Faster and Cheaper “Patenting” of Green Technologies

Dominique Pomerleau [1] and Marine Keraron [2]
ROBIC, LLP
Lawyers, Patent and Trademark Agents

Carving a pathway to a green future is a 21^st century imperative. On April 26, 2020, World Intellectual Property Day will be held under the theme “Innovate for a Green Future”.

Solving the global climate crisis is a modern-day imperative. To succeed, we must all be committed to facing it and having a role in building a green future. The use of technology is increasingly recognized as being part of the solution. It is therefore essential to build strong national innovation systems, combined with effective and responsive intellectual property systems that will foster the deployment of technologies needed for the green transition.

Canada is emerging as a global leader in the field of clean technologies. Indeed, many Canadian companies are consistently featured in the Global Cleantech Top 100, positioning Canada as one of the leading innovators. As of January 2020, twelve Canadian companies have been identified in this ranking which recognizes the most innovative and promising ideas in the clean-tech sector (https://www.newswire.ca/news-releases/12-canadian-cleantech-companies-recognized-among-world-s-top-100-855222872.html).

What intellectual property tools are available in Canada to facilitate the transition to a sustainable low-carbon economy?

WIPO GREEN Network

The Canadian Intellectual Property Office (CIPO) is a member of WIPO (World Intellectual Property Organization) GREEN, an interactive marketplace promoting innovation and the diffusion of green technologies. The WIPO GREEN network facilitates business relationships and transactions by connecting green technology providers  with seekers.

More specifically, the WIPO GREEN Network has 6,000 members spanning 170 countries, including multinational companies, small and medium-sized enterprises, consulting firms, business incubators, universities, public institutions, NGOs, associations, etc.

Membership in the network is free of charge and, among other things, provides access to a database that allows to:

• gain global visibility of available green products and needs; and
• find partners and discover business and investment opportunities.

Advanced Examination Process for Green Technology Patent Applications

In Canada, it is possible to expedite the examination process of a green technology patent application without having to pay the normally prescribed government fee.

The objective of expediting the examination process is to reduce the time required to have a patent granted for an invention and thereby allow companies to enforce their exclusive right to the technology more quickly. Indeed, patents are a form of intellectual property frequently used in the industry because they provide an exclusive right for an invention to be made, used or sold for up to 20 years in Canada. For green technologies, the government fee for advanced examination has been abolished in order to speed up the issuance of patents in this sector.

To access this advanced examination process, a written request must be submitted with a declaration that the patent application relates to a green technology that, if commercialized, would help resolve or mitigate environmental impacts or conserve the natural environment and resources. Thus, for the purposes of this procedure, a green technology would be defined as a technology that would help to remedy or mitigate environmental problems or impacts.

 Caution: Misrepresentation could threaten the validity of the future patent.

In order to qualify for this expedited process, the patent application must have been published and the request for examination filed.

Once the Request for Advanced Examination for Green Technologies is processed, a first examination report can be expected within 3 months. In other words, CIPO will try to issue an examination report ideally within three months from the receipt of the Request. The applicant then has four months from the date of the report in question to submit a response. CIPO undertakes to respond again within three months of receiving the applicant’s reply.

Thus, a patent relating to green technology for which advanced examination has been granted could be issued in under a year.

Additional resources including a list of all patent applications that currently benefit from expedited examination under the Green Technologies initiative are available: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04746.html.