Green Tech Patents - How Canadian Government is Helping the Process

With the world beginning to reopen following the COVID-19 pandemic, many of us may be feeling a new mindfulness when it comes to the environment and the effects that our civilization has had on it.

Similarly, with many inventors focusing on technologies that either help resolve or mitigate environmental impacts, or conserve the natural environment and resources that are present, perhaps it is a good time to turn our attention towards the intersection of patent rights and the environment.

Several jurisdictions around the world have implemented special legislative provisions that incentivize the patenting of inventions that are geared to help, or preserve, the natural environment. In this article, we’ll take a look at how Canada has implemented such provisions.

Canada’s Patent Rules provide a mechanism for advancing examination for “green technologies”. Examination is the process by which an application for a patent is scrutinized by an Examiner at a patent office, in order to determine whether the application meets the necessary criteria to issue as a patent. The examination process can typically take 2 to 5 years. In select cases it can be shorter, while in others much longer. Therefore, being able to take advantage of an advanced examination process can allow for inventors or companies to possess the enforceable right much sooner.

Rule 84 (1) of the Patent Rules states:

In respect of an application for a patent that is open to public inspection at the Patent Office, the Commissioner must advance out of its routine order the examination of the application on the request of

(b) the applicant, if the applicant files with the Commissioner a statement indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources.

According to the Organization for Economic Co-operation and Development (OECD), Canada saw a 16% increase in the number of environmental technology patents filed between the years 2000 and 2011. While this increase is definitely good news, Canada is still lagging far behind many other countries, such as the UK, which experienced an increase of 63%; Mexico, which experienced an increase of 149%; Brazil, which experienced an increase of 185%; and China, which experienced an increase of a whopping 1040%, all during the same timeframe.

The Canadian Intellectual Property Office (CIPO) states that in order to take advantage of the advanced examination process, applicants need to submit a letter that includes:

1. a request for an advanced examination;

2. a statement indicating that the application relates to technology that if commercialized would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources; and

3. an early laid open date (only if the request is made before the application has been opened to public inspection, usually 18 months after the filing date).

Typically, once the request for advanced examination of a green technology is processed, the first office action can be expected within 3 months. It is important to remember however, that if time extensions to reply are requested or if the prosecution process is abandoned, the application will be removed from the expedited process and returned to the regular process.

If you have created or invented something relating to the environment or green technologies which you feel may be patentable, please feel free to reach out to MBM for a free consultation.

For more information please contact:

Osman Ismaili, Patent Associate
T: 613.801.1054
E: oismaili@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Tips For Startups: How To Make Sure Your IP Is Working For You

Two things that startups never seem to have enough of are: time and money. It can be difficult to carve out enough of both to properly identify, manage, and protect your intellectual property (IP). Your IP, including your patents, industrial designs and trademarks, is at the center of your company’s value. As a result, protecting your IP is crucial and will give your company the boost it needs to succeed in a competitive marketplace. Knowing your IP is essential to identifying your competitive advantage, focusing your R&D efforts, and creating an innovative company culture. IP should be the main component of your business plan and your pitch to customers and investors as it is normally your main selling point.

As a startup, you already have passion for your business, and you are convinced that you will be successful. Now, in order to apply your passion to the right strategy, you should ask yourself a series of questions to help pinpoint and identify what IP you currently possess and if it is valuable:

• What you are doing that is new? What new features have you added, or improvements have you made lately?
• What makes your product better, or faster, or more accurate, or more efficient than your competitor’s products?
• What features of your product do customers value the most when making purchasing decisions?
• Is your company name or logo unique in your industry? Did you check to make sure no one else has it registered as a trademark?
• Have you designed a new product with a distinctive name, product shape, physical design or packaging?
• Once you choose your name and logo, have you been consistently using it on your products, packaging, marketing materials, your website and your social media? Document the date you first used it!

One way to answer these questions is to formally evaluate your IP, you could use an IP law firm to do it, which is always recommended but you could also try to figure it out yourself by doing some market and competitor research.

Ideas born from your IP evaluation can form the basis for the future direction of your R&D, which will eventually turn into more patents, industrial designs, and trademarks that you will want to protect and leverage going forward.

Now that you have defined your “secret sauce” you can use it in several ways:

• File a patent to demonstrate that you have a technological advantage important enough that you are willing to invest in a patent to protect it.
• Gain credibility with financial investors and VCs. Include it in your pitch and highlight it in your business plan.
• Get your sales and marketing people to highlight the IP incorporated into your products when interacting with customers.
• Use your IP to develop and foster a culture of innovation in your company. Celebrate inventors to encourage the generation of new ideas.
• Leverage your IP to form strategic partnerships and alliances to scale up your business or license out your IP for royalty revenue.
• Build and protect your brand by consistently monitoring your trademarks to make sure no competitors are using them, and cause customers to mistake a competitor's product for yours.

Your IP is already there. However, you need to take the time to identify it, protect it, then learn how to artfully articulate it to investors and customers to get the most out of it.

For more information please contact:

David Fraser, Patent Agent                                                                                                                             T: 613.801.0169
E: dfraser@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.