Green Patents: International Trade Commission terminates investigation into allegations of infringement of wind turbine technology patents
Co-authored with Cyrus Frelinghuysen.
On January 8, 2010, the US International Trade Commission (ITC) issued a notice of its decision to terminate a Section 337 investigation into whether Mitsubishi Heavy Industries Ltd. and two of its subsidiaries had infringed three General Electric (GE) patents related to wind turbine technology. GE plans to appeal the ITC’s decision to the U.S. Court of Appeals for the Federal Circuit. The investigation stemmed from a February 2008 GE complaint with the ITC. GE claimed that wind turbines imported by Mitsubishi infringed GE’s U.S. Patent Nos. 5,083,039; 7,321,221; and 6,921,985.
Continue Reading...U.S. PTO launches Green Technology Pilot Program to fast track processing of green patents
Co-authored with Cyrus Frelinghuysen.
On December 7th, just hours before the United Nations Climate Change Conference was set to begin in Copenhagen, the U.S. Patent and Trademark Office (PTO) announced the launch of its Green Technology Pilot Program to speed the processing of green patents. The Program is initially set to run for only twelve months. At the end of that period, the PTO will determine whether to extend the program based both on the efficacy of the program and on feedback from participants. In addition, under the program, the PTO will accept a maximum of 3000 applications, but will reevaluate the resources needed to extend the program should the PTO receive more than 3000 applications.
The announcement was made at a joint event held by the Department of Commerce and the Department of Energy. At the event, Department of Energy Secretary Steven Chu also announced that $100 million in funding from the American Recovery and Reinvestment Act, which President Obama signed into law in February, will be made available to accelerate innovation in green technology, increase America’s competitiveness, and create jobs.
Continue Reading...Green Patents: The patent system's "fuel of interest" and the promotion of technological innovation
*Co-authored with Cyrus Frelinghuysen.
IPLaw360 recently reported that Clean Energy Patents Reached a New High in Q2. According to the most recent Clean Energy Patent Growth Index report, the U.S. Patent and Trademark Office (PTO) issued 274 “green” patents in the second quarter of 2009.[1] One might expect that those who regard technological innovation as a necessary tool to combat climate change would welcome the continued increase in the issuance of green patents. Nonetheless, there remains disagreement regarding whether the patent system and the enforcement of intellectual property rights will promote or hinder technological innovation with regard to climate change.
Continue Reading...Countdown to Copenhagen: The debate over technology transfers and the protection of intellectual property
The debate over the role of technology transfers in any future climate change treaty is set to intensify as the UN Climate Change Conference in Copenhagen approaches. On one side, there are those who believe that intellectual property (IP) rights should not stand in the way of international cooperation on climate change. For example, Secretary of Energy Stephen Chu has suggested that it may be necessary to “share all intellectual property as much as possible,” especially when it comes to certain vital technology like systems for capturing and storing carbon dioxide. A report issued this month by the Center for American Progress and the Global Climate Network warns: “Intellectual property (IP) law can also act as a barrier, and measures to encourage companies to use or relinquish IP (and in some circumstances to use the flexibility already available through the World Trade Organization’s TRIPs agreement) may be necessary.” The report recommends that “patents could be withdrawn if developers seek inappropriately high rents from their IP protection or use IP to restrict a technology’s use.”
In contrast, groups such as the Global Intellectual Property Center (GIPC) of the US Chamber of Commerce and the Coalition for Innovation, Employment and Development (IDEA), an alliance of multinational corporations, worry that the inclusion of technology transfer provisions in any climate treaty poses a serious threat to the protection of IP rights. For example, a report issued by GIPC warns that there is “a growing movement of anti-IP activists drawn from universities, foundations, non-governmental organizations (NGOs), ideologically driven interest groups, and even governments. These activities promote the idea that IP rights should not be recognized and that the protection of IP impedes progress and hurts the poor.” In an interview with the New York Times, the head of IDEA refuted the notion that IP rights are an obstacle to cooperation on climate change:
Continue Reading...Green Patents: Judge rejects enablement defense in case involving bioremediation patents
Co-authored with Cyrus Frelinghuysen.
On May 19th, in a case involving alleged infringement of bioremediation patents, Judge Jack T. Camp of the US District Court for the Northern District of Georgia granted summary judgment to Plaintiff ChemFree Corporation with regard to Defendant J. Walter Inc.’s enablement defense, holding that:
“[T]he undisputed evidence in this case indicates that it would not have required undue experimentation for a person of ordinary skill in the art to make and use the patented parts washer in 1994. Although the specifications do not describe the process in detail, one of ordinary skill in the art would have either known the procedures to follow or been able to conveniently acquire the necessary information.”
The use of bioremediation has grown increasingly popular since the adoption of the Montreal Protocol in 1989, which phased out ozone-depleting substances commonly used in cleaning products. For example, the US Environmental Protection Agency has reportedly been using a bacteria at a Superfund site in New Jersey to clean up trichloroethylene that had contaminated local drinking water.
Continue Reading...Green Patents: setting royalties for clean technology
Co-authored with Cyrus Frelinghuysen.
