

“This may not always be preferable and the company should consider the implications if they need to protect any subsequent developments made to the invention within 12 months of filing the first application or simply wish to keep competitors in the dark for as long as possible.

“Accelerated granted protection is an option although for some it may be beneficial to keep an application pending for longer.”

In summary, Dave Croston concludes: “UK companies working in the clean-tech sector can really benefit by getting granted patent protection in their home market quicker than in other countries.”

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