Frequently Asked Questions

Please see the frequently asked questions below. If you have other questions, please contact the Environmental Law Institute at ecopatent@eli.org.

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  1. Is the Eco-Patent Commons philanthropy or a business opportunity?
  2. How does the Eco-Patent Commons foster and promote innovation?
  3. How is the Eco-Patent Commons enhancing business collaboration for the businesses pledging and using the pledged patents?
  4. Who hosts the Eco-Patent Commons?
  5. What is the Environmental Law Institute?
  6. How is the Eco-Patent Commons structured?
  7. How is the Eco-Patent Commons funded?
  8. How is the Eco-Patent Commons promoted and publicized?
  9. Who determines whether a patent is worthy of being included in the Commons?
  10. Are only patents that provide an “environmental benefit” to be included in the Commons?
  11. Do businesses have to provide all of their environment-related patents to the Eco-Patent Commons?
  12. Is there an effort to “translate” the legal language of the patents into a text that would be more readily understood by potentially interested parties?
  13. Are the patent pledgers required to provide ongoing help to people who are trying to understand the patents the participants have pledged?
  14. How is the Eco-Patent Commons growing?
  15. Who are the current companies participating in the Eco-Patent Commons?
  16. How is the effectiveness of the Eco-Patent Commons being measured?
  17. Do patent holders need to continue to pay the expense of maintaining the patents they have pledged? Why wouldn’t they just let the patents lapse and not incur the expense to maintain them?
  18. What is defensive termination?
  19. Can the non-assert pledge be terminated?
  20. Is it possible that the cost of maintaining the pledged patents could be reduced under “license of right” rules?
  21. Is it possible that pledged patents could be considered “charitable donations” and be subject to tax deductions for the annual patent renewal fees?
  22. What should businesses interested in joining the Eco-Patent Commons do?
  23. Does a business have to be a member of the WBCSD to be a member of the Eco-Patent Commons?

 

1) Is the Eco-Patent Commons philanthropy or a business opportunity?

It is both. While the Eco-Patent Commons clearly has an important philanthropic aspect, its benefits to the businesses pledging patents go beyond philanthropy. By forming a Commons, members and non-members obtain free access to patents pledged by others, and the opportunity to leverage the Commons to further innovate and establish business relationships with businesses that have similar interests.

2) How does the Eco-Patent Commons foster and promote innovation?

Experience has shown that free exchange of intellectual property fosters innovation by allowing new players in and freeing resources to work on other problems and improvements—working on the gear rather than reinventing the wheel. The Commons provides an opportunity for businesses to identify common areas of interest and establish new collaborative development efforts.

3) How is the Eco-Patent Commons enhancing business collaboration for the businesses pledging and using the pledged patents?

The Commons provides a useful way for businesses to identify areas of common interest and may promote cross-fertilization among businesses in various areas of the Commons.

4) Who hosts the Eco-Patent Commons?

The patents pledged to the Commons are listed in a dedicated website hosted by the Environmental Law Institute.

5) What is the Environmental Law Institute?

The Environmental Law Institute makes law work for people, places, and the planet. With its non-partisan, independent approach, ELI promotes solutions to tough environmental problems globally. The Institute’s unparalleled research and highly respected publications inform the public debate and build the institutions needed to advance sustainable development. ELI is the preeminent network for current and future leaders in the environmental law and policy profession. Members from all sectors gain access to training through ELI’s sophisticated seminars with debates among experts from diverse perspectives, timely analysis of issues in ELI’s policy and law journals and its website, and unmatched opportunities to connect with public officials, friends and peers at events such as the annual ELI Award Dinner.

6) How is the Eco-Patent Commons structured?

The structure of the Eco-Patent Commons is a simple one, because we believe that makes the initiative more effective. It has a minimal structure sufficient to handle some administrative work, manage the website, and provide a point of contact for prospective members.

7) How is the Eco-Patent Commons funded?

