Global Green Patenting: Risks and Opportunities from the Fast Track to the Highway 2012 IPO Annual Meeting September 10, 2012 Eric L. Lane mckennalong.com
The Best of Times and the Worst of Times The Risk New climate change treaty may weaken or eliminate green patent rights in many countries The Opportunities Green patents facilitate commercialization Quick green patents and patent portfolios via fasttrack programs Easily accessible information on green patents and potential licensing partners via databases and tech transfer tools
Weakening or Eliminating Green Patents Mandatorily excluding green technologies from patenting Revoking existing patents on green technologies Exempting least developed countries from green patent protection Compulsory licensing of patented green technologies Pooling and sharing of publicly funded green technologies Using TRIPS to access green IP Preferential pricing of green technologies Reducing patent terms for green patents
Be Skeptical: Green Patents are Not a Barrier to Transfer of Clean Technologies Intellectual property rights do not in themselves constitute a barrier to the transfer of carbon abatement technology from developed countries, neither to low-income developing countries nor to emerging market economies Patent rights cannot possibly be an obstacle for the transfer of climate change technologies for the vast majority of developing countries: there are hardly any patents on these technologies registered in these countries (Copenhagen Economics A/S and IPR Company, Are IPR a Barrier to the Transfer of Climate Change Technology? January 19, 2009; conducted for the European Commission)
Opportunity: Green Patent Licensing Business Model Solar manufacturing too capital intensive Skirted barrier to entry with patent licensing model Licensed solar ink to at least 6 Chinese module manufacturers
Green Patents Facilitate Int l Transfer and Green Patents Facilitate Int l Transfer and Deployment of Clean Technologies for Large and Small Players Amyris & Crystalsev / Sao Marinho Group Ethanol GE Wind Landis & Gyr Smart Meters esolar & Acme Group / Penglai Electric Solar Thermal Google & Reliance Energy Smart Meters GE & Shenua Group Carbon Capture Alstom & Endesa Hydro Kyocera & Solar Power Co. Solar PV Nissan & Dongfeng Motor Group Electric Car GE Smart Meters
Green Patent Licensing in Int l Business Transactions 2 gigawatts of solar thermal power plants in China 1 gigawatt of solar thermal power plants in India Partners are master licensees of esolar s technology
The Best of Times: Green Patent Fast Track Programs Green patent applications jump the queue in IP offices around the globe: United Kingdom (~ 9 mos) Israel (< 3 mos) Korea (< 1 mo) Australia Canada Japan Brazil China
USPTO Green Patent Fast Track - Closed Closed February 2012 3533 applications processed 1062 patents granted
Patent Prosecution Highway (PPH) Patent Prosecution Highway (PPH) allowed claims in one participating jurisdiction can prompt expedited examination in one or more of the other jurisdictions Austria Australia Canada China Denmark EPO Finland Germany Hungary Iceland Israel Japan Korea Mexico Nordic Patent Institute Norway Russia Singapore Spain Sweden Taiwan UK US WIPO (PCT)
Use ex-us Green Patent Fast Track as HOV Lane onto USPTO PPH
Take the Fast Track to the Highway Singapore (PPH) Japan (PPH) Korea (Green FT) US (PPH) Australia (PPH) Canada (PPH) Mexico (PPH)
Green Patent Resources Tech Transfer Tools Eco-patent Commons GreenXchange WIPO Green DOE Energy Innovation Portal Informational Resources CleanTech PatentEdge EPO Green Patent Database Clean Energy Patent Growth Index
Takeaways Be skeptical of attacks on green patents Seize the moment and take advantage of green patenting and tech transfer opportunities Seek guidance from green IP experts
Questions? Eric L. Lane elane@mckenna.com (619) 699-2471
Presenter Eric Lane is patent and trademark attorney at McKenna Long & Aldridge in San Diego. Lane is the founder and author of Green Patent Blog www.greenpatentblog.com an awardwinning website dedicated to discussion and analysis of intellectual property issues in clean technology. His book, Clean Tech Intellectual Property: Eco-Marks, Green Patents, and Green Innovation, published by Oxford University Press, is available for purchase through Oxford s web site at www.oup.com, Amazon.com and select retailers. Eric L. Lane Of Counsel elane@mckenna.com