Clean Power Technology Protection

Posted on Jun 24, 2013

Clean Power Technology Protection

As the pressure on “going green” increases internationally, eyes are turned to the protection of intellectual property and its mechanisms and particularly the question as to whether the World Trade Organization agreement on Trade Related Intellectual Property Rights (TRIPS) should include special flexibilities for access and dissemination of environmental sound technologies such as they occur in the fields of health or nutrition and how can this be of benefit?

It is argued that the IP system has been associated with some limitations with regards access or spread of technologies and while there has been a call on developed nations to assist developing nations through technology transfer: has that actually been happening?

Some argue that South Africa is pushing the clean power agenda but are we paying due attention to IP laws and able to leverage this accordingly?  Are our existing IP laws able to support clean power innovation.

This article aims at providing an overview of the current situation as perceived by the author.

Clean power technology is a general term used to describe products, processes or services that reduce waste and require as few non-renewable resources as possible. The Clean Technology Trade Alliance, a global initiative to drive the expansion of clean power technology, defines it as “A broad base of processes, practices and tools, in any industry that supports a sustainable business approach, including but not limited to: pollution control, resource reduction and management, end of life strategy, waste reduction, energy efficiency, carbon mitigation and profitability”

Enhancing technology transfer towards developing countries has been an integral part of the global climate change regime since the inception of the United Nations Framework Convention on Climate Change (UNFCCC).  The UNFCCC was established in 1992 and entered into force on 21 March 1994.  The ultimate objective of the Convention is “to stabilise greenhouse gas concentrations at a level that will prevent dangerous human interference with the climate system.

Many papers, conferences and policy development work in collaboration with WTO, OECD (The Organisation for Economic Cooperation and Development (OECD) provides a forum in which governments can work together to share experiences and seek solutions to common problems. The mission of the OECD is to promote policies that will improve the economic and social well-being of people around the world) and the ICTSD (Founded in 1996, the International Centre for Trade and Sustainable Development (ICTSD) is an independent non-profit organization based in Geneva, Switzerland.  ICTSD’s vision is a sustainable world supported by national, regional and international trade policy and frameworks that favour inter- and intra-generation equity.  ICTSD aims to ensure that sustainable development is advanced through trade-related policy and agreements) have seen the light guiding initiatives on development and access to clean power technologies.

The role of intellectual property rights (IPRs) in the transfer of climate change technologies has emerged as a particularly contentious issue in the past few years. Clean energy investments in particular as the technologies involved are both research and capital-intensive and investors want to be able to capture the benefits from their technological innovations through strong IPRs. At the same time, IPRs can be perceived as a barrier to the access and transfer of clean energy technologies from developed and emerging economies to developing countries.

The analysis of the impact of IPR regimes on technology innovation and transfer in clean energy technologies is a relatively young field of research in which comprehensive empirical and econometric analyses have only recently been undertaken.  Most of the research on how IPRs affect technology transfer in clean energy is inconclusive, partly because information is not readily available and methodologies are not necessarily comparable.

If one looks at the patent landscape an increase in patenting clean energy technology as opposed to fossil fuel energy can be seen.  The patenting activity across all clean energy technology appears to be dominated by Japan, US, Germany, Korea, Great Britain and France. Recent OECD work has shown that in the case of African markets very few (about 1%) climate mitigation and adaptation technologies are actually protected under IP regimes.  The importance and impact of IPRs on the transfer of technology are likely to be context specific. In remote rural locations of low-income countries for example, the need to expand energy access requires the rapid deployment of well-known renewable energy technologies, for which IPR protection might be less critical.

The policy debate on IPRs and access to clean technologies recently continued at an ICTSD workshop in South Africa.  Specific suggestions were the expanded use of TRIPS flexibilities to facilitate access to clean technologies by developing countries by promoting patent pools and funds to finance technology transfer of clean technologies, to facilitate licensing (including compulsory licensing), fast tracking of green patent applications or even excluding certain clean energy technologies from patent protection in developing countries.

It is arguable that the World Trade Organisation agreement on Trade Related Intellectual Property Rights (TRIPS) provides a framework sufficiently flexibility for access to these technologies. Article 7 of TRIPS states the objective to be “The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.”    There is no specific limitation on the type of technologies it applies to.  Article 66 provides for assistance to developing economies and Article 31 specifically provides for compulsory licenses under given circumstances.  Leveraging the access to clean technologies through TRIPS is possible, it is simply a matter of interpretation and application by the various member countries.

