I. Introduction

Climate change has an influence on various aspects of life, including public health, tourism, investment and talent attraction. In certain regions, for instance, the more frequent occurrence of a haze, has altered people’s outdoor activities, and potentially affected the health of sensitive populations. Recently, particulate matter 2.5 (PM2.5) which has become an important indicator in a weather forecast and drawn more public attention.

As a developing country and new market, China is facing the issue of climate change, which is urgent to be dealt with. The government is endeavoring to improve the environment, encouraging the application of new energies, and controlling air pollution via green technologies. For instance, use solar energy and environment-friendly fuels like ethanol has been encouraged. In 2013 Beijing International Garden Expo, solar system was used to provide clean energy. Also, the annual shale gas output would be boosted under the policy issued by the National Energy Administration in October 2013.

IPRs play a key role in modern economics, in terms of encouraging innovations, attracting investors, facilitating entry into new markets and enabling effective collaborations. The IP system of China is developing dramatically in recent years. With the aim to drive the optimization of industry structure, to promote the implementation of the national IP strategies, and to expedite the establishment of an innovative country, SIPO released its Administrative Measures on Prioritized Examination of Patent Applications (the Measures, which came into force on August 1st 2012). Prioritized patent examination for industries such as clean energy was also listed in the National IP Strategy Plan 2013.

II. Analysis of the Measures

To have an overview of the Measures, the substantive and formality requirements as well as the timeline set forth in the Measures are summarized in the Table below.

From the above formality requirements, it can be seen that a request must be filed with a branch office of SIPO at the provincial level (provincial branches of SIPO) first, and the branch office may open the door for the “green channel.” Individual provincial branches of SIPO are authorized to implement the guidelines for the requirements. The above requirements will be analyzed in view of the guidelines issued by some provincial branches of SIPO.

1. Qualification of an applicant

To request for the prioritized examination, the first question to be answered is who is qualified to file such a request. The answer to this question can be found in the guidelines issued by provincial branches of SIPO. Take, for example, Beijing, Shanghai and Shenzhen which are active in innovation and patent filing. In the guidelines available on the website of Beijing Patent Office, it is requested that, if the applicant is an entity, the officially sealed business license of the entity, power of attorney to the contact person issued by the entity, copy of the identity card and the contact information of the contact person be provided, and, if the applicant is an individual, the copy of the identity card and the contact information of the individual be provided. In the guidelines issued by Shanghai Patent Office, it is requested that the applicant be an entity registered in Shanghai or an individual with a (permanent) residence permit in Shanghai. Materials which may demonstrate the identity of the entity or the individual shall be provided. Regarding Shenzhen, the rules are similar: the applicant shall be an entity registered in Shenzhen or an individual who holds a residence permit and works or studies in Shenzhen.

It can be seen that, to request for the prioritized examination, a proviso is that the applicant is an entity registered in the corresponding province (or municipality directly under the central government), or an individual with a residence permit in Table 1 Substantive Requirements (Eligibility) (1) important patent applications in the technical fields of energy-saving and environmental protection, new generation information technology, biotechnology, high-end equipment manufacturing, new forms of energy, new material and automobiles using new forms of energy (2) important patent applications that contribute to green development, such as low-carbon emission and energy and resource conservation (3) patent applications first filed in China before filing in other countries (4) patent applications important for the national or public interest Formality Requirements (1) applications filed electronically (2) substantive examination has been initiated (3) materials to be submitted to SIPO: - a request for prioritized examination reviewed and endorsed by a branch office of SIPO at the provincial level - a search report issued by a qualified searching entity, or search report and examination results issued by the patent offices of other countries or regions, and the Chinese translation thereof Timeline (1) The First Office Action will be issued within 30 days from the grant of request for a prioritized examination; (2) a response to an Office Action has to be made with 2 months, without time extension; and (3) a prioritized examination will be completed within one year from the grant of request for a prioritized examination.

2. “Important Patent Applications”

Another concern of the applicants is what inventions may constitute “important patent applications.” As the Measures did not define the meaning of the term “important patent applications,” the guidelines of provincial branches of SIPO are left to issue their own interpretations with marked discrepancies for this term, which are inconsistent, or even conflicting.

In the guidelines of Shanghai Patent Office and Shenzhen Patent Office, there is no explicit provision on the certification or proof of “important patent applications.” Instead, in the guidelines of Beijing Patent Office, it is requested to present relevant supporting materials issued by administrations above national ministries and commissions or issued by relevant departments in Beijing. In addition, in the guidelines of Zhejiang and Heilongjiang Patent Offices, important patent applications eligible for the prioritized examination may include those which are under counterfeiting, technology transfer, or are important projects in the province. Relevant evidences shall be presented to demonstrate an application pertains to the enumerated categories.

