Cross-posted from blog.hdp.com

On December 7, the U.S. Patent & Trademark Office announced a pilot program to accord “special status” to patent applications claiming “green technologies” relating to environmental quality, energy conservation, development of renewable energy, and greenhouse gas emission reduction. The effect of special status is to accelerate examination, by placing the application on a patent examiner’s special docket throughout the course of its examination, as well as special status in appeals and interferences before the Board of Appeals and Interferences.

The specific requirements and procedures for the program are described in a Notice published December 8, 2009, at 74 FR 64666.  To qualify, an application must have been filed before the date of the notice, but have not yet received a first Office Action (restriction requirement or substantive examination).  The application must be for an invention classified one of the specific technology class/subclasses listed in the Notice.  The Notice organizes the classifications into 79 technology descriptors, in four general areas:  (1) alternative energy production, e.g., biofuels, fuel cells, geothermal, hydroelectric, nuclear power, and solar cells; (2) energy conservation, e.g., electric vehicles, and energy storage or distribution; (3) environmentally friendly farming, e.g., animal waste disposal, and pollution abatement, and (4) environmental purification, protection, or remediation, e.g., bio-hazard containment, plants and plant breeding, and recycling.

Examination is accelerated under this program without some of the potentially onerous requirements of the procedures that are otherwise available for accelerated examination.  Of particular note, the new program for green technologies does not require a pre-examination search by the applicant or submission of an examination support document.  However, the green technology program limits an application to a single invention with twenty or fewer claims, no more than three of which can be independent.  The petition to make special must also include a request for early publication.

Petitions for an application to be made special under this program must be filed electronically by December 8, 2010.  Subject to further review by the USPTO, the program will be terminated after filing of the first 3,000 petitions.

According to the Patent Office press release, the program is said to “… accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.” The timing for the announcement appears to be coordinated with the U.N. Climate Change Conference now in progress in Copenhagen, Denmark.  Accelerated examination may not necessarily be of benefit for all “green technology” applicants or corporations, however.  Accelerated examination can be helpful if the applicant is aware of a potential infringer, or desires the certainty of having an issued patent for purposes of licensing or seeking funding.  On the other hand, accelerated examination will expose the technology to competitors earlier (due to the early publication aspect of the program), accelerate the costs for prosecution, and may require decisions regarding prosecution strategy when less is known about the commercial landscape for the technology.

Let’s begin with a brief “green” history of time from 1962 – 2009. It all started in 1962 with Rachel Carson’s book Silent Spring which many consider to have single-handedly spawned the dawn of the modern environmental movement. Global environmental summits were held in Stockholm (1972), Rio de Janeiro (1992), Johannesburg (2002), respectively called: United Nations Conference on Human Environment (1972), United Nations Conference on Environment and Development aka “Earth Summit” (1992) and Earth Summit (2002).

In “Rio,” the international environmental treaty entitled the United Nations Framework Convention on Climate Change (UNFCCC) was adopted. Provisions to update the treaty are called Protocols. The Kyoto Protocol is the main update which became more renowned than the UNFCCC itself thanks to the non-ratifying parties.   

UNFCCC “Conferences of the Parties” have been held in The Hague (2000), Bonn (2001), Marrakech (2001), Montreal (2005), Bali (2007), Vienna (2007), Poland (2008).

COPENHAGEN IS COMING!  UNFCCC’s 2009 meeting in Copenhagen is almost upon us!  

WHY ALL THE EXCITEMENT? Three key reasons:

The world is more than ready to move beyond Kyoto which entered into force in 2005. Although 183 parties/countries ratified the Kyoto Protocol (as of 2009), major world players have not:  China, India and USA.   

An Inconvenient Truth, the fabulously sensationalist documentary, the worldwide movie blockbuster by Al Gore took the entire world’s hearts and minds by its own kind of environmental storm. And yes, we must not forget that he shared his 2007 Nobel Peace Prize with the Intergovernmental Panel on Climate Change (IPCC). The IPCC is a United Nations’ network of scientists.

But wait, another major reason for the exciting buzz surrounding Copenhagen…There is a high level of hope from the world at large, that the new U.S. government administration, circa 2009, will propel the potential of the UNFCCC to the next necessary levels and inspire all countries worldwide to proactively participate with fewer conditions and objections for the sake of humanity and all inhabitants of our only collective home. 

