USA: As the world seeks agreements to phase down high GWP refrigerants, a leading US group has dismissed claims that patents are a barrier to the adoption of new technologies.
Issues surrounding intellectual property rights (IPR) were again raised by some Article 5 (developing) countries at this week’s Montreal Protocol Open-ended Working Group (OEWG) meeting in Geneva, where negotiations continue to agree an HFC phase-down. Arguing that patents for the so-called fourth generation, low GWP, HFC substitutes are held by a small number of Western multi-nationals, some countries have raised concerns surrounding access to, and the cost of, patent-licensing.
In a document released on the eve of this week’s OEWG meeting, the Center for Climate and Energy Solutions (C2ES) has set out to answer what it sees as some myths surrounding intellectual property rights and their potential to be a barrier to an increased use of HFC alternatives.
The US-based organisation describes itself as an independent, non-partisan, non-profit organisation working to advance strong policy and action to address climate and energy challenges. Launched in 2011, it is the successor to the former Pew Center on Global Climate Change.
Countering claims that IPR is not considered in the Montreal Protocol, C2ES maintains that the Protocol’s Multilateral Fund for Article 5 countries specifically includes funding for costs associated with patents and royalties.
It also says that while there are a huge number patents on HFC alternatives, the majority of these have either not been granted, will be allowed to lapse, rejected by patent authorities or challenged by competitors. C2ES uses an example the case of patents for HFO R1234yf where, out of 1,428 patents for the refrigerant filed in the US, only 477 had been granted. In India, just 12 out of 116 patents had been granted.
Some Article 5 Parties have voiced concerns that even if chemical companies in their countries develop their own unique way to produce HFOs, the large number of patents on their use would prevent them from selling these alternatives. C2ES points out that chemical companies will not be able to make the necessary investments in production facilities unless barriers to marketing their product are overcome.
Although not mentioned by C2ES, last year Japanese manufacturer Daikin, in an effort to increase the uptake of alternative refrigerant R32, offered free access to its application patents.
Several HFO applications patents have also been challenged and overturned. The European Patent Office revoked one of Honeywell’s application patents in 2012 and the US Patent Office, in re-examination hearings, invalidated all the claims in four Honeywell HFO application patents. A number of other challenges to application patents have been filed and are in various stages of review.
In any case, C2ES maintains that many of these patents, while typically in effect for 20 years, will expire within the next 10 years. This is because many patents merely build on an earlier patent filed by the same entity. These newer patents retain the original expiry date of the parent patent. A significant number of the patents filed on HFC substitutes have priority dates in the 2000s and will therefore expire in the 2020s. For example, a production process patent on HFO1234yf filed by DuPont in India in 2008 has a priority date of 2005 and will therefore expire in 2025.
Patents are also not limited to the large transnational companies. While they were responsible for many of the initial HFO patents, production process patents have since been filed by a larger number of companies, many of them in China.
Also, there are already several facilities planned or in production in China and India to produce the alternatives. In addition to two R1234yf plants in the US and two in Japan, C2ES lists two facilities in both China and India either planned or already in production. In the case of R32, the C2ES report lists 13 production plants in China, two in India and one each in Japan and the USA.