Middle Market Businesses: Patenting Your Company’s Green Technology Innovations

Many middle market companies are commercializing green technologies such as geothermal, hydroelectric, solar, electric vehicle, wind and biotechnology based fuel technologies. As part of their commercial strategies, companies are obtaining patent protection on their technology. Green technology patent owners can exclude others from making, using, selling, offering to sell and importing their patented technology. Because they often allow the patent owner to block competitors from the marketplace, patents may be a business advantage which can increase the value of a company and attract potential investment in the company. In addition, green technology patents can be used as a source of revenue by licensing the technology to other companies.

Typically, however, it can take several years for a country to review a patent application and to grant the patent. Often, much of the lag time to obtain a patent can be attributed to the backlog of patent applications awaiting review at a country’s patent office. In view of the importance of obtaining green patents for investors, companies and the environment, the patent offices of several countries have announced programs to accelerate the review of green technology patent applications. Acceleration programs have been initiated at the patent offices of the United States, Australia, Israel, Korea and the United Kingdom. These programs allow an applicant to request that the review of their patent application be expedited if it meets particular requirements.

The United States Patent and Trademark Office (USPTO) implemented its acceleration program, the Green Technology Pilot Program, in late 2009. The program was created to accelerate the examination of green technology patent applications relating to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction. There is no USPTO fee to file a petition for the program. The applicant, however, must request early publication of their patent application, which requires payment of a publication fee.

The pilot program is expected to reduce the time it takes to obtain a green technology patent by an average of 12 months. In order to obtain the accelerated examination for a green technology patent application, a patent applicant must file a Petition to Make Special that meets the requirements of the Green Technology Pilot Program. The USPTO will only accept the first 3,000 petitions that are submitted by Dec. 8, 2010. Eligible applications must be a non-reissue, non-provisional utility application or an international patent application that has entered the U.S. national stage. The application must have initially been filed before Dec. 8, 2009, and other restrictions may apply as well. The USPTO may extend the program depending on its success.

Companies need to carefully weigh the advantages and disadvantages of taking part in the Green Technology Pilot Program because the new program may not be appropriate or applicable for all green technology patent applications. There may be other strategies and avenues to expedite the review of a green technology application that are a better fit for an applicant.

The green technology patent programs that are being implemented around the world serve as a call to action to companies who are developing new green technologies, but may be relatively new to the patent world. Because patents can be powerful tools for corporate growth and marketability, the creation and maintenance of a patent portfolio, whether “green” or not, can be a point of differentiation to take certain middle market companies to the next level.

Eric J. Baude, Ph.D., is an attorney with the Ann Arbor, Mich. office of Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the country. He can be reached at [email protected]. The views expressed in the article are those of the author and not necessarily those of Brinks Hofer Gilson & Lione, or any of its past, present or future clients.