I. Brief comparison of the prioritized examination in China with those in other countries

As addressed above, a growing number of countries have opened “ green channels ” for green technologies, with the initial one by UKIPO in 2009. Later on, South Korea, Japan, the U.S., Australia, Israel and Canada also set up similar programs. Upon an overview of the programs in these countries, requirements are diverse in aspects of both substance (eligibility) and formality. For instance, in the U.K., it merely requires an assertion that a patent application is directed to environmental-friendly technologies, without the necessity of providing evidences. In contrast, South Korea uses a classification system including 8 categories. Specifically, regarding the 8th category for which South Korea has a great share in the market, a patent application is eligible only if the invention has “received financial support or certification from the government,” and to apply for the necessary certification, a non-Korean applicant must have a separate corporate entity with a branch office in Korea.

In comparison of the rules in China with those in other countries, it can be seen that, on the one hand, the substantive requirements in China are quite flexible in view of the fact that the technical fields are broadly defined (i.e., applications that “contribute to green development”), but on the other hand, the formality requirements, in particular the qualification for an applicant, may be exotic to foreign companies.

IV. Discussion and proposals

1. The prioritized examination in China

Prioritized examination program is a “green channel” for applicants to obtain a patent in a time and cost efficient way. The program has come into force for more than one year in China. It is learnt that a relatively limited number of applications have passed the green channel and jumped to the front of the queue as of the issue of the Measures. The roadblocks may be the high standard for the “important patent applications,” exotic formality requirements, or insufficient awareness of the Measures.

Although it is not explicitly defined in the Measures that merely domestic entities may apply for the prioritized examination, from the guidelines issued by the provincial branches of SIPO, it appears that qualified entities are limited to those registered in the corresponding provinces. This is a great favor for domestic companies, especially startups. In addition, with the dramatic setup of branches or research centers in the main cities such as Shanghai, Beijing and Shenzhen by international companies in recent years, these international companies may also have opportunities to take the advantage of the Measures with the proviso that such branches are separate corporate entities in China. But, for international companies which have no branches in China, it is not promising for them to step into the “green channel.”Considering that many international companies are leaders in green technologies, it is proposed that the door may be open to such companies, at least when an application is filed by a domestic company and a foreign company as co-applicants, considering the extensive research collaborations among scientists or entities from different countries.

Regarding “important patent applications,” the exemplified types of “important patent applications” are set forth by the provincial branches of SIPO, which may reflect the needs of individual areas. Nevertheless, this may bring about inconveniences and uncertainty for the applicants. It is proposed that SIPO may set unified standards for “important patent applications.”

Harmonization of prioritized examination programs at the international level was proposed by expert, so to establish “a standardized www.chinaipmagazine.com 3-4/2014 China IP 71 and balanced international system of expedited examination.” Although the harmonization at the international level may not fit the current status in China, the “harmonization” of the guidelines issued by the provincial branches of SIPO may facilitate the implementation of the program and benefit the applicants.

To enhance the awareness of the expedited examination program, the allowance of green technologies via the prioritized examination may be published quarterly or annually, so as to make the public realize the valuable green technologies, to attract the attention of potential partners and investors, and to get funding from the government. Further, IP practitioners may introduce the program when designing strategies for enterprises, universities, research institutes or individuals.

2. Combination of the prioritized examination with other “highways”

The Measures provides a pathway towards the fast allowance of a patent. And this pathway may be combined with other “highways” to more effectively realize the value of green technologies. Currently, SIPO has cooperation with patent offices including USPTO, JPO, KIPO, inter alia, via Patent Prosecution Highway (PPH). An applicant obtaining a patent via the prioritized examination program may take the advantage to file international applications via the PPHs. It is worth noting that the five main patent offices, namely USPTO, EPO, JPO, KIPO and SIPO launched a comprehensive joint IP5 PPH pilot program as of January 2014, which may accelerate the patent prosecution in front of the patent offices.

3. Platform for green technologies

Obtaining a patent is the first step and a milestone for the following commercialization and enforcement of the patent. In modern economies, effective commercialization plays an essential role in embodying the value of an invention. In this aspect, the World Intellectual Property Organization (WIPO) gives an inspiration on how to exploit green technologies. On November 28th 2013, WIPO launched WIPO GREEN which seeks to accelerate the adaptation, adoption and deployment of green technologies. WIPO GREEN is not only a free database which provides access to relevant patent information, but also a platform for dissemination of green technologies which make these technologies available for licensing or partnership agreements and for knowledge sharing with experts worldwide. Considering the strong desires for effective green technologies in China to address the environmental issues, it would be favorable if a platform like WIPO GREEN with the functions of patent searching and commercialization is available to the public.

In summary, it will be a system to facilitate the development of green technologies through IP strategies in China, from the expedition of patent examination via administrative measures to the downstream platform for the exploitation and commercialization of the green patents.