On April 17th, Judge David J. Folsom of the US District Court for the Eastern District of Texas issued an order in Paice LLC v. Toyota Motor Corp., increasing the royalty rate that the Toyota Motor Company must pay Paice LLC for sales of Prius, Highlander, and the Lexus RX400h vehicles found to infringe a Paice patent involving hybrid vehicle technology. Judge Folsom had previously ordered Toyota to pay $25 per infringing vehicle but on remand raised the rate to roughly $98 per vehicle.
The decision stems from a series of lawsuits Paice brought against Toyota alleging infringement of its patents related to hybrid electric vehicles. Paice filed its complaint in this particular case in June 2004. A jury later found that Toyota had infringed two claims of US Patent No. 5,343,970 for drive trains for hybrid electric vehicles. Paice was awarded $4,269,950 for past infringement, but Judge Folsom denied Paice’s request for injunctive relief in light of the Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006). Instead, Judge Folsom ordered Toyota to pay Paice an “ongoing royalty” of $25 per infringing vehicle until the expiration of the patent.
Continue Reading...USPTO's TTAB approves "Green Indigo" trademark
The USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) recently reversed an examining attorney’s refusal of the mark GREEN INDIGO for clothing. In In re Jones Investment, Inc. (Ser. No. 77/249,189) (TTAB Jan. 21, 2009), the Board reversed the examiner’s holding that the mark was merely descriptive of clothing items identified in the application. The Board held that GREEN INDIGO is, instead, “suggestive” of the goods and therefore eligible for registration on the principal register. This ex parte holding suggests that the Board may be amenable to preserving some “green space” on the principal register, despite the flood of “GREEN” applications pending in the USPTO.
Continue Reading..."Green" patent issuances hit record high in 2008
IPLaw360 reports that more clean energy patents issued in 2008 than in any year since the data has been tracked. According to the Clean Energy Patent Growth Index report, Fuel cell patents account for the highest proportion of the 928 newly-issued patents, while there was also substantial growth in the number of wind patents. Also on the rise were patents issued in hydroelectric, tidal, and geothermal technologies.
Continue Reading...Investment in "clean" technologies likely to fuel rise in IP litigation
A recent Australasian Legal News report noted that "climate change work flows will . . . provide a good line of business for intellectual property (IP) lawyers." Investment in "clean" technologies – those that either replace technologies that generate greenhouse gases, or that reduce greenhouse gas emissions from existing technologies – is expected to rise around the globe. The report projects that there will be "significant patent and trademark litigation work, since companies will try to protect their innovations and brands in the credit crunch as they position for the recovery."
Continue Reading..."Green" trademarks face hostile climate in USPTO (Part II)
Part II: Greening of the USPTO Trademark Trial and Appeal Board
(Part I of this article described the USPTO’s examination of GREEN trademark applications. Part II focuses on Trademark Trial and Appeal Board cases involving GREEN trademarks.)
Applications for registration on the USPTO’s principal register face two rounds of challenges prior to registration: examination and opposition. Any GREEN trademark application that clears the USPTO examiner’s hurdle must then run the USPTO’s opposition gauntlet. Any entity who believes that it would be damaged by the registration may file an opposition in the USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) within thirty days after the mark is published for opposition (15 U.S.C. § 1063). Even after registration, marks still face a potential hurdle in the form of cancellation actions. (15 U.S.C. § 1064).
Continue Reading..."Green" trademarks face hostile climate in USPTO
Trademark applications that include the word “GREEN” have hit the United States Patent and Trademark Office (“USPTO”) like a tsunami in recent years. A quick search for pending “GREEN” trademark applications reveals thousands of hits, many of which relate to (hopefully) environmentally-friendly goods or services. In response, USPTO examining attorneys have been laying out sandbags—in the form of descriptiveness refusals—to stem the tide.
The USPTO is likely to dispense with “GREEN” marks in the same restrictive manner it resolved the tech boom filings relating to “i,” “e,” “dot-com,” and other similar marks. It appears likely that it will issue a precedential ruling that will provide direct guidance to GREEN trademark applicants and registrants regarding the scope of protection for their marks. The USPTO may also issue a formal GREEN examination guideline for its examining attorneys. In the end, GREEN marks are likely to be afforded a very narrow scope of protection. As a result, if you’re a commercial enterprise “thinking green,” you’re not alone in the marketplace and you won’t be alone on the trademark registry. From a trademark perspective, the term “green” is unlikely to distinguish your goods or services from those of your competitors.
Continue Reading...Europe considering fast track procedures for "green" patents
The European Patent Office and the European Commission recently organized a forum to consider whether green friendly changes to the European IP system were necessary in order to encourage technological development in key fields. Günter Verheugen, Vice President of the European Commission spoke of the urgent need for progress on the European Community Patent and indicated that he was in favor of fast track procedures for "green" patents. Such a procedure, however, would likely be unworkable. Most patent applications have at least some claim to being environmentally conscious – by use of more efficient processes or alternative, cleaner raw materials. Their inventors or applicants are, however, not always concerned with a speedy outcome to the procedure.
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