Dr Jack Severs and Graham Crofts, from intellectual property law firm Gill Jennings & Every, discuss the IP fast tracking options for green technology, including products that may not be traditionally thought of as environmentally friendly
The global photonics market is enjoying sustained growth above GDP with a recent report by the International Society for Optics and Photonics (SPIE) increasing its evaluation of global photonics trade to over $180 billion. The solar power sector is a particularly strong example of this trend, with forecasts suggesting the boom in new photovoltaic installations is set to continue. In addition to this rapid growth, the market continues to diversify with both a shifting geographic scope and the emergence of new technologies.
In such a dynamic, developing industry one might question the value of seeking patent protection, considering the average time to obtain a granted patent is around four years. Although there can sometimes be reasons to delay grant – such as deferring the associated costs – when technology is moving forward swiftly, such delays before IP rights can be fully exploited may lead to opportunities being missed. In particular, a granted patent may be required quickly in order to secure the investment required to establish a foothold in the expanding market, to facilitate licensing to meet the growing demand or to prevent competitors from copying new innovations to secure a share of the market. In some cases, the technology may have simply moved on by the time the patent is granted, meaning the patent is of little value. Fortunately, there are several options available to applicants in the photonics sector, which can dramatically reduce the time it takes to obtain a granted patent, allowing them to keep pace with the changing market conditions.
One such option, which is of particular relevance to applicants in the photonics sector, is the possibility of accelerating prosecution of applications for environmentally friendly technologies. In the UK, accelerated proceedings can be obtained at the UK Intellectual Property Office (UK IPO) through the ‘Green Channel’ if requested for any application which ‘has an environmental benefit’. Similar green fast track programmes are offered by many patent offices worldwide, including those of Australia, Israel, Japan, the Republic of Korea, the US, Canada, Brazil and China. Specific eligibility requirements vary between the jurisdictions, with the average time to grant cut by between 42 per cent and 75 per cent across the different patent offices.
To request consideration for the Green Channel programme at the UK IPO, applicants must simply apply in writing, indicating how their application is environmentally friendly and which actions they wish to accelerate: search, examination, combined search and examination and/or publication. Data suggests that use of the Green Channel at the UK IPO dramatically reduces the time to grant to around 9 nine months on average which, in a dynamic market such as the solar power sector, may make the difference in establishing a foothold at an early stage.
Despite the effectiveness of the programme in speeding up the application process, a 2013 study suggested that only a relatively small proportion of applications relating to eligible technology request use of the green fast track procedure. Participation rates varied between 0.5 per cent and 20 per cent with the Green Channel at the UK IPO attracting the highest proportion of participation by a significant margin. Although there may be several considerations within an applicant’s IP strategy which may lead them opting against accelerating prosecution, one contributing factor behind the relatively low uptake may simply be a lack of recognition of the eligibility of their technology.
Although technologies such as solar energy conversion clearly fall within the environmentally-friendly requirement, the UK IPO specifically recognises that ‘inventions which have an environmental benefit can arise in any area of technology’. They also state that ‘we would accept an acceleration request for a manufacturing process which uses less energy, in the same way as we would accept an acceleration request for a wind turbine or a recycling process.’ The range of eligible technologies may therefore be much wider than perhaps immediately apparent. The UK IPO provides an online database that lists published applications and granted patents which have been accelerated via the Green Channel and can give an indication of scope of eligible technologies.
An illustration of the breadth of the eligibility requirement is provided by a case in which one of our clients within our photonics practice recently announced the grant of a first UK patent in relation to their wireless lighting technology. In this case, the primary focus of the application was network security in the emerging ‘Internet of Things’ technology area. In particular, it concerned a method for commissioning wireless nodes in a network for securely joining wireless devices of different types to the network. Despite this invention initially appearing quite distinct from conventional green technology, the UK IPO accepted a request to accelerate the application under the Green Channel on the basis that the invention found application in the applicant’s wireless eco-lighting technology. Our client was therefore able to benefit from obtaining a granted patent in a significantly reduced time period in another rapidly growing photonics technology sector.
The Green Channel is however just one route through which applicants may request accelerated proceedings. Both the UK IPO and European Patent Office (EPO) provide schemes for accelerating the prosecution of applications in any technology area. The Patent Prosecution Highway (PPH) provides means of accelerating examination of a patent application if examination work has already been carried out at another participating patent office. Similarly, the UK IPO offers accelerated search and/or examination if adequate reasons are provided, whereas the EPO offers accelerated prosecution under its PACE programme without requiring any reasoning to be provided.
The future for the photonics industry looks bright with further growth and market development forecast over the coming years. With this continued pace of development, accelerated proceedings can offer an important option as one element of an IP strategy capable of adapting to changing market conditions and allowing applicants to reap the full benefit of their innovation.
Gill Jennings & Every is a specialist intellectual property law firm based in London. The firm’s patent and trade mark attorneys provide commercially focussed advice on legal protection for innovations and brands to companies ranging from start-ups to multinationals. It has a team of patent attorneys, with backgrounds in physics and engineering, who specialise in advising clients in the photonics sector.