Time to bone up on green tech patents

Over the past several months, I've received various pitches from PR types representing intellectual property/patent lawyers focused on the green tech patent acceleration program announced by the Obama administration late last year.

The idea behind that pilot was to accelerate the examination of green technology patent applications. Here's what the U.S. Commerce Secretary Gary Locke said when the program was announced:

"American competitiveness depends on innovation and innovation depends on creative Americans developing new technology. By ensuring that many new products will receive patent protection more quickly, we can encourage our brightest innovations to invest needed resources in developing new technologies and help bring those technologies to market more quickly."

Let's be clear, the program covered PENDING patent applications for green technologies. In other word, it was intended to short-circuit the process a bit and hopefully reduce the amount of time it takes to grant a patent. The average time in the past typically has been 30 months for green technology.

When the pilot was launched, the U.S. Patent and Trademark Office said it would consider the first 3,000 petitions for accelerated patent consideration. When I asked for an update earlier this month, I was told that a total of 943 requests for acceleration have been made (far short of that 3,000 number). As of May 3, 2010, there were 58 applications awaiting decision, 335 requests had been granted, 494 requests had been dismissed and 56 requests had been denied.

For almost as many months as the program as has existed, I've been trying to find an angle to write about it, because, frankly, I'm not sure how many people who read this blog regularly would be in a position to file a patent. But Microsoft's decision to sue Salesforce.com for patent infringement got me thinking about this again.

Now, CRM is a much more mature industry than greentech or cleantech, but this got me thinking about how vulnerable greentech startups or innovators might be if some big company decides to play legal bully.

But another, more recent development involving GE and wind turbines, demonstrates that there is much for green tech innovators to ponder when it comes to protecting their ideas. In the most recent twist, Mitsubishi Heavy Industries has sued General Electric for monopolistic behavior and for making "baseline" patent-infringement claims to get ahead in this particular part of renewable energy market. Earlier this year, GE went after Mitsubishi through the U.S. International Trade Commission, claiming infringement related to certain wind turbines. After that request was rejected, GE filed a patent infringement suit against Mitsubishi in Dallas. Since all the activity started, Mitsubishi claims it has been unable to sell its technology in the United States.

Roger Taylor, an intellectual property lawyer at Finnegan, an IP law firm in Atlanta, says to some extent, the lack of much greentech patent protection in the United States might make innovative companies from other countries reluctant to enter the market. "If the patent system works the way it was meant to, it will encourage smaller and more agile companies to spend the effort trying to develop technology."

Indeed, Skyline Solar, which was granted a green tech patent under the accelerated program on May 6, believes that this will help it remain competitive against rivals from other countries. Skyline Solar's new patent covers its high-gain solar photovoltaic modules.

Here's what Skyline Solar's CEO and co-founder Bob MacDonald, had to say in the company's press release about the patent: "The program has turned what used to be a multi-year delay in patent issuance into a process where we received a Notice of Allowance on this applications slightly more than two months after acceptance into the program. By dramatically accelerating the patent issuance process, the U.S. government is stimulating green innovation and reducing risk for technology investors."

So here's what I'm wondering: why haven't more companies taken advantage of the program?

Paul Craane, an intellectual property lawyer with Marshall Gerstein & Borun LLP, suggests there were probably 20,000 pending patent applications that could have been covered by the program. He suggests that the fees associated with the accelerated process may have thwarted some interested in the program. But until a company actually has a patent in place it is out in the market "a little bit on the naked side."

Of course, as the skirmish between GE and Mitsubishi suggests, patents can be used to stifle innovation. One has to wonder just how many more cases might start emerging on the green tech side, especially as some technologies start to generate viable market share. A pending case before the U.S. Supreme Court (Bilski), which pertains to whether "intangible business ideas" can be covered by method patent claims, could also have a major impact on the broad field of intellectual property law. This link provides additional background on that case.