By Julia London & Liz Gray
According to the World Economic Forum’s Global Risks Report 2021, extreme weather, climate action failure, and human-led environmental damage are among the most likely challenges facing the world in the next decade, and their potential impacts are second only to those of infectious diseases. Environmentally beneficial technologies (also called ‘cleantech’, ‘green tech’ and ‘green technologies’) can play a vital role in mitigating climate change, and patents can encourage, promote, and incentivize the development of green technologies.
Yet the patenting process can be slow. For instance, the average time between filing and grant for a Canadian patent application is currently 6.5 years. As a result, numerous jurisdictions, including Canada, have adopted expedited examination procedures for green technology patent applications (“accelerated examination processes” or “AEPs”).
The Canadian program has been in place since 2011, and offers many advantages—for instance, a fast grant in Canada opens up the Global Patent Prosecution Highway (GPPH) for acceleration in other jurisdictions! But, despite its advantages, Canada’s AEP is little-known and rarely used. In this post, we set out some of the most important things to know about accelerating green tech patent applications in Canada, including what kinds of applications are accepted, the requirements for entry, and how long applicants can expect to wait.
As outlined in Section 84(1)(b) of the Patent Rules, when requesting examination, applications can be accelerated provided the applicant files a statement that the “application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources” (emphasis added).
These broad requirements permit the acceleration of applications for inventions in many subject areas. Successfully expedited applications therefore span a broad range of fields. As examples, consider the following now-granted patents:
- A Method for Selectively Oxidizing Metals of an Alloy;
- Microbially Enhanced Thermal Oil Recovery; and
- Targeted Surface Disinfection System with Pulsed UV Light.
If you believe your invention falls under the broad definition of cleantech in Section 84(1) of the Patent Rules, and wish to take advantage of the Canadian AEP, you must submit the following to the Canadian Intellectual Property Office (CIPO):
- a written request for an expedited examination; and
- a declaration stating that the application relates to clean technology and that commercializing the invention would help to resolve or mitigate environmental impacts or conserve the natural environment and resources.
Note that, under the Rules, there is no requirement for a description of how environmental impacts would be resolved or mitigated, or of how the natural environment and resources would be conserved. Additionally, no additional fees are payable for entry to the AEP. However, abandoning an application, or requesting an extension of time, will cause the application to be removed from the AEP and returned to the regular processing order.
Timeline for an accelerated application
Within the first three (3) months of the request being processed under the acceleration program, the first office action can be expected. As mentioned above, the average processing time for unexpedited applications at the CIPO is 6.5 years. Table 1 shows the number of patent applications entered in the AEP and the number of those applications that have issued as patents as of this publication. As can be seen, through the AEP, few patent applications remain pending more than 2 years after their AEP entry date.
For instance, at the time of writing, over 30% of Canadian patent applications that entered the cleantech AEP in 2020 have already issued as patents. That percentage increases to almost 81% for applications entered in 2019, and to 88% for applications entered in 2018. Clearly, applications that take advantage of the cleantech AEP tend to quickly result in granted patents.
Uptake of the AEP
But, despite its success, the program is underused. From the table above, even in its busiest year, only 77 applications took advantage of the AEP! For context, in 2019, CIPO received 36,488 patent applications, but only 42 applications entered the cleantech AEP. That is, only 0.115% of the applications filed at CIPO in 2019 took advantage of the cleantech program!
Faster granting of patents for environmentally friendly technologies can have enormous benefits for industry and for the public at large. For businesses, earlier patent grants can bolster innovation, improve commercialization speeds, and strengthen licensing potential. Using the Global Patent Prosecution Highway (GPPH) and other multi-lateral and bilateral agreements, further, a successful grant in Canada can lead to fast grants in dozens of other jurisdictions around the world, including the US and Europe. And, considering the potential—and current!—effects of climate change, technologies that help to mitigate those effects and other environmental impacts are more necessary than ever. Increased uptake of the Canadian AEP would thus benefit applicants and the world alike.
For more information about accelerating the prosecution of patent applications, please contact our experts at BRION RAFFOUL LLP. Our Managing Partner, Natalie Raffoul, is the current Chair of the AIPPI Standing Committee on IP and Green Technology. Last year, she was interviewed by The German Association for the Protection of Intellectual Property (GRUR) to discuss the Standing Committee and its main mission. The Standing Committee’s global review of AEPs (Incentivizing Green Technology Inventions and Innovation—A Global Review [In Light of COVID-19]) further provides an informative review of green tech programs throughout the world.