Yes, what is about to materialize (hopefully) in Copenhagen has been five decades in the making. If we extrapolate the progress to date to another five decades ahead of us, how certain are we that it will not be too late? How certain can we be that within the next five decades the world temperature will not rise on average by 2 degrees Celsius when there could be a systemic collapse of the world’s environmental ecosystem?  Forty-seven environment, science and faith-based groups came together in coalition (summer 2009) and sent President Obama a letter about these seemingly minute 2 degrees. We are DECADES OVERDUE for a major overhaul of business as usual.    

In politics, compromise is key. THE GOAL in Copenhagen is a legally-binding international environmental agreement that: limits greenhouse gas emissions, better ensures implementation of the agreement (clean development mechanism, joint implementation and emissions trading), increases compliance/accounting/reporting measures and minimizes impacts on developing countries (funds for their adaptation).  

Will an agreement “struck” in Copenhagen be enough to pre-empt an unimaginable world calamity?  This definitely depends on whether China, India and the USA make concessions to agree and ratify an agreement with acceptable terms.  Developing countries which comprise 90% of the future growth of greenhouse gas emissions need to be well-accounted for as a part of the agreement. According to the Swiss Re report published just last week: “Climate risks could cost nations up to 19% of GDP by 2030, with developing nations most vulnerable.” When developing nations’ economies suffer dramatically, there is a global environmental security issue, unprecedented severe mass migrations as we have not seen for centuries. “No one wants to stay put to die” is how Stephen Kass, who spoke at a Sustainability Practice Network NYC (SPN) event  last week, put it bluntly. Mr Kass has practiced environmental law since the 1970s. We cannot be sure about what may happen, but in Copenhagen, we better do our darndest to keep human kind and all living organisms from unimaginable suffering or even mass extinction.

WILL MARKET MECHANISMS SAVE THE ENVIRONMENT?  

Undoubtedly, there is a lot of optimistic interest over how the market can help the world reach environmental sustainability goals.  There are differing views on this matter.  Based on the speakers in last week’s  SPN NYC event, the environmental dream team panelists’ views:

Nat Keohane of the Environmental Defense Fund:  The market mechanism (“cap and trade” of emissions/credits beyond imposed limits) will be key to the future of reducing greenhouse gases by countries, regions, industry. The market was highly successful for reducing acid rain (sulfer dioxide) and made it an environmental non-issue thereafter. Why not for greenhouse gases?

Stephen Kass of Carter, Ledyard & Millburn LLP:  Cap and trade is not a substitute for other methods and cannot be relied on to be the sole solution: Co2 gases are a much bigger and complicated problem than sulfer dioxide. And, very importantly: Can we rely on third party verifications of a market system by accounting firms or government bureaucrats?  He gave an example of complementary solution. A carbon tax could work well, but taxation is likely not going to happen especially in the U.S. because the word “tax” is involved!

Doug Cogan the Director of Climate Change Research at Risk Metrics: He believes that strong focus innovation research and entrepreneurship can propel us to the next level and developing countries like China and India can make the jump quickly beyond the current generation of technology to that which does not cause current levels of pollution (like Africa which “leapfrogged” over landline phones directly to cell phones).

Doug Cogan also reminded the SPN NYC event audience about the renowned 700-page Stern Report of 2006 which discusses the effect of climate change and global warming on the world economy.  He also made note of his company’s survey research report published just last week about the preparedness of financial institutions in developing/emerging countries to be integrated into the greenhouse emissions cap and trade system.

What in the view of these recent SPN NYC event speakers is THE MOST IMPORTANT THING THAT THE U.S. CAN DO for the upcoming round of negotiations in Copenhagen?  

It is to PASS DOMESTIC LEGISLATION BEFORE COPENHAGEN on the environment, the Climate Bill.  But are we already too late? The eyes of the American public and federal government rest heavily on the issue of healthcare while the Climate Bill legislation is put on the backburner probably until the end of this year or the beginning of next year.  This means that there is a higher chance that there could be a repeat of what happened with Kyoto, where the U.S. negotiators in Copenhagen “come home” to the U.S. with an agreement that the U.S. Senate rejects.  In fact, they rejected Kyoto unanimously in 1997 namely noting that it would be deleterious to the U.S. economy.