The WTO actively cooperates with the OECD in different ways. The WTO Director General regularly participates to the OECD Ministerial Council Meeting (MCM) and OECD Forum. It is my view that through this collaboration the guidelines and policy issues are addresses and disseminated.  In April 2013 the OECD published its revised and non-binding policy for investment in clean energy infrastructure. Areas covered by the policy guidance for investment in clean energy infrastructure includes intellectual property and particularly addresses “What steps is the government taking to protect intellectual property rights for clean energy technologies? What steps is the government taking to facilitate patenting of innovations in clean energy? Has it set up a ‘fast-track’ system to reduce the time for patent application?”

Whether it is the drive of WTO, OECD, ICTSD or UNFCCC, many countries have in fact implemented fast tracking of green patent technology applications with the European Patent Office (EPO) and USA being the most sophisticated.  In the case of the EPO a new patent classification system was implemented dedicated to climate change mitigation technologies, which enables a continuous and reliable flow of data on selected technologies and their application in the energy field.  The EPO uses the features of the patent system to produce structural transparency regarding climate change mitigation technologies, the EPO is delivering a significant contribution in the fight against climate change and sending a strong signal that the Office is ready to assume broader responsibility in a societal context.

On the South African Agenda to comply with the TRIPS agreement and other international, regional and bilateral agreements and stakeholder demands,

South Africa has over the years updated and reformed its IP and patent laws, related legal frameworks and institutions.  As a member of WTO South Africa is obliged to mandate a minimum level of patent protection for inventions.  Provided that the patentability requirements are met inventions covering clean technologies are patentable.  The South African Patents Act does not discriminate between inventions.  As it stands clean power is no more advantaged or disadvantaged than any other industry.  South Africa is a non-examining country, thus patents are granted relatively quickly and as such an accelerated granting of these type of inventions, may not necessarily lead to any advantages.

South Africa has incorporated basic flexibilities such as compulsory licensing, government use and ex-officio licences and research exemptions into our patent law.  The legal regime allows for voluntary licensing, including prohibitions on certain anti-competitive licensing practices.

The South African Patents Act makes provision for compulsory licensing (Articles 55 and 56) as well as licenses of Right (Article 53).  Article 53(1) states “At any time after the date of the sealing of a patent, the patentee may apply to the registrar for the patent to be endorsed with the words ‘licences of right’ and where such an application is made the registrar shall, if satisfied that the patentee is not precluded by contract from granting licences under the patent, cause the patent to be endorsed accordingly.”

Article 56(d) allows compulsory licensing if “by reason of the refusal of the patentee to grant a licence or licences upon reasonable terms, the trade or industry or agriculture of the Republic or the trade of any person or class of persons trading in the Republic, or the establishment of any new trade or industry in the Republic, is being prejudiced, and it is in the public interest that a licence or licences should be granted.”

As such the legal framework allows for access to technology where it is not “freely” available.

It is a fine balance of protection and freedom to use. Moreover, the patent system provides a legal framework to support technology transfer through licensing agreements, and without patents to protect their products and processes, the innovative technology leaders may be reluctant to engage in technology transfer and associated investments.  In South Africa we must foster innovation and growth and therefore have to establish and/or maintain a high quality patent system and enforceability of IPRs.  This however, in alignment with TRIPS framework, must not be to the detriment of public interest.

As was the case of HIV/AIDS drugs, governments, industry and activists grappled with the issues that affect access to life-saving medicines, and attempts to find solutions to these problems.

Finding the appropriate balance between encouraging innovation through intellectual property protection and making much needed technology more widely available is not an easy task.  Maybe what we need is an IP and climate change agreement that moves beyond the current IP framework provided by TRIPS and other known related IP frameworks.

With respect to the topic of clean power technologies, whether the South African government has an agenda for pushing clean power is debatable.  Quite some investment is made on alternative energy sources such as the building of power stations, I am afraid I do not see the same investment in clean fuel energy projects.

Dr Madelein M Kleyn

Patent Attorney


OECD 2012; Haščič et al., 2010; UNEP, EPO, ICTSD, 2010

Patent landscape report published in 2010 by United Nations Environment Programme (UNEP), the European Patent Office (EPO) and the International Centre for Trade and Sustainable Development (ICTSD) announced in  joint project on the role of patents in the transfer of climate change mitigation technologies

29 May 2013 – UN workshop on clean technologies – South Africa