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CIPO to speed up patent exams for green tech A BY KEVIN MARRON green light for an accelerat- ed patent process should give clean tech companies a head start on the road to success. "It can only do good in terms of new job creation and investment in new technology," says Philip Swain, a patent agent at Fasken Martineau DuMoulin LLP, commenting on a Canadian Intellectual Property Office initiative to speed up the patent examina- tion process for green technology. In a sector where commercialization of new technologies may be years away, clean- technology companies may have most of their present value tied to IP, says lawyer and patent agent Mark Sajewycz of Ogilvy Renault LLP. Obtaining patents sooner will give companies a boost, he says, since hold- ing a patent enhances market credibility. "This facilitates financing and collabora- tion opportunities, both of which are espe- cially important for the business success of green technology companies," he says. CIPO is expected to move on the pro- posed changes soon but is playing catch-up with other international jurisdictions that have already implemented fast-track pro- cesses for green patents. However, Swain and Sajewycz say new Canadian rules have the edge over ones in the United States. Swain says more will be covered by Canada's rules. The United States Patent and Trademark Office limits its acceler- ated process to technologies that materially enhance the quality of the environment; materially contribute to the discovery or development of renewable energy resour- ces; materially contribute to the more effi- cient utilization and conservation of ener- gy resources; or materially contribute to the reduction of greenhouse gas emissions. The proposed Canadian rule is broader since it simply refers to "green technolo- gies that could help to resolve or mitigate environmental impacts or conserve the natural environment and resources." Also, the U.S. initiative is a pilot project scheduled to end in December 2011, whereas Canada's will be a legislative change with no expiry date. Therefore, it will permit patent applicants to develop inventions, and file patent applications for ntitled-4 1 such inventions, at their own pace without the added stress of rushing a patent appli- cation filing in order to satisfy eligibility criteria, says Sajewycz. Rushed patent applications are a problem, he says. It's bet- ter to take the time to fully define the scope of the invention before the patent applica- tion is filed. While green technology com- panies will automatically jump the queue at the patent office under the new rules, it will not necessarily be at the expense of other applicants, says Swain. He notes that CIPO still offers an expedited process to appli- cants willing to pay for it. Teamwork, drive, determination As important in law as it is in sport. In our experience, when a team pulls together with drive and determination, they get results. When you're looking for ip counsel with a winning attitude – and record to match – contact the team at Dimock Stratton. Dimock Stratton llp experience. results. 20 Queen W. 32nd fl, Toronto | 416.971.7202 | dimock.com www.CANADIAN Lawyermag.com JAN UARY 2011 45 9/13/10 9:43:14 AM