BUT THERE IS HOPE.  We cannot rest our laurels on the agreement coming out of Copenhagen this December 2009.  Bilateral agreements in addition to the UNFCCC Copenhagen agreement should play a critical role. China and the U.S., which together contribute 50% of the world’s harmful greenhouse gas emissions could come to a bilateral solution e.g. the U.S. could also work with friendly ally Brazil on trade policy, corn-based fuel and deforestation. 

COPENHAGEN 2009: The world is watching. We have a COMMON RESPONSIBILITY as stewards of this earth.  I am optimistic that we the world, governments and individuals have the answer to move beyond the issue of harmful greenhouse gases, even within our lifetime.  You can do your part right now, by signing the United Nations campaign petition and adding your photo in the world mosaic as a supporter to “Seal the Deal” in Copenhagen.   

www.sealthedeal2009.org    

This is the first in a 10 part series of articles discussing litigation avoidance strategies.  Investing in an intellectual property program or portfolio only makes sense if such investment ultimately adds value to your company’s bottom line.  Fundamentally, it can be argued that IP programs add value by generating assets, i.e., patents/trademarks/copyrights.  But certain techniques can be employed to make those assets stronger and more valuable.  In this series, we will delve into IP portfolio management techniques and present ideas that, hopefully, will enable you to avoid litigation by, among other things, creating strengthened intellectual property assets that are not as susceptible to challenge, ensuring the best ideas being generated by your company get the proper level of review and protection.  Implementing these strategies will multiply the value your company obtains from its intellectual property investment. 

Litigation Avoidance Strategy No. 1:  Better Patent Claims = Less Litigation

It is often a miscalculation to assume that a company’s patent attorneys can, on their own, develop patent specifications and claims that will withstand the rigors of litigation and/or prevent a competitor from getting into its business space.  Too often, your patent attorney cannot understand your business nearly as well as your inventors and/or business people.  As a result, the patent claims that they draft are either too narrow (i.e., they include unnecessary features/limitations) or not sufficiently directed to the actual invention (i.e., the focus of the patent claims is wrong).  In most instances, your patent attorney is working off limited information, such as a brief “invention disclosure” submission from the inventor and interviews with the inventor, that cannot result in the transmission of all relevant background and detail required for the best possible claims.  Then, when a busy inventor reviews the claims that are, in a worst case, simply directed to a preferred embodiment, he or she says “yep, that’s what I invented,” and spends no further time on the issue.

            A team approach is, therefore, required to generate the most valuable patent claims.  To that end, inventors need to be intimately involved in claim drafting, along with the patent attorney, and they must possess a broader perspective concerning what you hope to achieve by pursuing and acquiring patents.  For example, your inventors should look at draft patent claims from the perspective of your competition.  As they review the patent claims, they should be asking themselves “how would our competitors – Companies X, Y and Z – make a competitive product or otherwise practice my invention without coming within what is defined by this patent claim???”  In other words, how would our competitors “design around” this patent claim?  Is there a feature of the invention called out in the claim that is really unnecessary to practice the invention or is it possible that certain required features are defined too specifically?  These are the types of questions inventors should be asking themselves as they “evaluate” patent claims.  One technique in this regard is to have the inventor look at each word in a particular patent claim and decide whether every such word is really necessary to claim the invention and/or define the invention over the prior art?  Broader claims that avoid the prior art will force your competitors to avoid the patented technology. 

To the extent a patent claim is poorly drafted, competition can flourish and litigation can ensue.  An example of an opportunity for broadening out a claim, while still avoiding the prior art, includes the case of a claim directed to a quick connect/disconnect connector.  While the preferred embodiment may include a standard, off-the-shelf, BNC-type connector (a “bayonet-type” fitting that requires only a quarter turn to engage and disengage), there may be no need to use the term “BNC” in the claim.  Compare, for example:

            Narrowly-Worded                                                            Broadly-Worded (no “BNC”)

the post being positioned to engage with              the post being positioned to engage with

a slot of a BNC connector to hold the BNC            a slot of a connector to hold the

connector on the sleeve external surface              connector on the sleeve external surface

            A competitor could “design around” the invention defined by the narrower of these claims (i.e., by using a non-BNC connector).  The patent owner would, of course, argue that even a non-BNC connector would still result in infringement of the claim under the Doctrine of Equivalents, but that would involve a fact-based analysis and perhaps hundreds of thousands of dollars in litigation expenses before a fact finder decides whether infringement has occurred or not.

