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How China’s new fast track for green patents compares

Last month SIPO revealed how inventors of so-called green technology will be able to get their patent applications examined faster. Peter Leung explains how the new rules compare to expedited patent regimes at other IP offices

In June, China’s State Intellectual Property Office (SIPO) released its Administrative Measures on Prioritized Examination of Patent Applications, which allows for expedited examinations of various types of patents from August 1.

Patents for so-called green technologies are one type of application eligible for priority examination.

China is just one of a growing number of countries giving priority processing to green technologies. How does China’s programme differ from those in other major jurisdictions?

China

Inventors filing for invention patents for “green development”, such as those involving low carbon emissions; energy and resource conservation; and environmental protection, can request prioritised examination. Applicants must file their application electronically and submit an “Application for Prioritised Patent Examination” endorsed by a SIPO branch at the provincial level. The applicant must also request a substantive examination, and submit a patent search report issued by a qualified entity or a translation of a search report with results issued by another country’s patent office.

Once the patent office grants a request for a prioritised registration, the guidelines state that the first office action will be issued within 30 days of the grant. The applicant must respond within two months or the application loses its priority status. A prioritised examination should be completed within one year of application.

But China’s new fast-track examination scheme is not just open to owners of green technology.

Applicants for patents involving new generation information technology, high-end equipment manufacturing, and automobiles using new forms of energy can also request expedited examination, as can applicants for patents first filed in China before other countries, as well as inventions deemed to be important for the public or national interest.

Alex Xia of Hogan Lovells said more regulations and guidelines about this programme may be to come to clarify how the rules will be put into practice.

“It is possible that they will come out with more detailed guidelines regarding what constitutes green technology”, he explained. He also says that additional information may be released, such as any additional fees associated with the programme or how many priority applications will be accepted each year.

Japan

The Japan Patent Office’s (JPO) accelerated examination track also prioritises green technologies. Green technology is defined as “a kind of invention that has an energy-saving effect and contributes to CO2 reduction”.

The applicant should request an accelerated examination in writing by explaining the need for the examination and how the invention relates to green technology, as well as disclosing prior art documents and explanations comparing the invention to the prior art.

Once the JPO accepts a patent to the fast track, the first action should take place within two or three months. There is no additional fee for the service.

Japan’s fast track system is also open to other categories of inventions, including working-related applications, internationally filed applications, applications by small and medium enterprises, individuals and universities, and earthquake-related technologies.

UK

The UK patent office has launched an accelerated Green Channel for green technology patents. The applicant must submit a written cover letter either by post or online explaining how the invention is environmentally friendly. The letter should also state which phases of the examination are to be accelerated: the search, examination, combined search and examination, and/or publication. The UKIPO does not require evidence or substantiation of the claims of environmental friendliness, but says it will reject clearly inappropriate inventions.

The request can be made at the same time as filing the application or on a later date.

There is no additional fee for the service, and the Office says that the examination under the Green Channel may be completed in as little as nine months.

The UKIPO will also accelerate other types of patents depending on the circumstances of each case. Examples given include requesting an accelerated examination because the applicant is aware of an infringer, or to accelerate examination in a PCT application.

US

The US’s Green Technology Pilot Program, which provided special status to green technology projects closed earlier this year. Applicants may still take advantage of the other accelerated examination programs, including the new Track 1 program, which allows a patent to receive accelerated examination for a $4,800 fee.

The USPTO also offers an Accelerated Examination Program for inventions involving environmental quality, development or conservation of energy resources, or counter terrorism. The applicant must provide a statement setting out the nature of the invention and $130 in fees.

Under both programmes, the goal is to reach a final disposition within one year.

Attorneys say that the Accelerated Examination Program’s support document requirements can be quite burdensome, while the newer Track 1 program is much simpler.

A full text translation of the Measures issued by SIPO will be available in the September issue of Managing IP’s sister publication China Law & Practice.

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