In short, it is of paramount importance to emphasize to your scientists, engineers, and technical personnel to be intimately involved in the claim drafting process (your attorney can make sure the specification meets the statutory requirements in view of the claims).  By keeping in mind two simple questions – “how would I design around the claim?” and “what words in the claim can I delete?” – your inventors can strengthen your valuable patents and, ultimately, save your company significant money by avoiding costly litigation and/or warding off your competition.

In my, admittedly, informal survey of alternative energy articles over the past year, it seems that hydrogen fuel is lagging behind some of the other potential non-fossil fuel sources in press coverage.  The National Hydrogen Association seeks to start changing the dialog with the release today of its report: “The Energy Evolution: An analysis of alternative vehicles and fuels to 2100.”  The report provides an analysis of existing information from peer-reviewed, credible transportation research from organizations such as the U.S. Department of Energy, Argonne National Laboratory, the Electric Power Research Institute, the National Resources Defense Council and the University of California, Davis.

Among the key conclusions are that:

1.   Hydrogen fuel cells are the only way to ensure: a cut of greenhouse gas pollution by 80% below 1990 levels; that the U.S. reaches petroleum quasi-independence by mid-century; that we are able to eliminate nearly all controllable air pollution by the end of the century; and we are able to reduce societal costs by $600 billion per year by 2100. (This scenario includes an important role for a mix of vehicle and fuel alternatives in the near-term.)

2.  The cost of creating the infrastructure needed to facilitate hydrogen fueling is not as expensive as people think.

3.  Investment in hydrogen technology that will bring hydrogen vehicles to the road must be accelerated.

I recently read an interesting article in the March 23, 2009, edition of Newsweek (you might need to register to the Newsweek website to see the article, but it’s free, and just involves giving your name and an e-mail address).  The article was the cover story called “Stop Saving Now” and it discussed the current economic malaise affecting the country and the author’s suggestions on how to get out of it.  The point that the article made is that America’s vibrant economy is fueled by innovation, investment, and a little bit of risk taking.  Our economy will remain stagnant until consumers (potential entrepreneurs) stop saving and start investing, innovating, starting new business ventures etc.  It is an interesting read, but the section that caught my eye for this blog was the section reproduced below:

“The new ethos of thrift, which is as much about efficiency and sustainability as it is about penny-pinching, may have significant applications-beyond green roofs.  Startups in wind power and smart-grid technology are still finding sources of funding.  Small enterprises that install solar panels and conduct energy audits are expanding.  They, and other businesses, will benefit from measures in the recently passed stimulus package to weatherize homes, and make government buildings more energy efficient….”

Innovation and business opportunities in the fast growing alternative energy industry and properly protecting that innovation with existing intellectual property laws could certainly be one hopeful avenue for combating the current economic woes.  Certainly something to think about…

Sorry for the delay since the last post.  We have been working on revamping the site and are excited to announce that we’ll have several other bloggers participating.  We welcome Randy Soriano, John Howley and Keith Pund (see their profiles on the front page), all either IP or Alternative Energy experts who will be contributing from time to time.   Keep your eyes open for other contributors as well, as we grow our community.

Wow - gas prices were $1.74 this morning on my way into work.  The Alternative Energy movement certainly gained considerable steam as oil prices soared close to $140 per barrel. But, with oil prices dropping to close to $50 per barrel, can alternative energy sources compete? 

Probably not in the short term, but it seems that smart money will continue to pursue green solutions because it seems very unlikely oil prices will stay this low for long.

Solix Biofuels Inc.’s president, Doug Henston, believes that algae-based oil will ultimately be able to compete with crude oil prices at $70-80 per barrel.  The problem is, algae-based oil is not yet a completely viable alternative.  At this time, oil can not be produced on a significant enough scale to effectively compete with crude.  But with the research dollars being focused on accomplishing just that goal, $100 crude probably will have returned by the time algae-to-oil is ready for prime time.  At that point, $80 algae-based oil will look like a bargain and the investments being made now will pay off handsomely.

Welcome to Alternative Energy IP - at the intersection of intellectual property and alternative energy.  I look forward to robust discussions about alternative energy policies, changes and developments, especially those issues that imact or are impacted by intellectual property.  I’ll also provide brief updates, where appropriate, of current IP issues.

Get involved! Comment! Suggest topics for conversations!  I look forward to developing a vibrant community in this important and developing technology area.