There will eventually be a membership fee to cover costs associated with the management of the Eco-Patent Commons. Anticipated costs include hosting membership meetings or meetings of the Executive Board as needed (which Board member companies may host) as well as the cost of maintaining the dedicated website. These costs are expected to be modest and contained. The membership dues amount is currently at zero; it will be revised by the Executive Board if it becomes necessary.

8) How is the Eco-Patent Commons promoted and publicized?

ELI helps to promote Eco-Patent Commons through its website, magazines, and seminars. In addition, members may help with promotion through presentations at environmental and IP conferences and events, and publication of papers and articles about the Commons. Other venues have included press releases at the time of the initial launch and when new members join, and media interviews. In the future, a potential avenue is working with non-governmental organizations and various government agencies to further promote the Eco-Patent Commons.

9) Who determines whether a patent is worthy of being included in the Commons?

Which patents are submitted to the Commons is left to the discretion of each business. The scope of patents to be considered for inclusion in the Commons is based on the patent classification. An Eco-Patent Commons Classification List of selected International Patent Classifications (IPCs) has been published.

Patents may be pledged that provide environmental benefit and have a primary IPC class that is on the Classification List. Patents may be identified that do not have a homeclass on the Classification List—the homeclass will be considered for inclusion by the Commons. Patents submitted must identify an environmental benefit.

10) Are only patents that provide an “environmental benefit” to be included in the Commons?

Yes. Although it is left to individual businesses to decide which patents they want to pledge, businesses may only pledge patents that directly or indirectly improve or protect the environment and ecology of our planet.

11) Do businesses have to provide all of their environment-related patents to the Eco-Patent Commons?

No. It is up to each business to determine which of its patents it believes is appropriate to pledge to the Commons. It is recognized that businesses will want to retain their exclusive rights to certain patents, including patents that may represent a significant business advantage. Because this advantage may disappear as time passes, businesses may reconsider their decisions periodically.

12) Is there an effort to “translate” the legal language of the patents into a text that would be more readily understood by potentially interested parties?

We expect the businesses pledging patents to provide simple, easily understood summaries of the environmental benefits of the patents they submit to the Commons.

13) Are the patent pledgers required to provide ongoing help to people who are trying to understand the patents the participants have pledged?

There is no requirement for pledgers to provide ongoing support to the businesses interested in using the patents they have pledged. There is certainly an opportunity for collaboration and development of a larger business relationship, however.

14) How is the Eco-Patent Commons growing?

The Commons has grown to 11 companies with over 100 patents since it was started in 2008. As more businesses access patents from the Commons to implement solutions that benefit the environment and as the virtue in participating becomes more widely known, the Commons will continue to grow.

15) Who are the current companies participating in the Eco-Patent Commons?

Currently, there are eleven member companies in the Eco-Patent Commons plus the hosting organization, ELI. The membership list includes:

  • Bosch
  • Dow
  • Fuji-Xerox
  • IBM
  • HP
  • Nokia
  • Pitney Bowes
  • Ricoh
  • Sony
  • Taisei
  • Xerox
  • Host: ELI


16) How is the effectiveness of the Eco-Patent Commons being measured?

It would be useful to have a metric to determine the success of this initiative. Users of the patents are not required to report that usage to the Eco-Patent Commons or the pledging company. Assessing usage of patents where there is a unilateral pledge is a challenging task. However, other ways to measure the success of the Commons are currently being explored.

17) Do patent holders need to continue to pay the expense of maintaining the patents they have pledged? Why wouldn’t they just let the patents lapse and not incur the expense to maintain them?

Payments of maintenance fees on pledged patents are at the sole discretion of the patent holder. While a business can certainly decide to simply place its patents in the public domain, there are reasons a business may want to keep them in force. One reason is the possibility of using pledged patents to maintain freedom of action by enforcing a defensive termination clause. The defensive termination clause outlines instances in which a pledger may terminate its non-assert if another company brings an infringement action against the pledger. It is further noted that the non-assert applies to uses of the patent that provide an environmental benefit. If a business elects to let a pledged patent lapse or it otherwise becomes unenforceable, the patent holder shall provide written notice to the Commons and the Patent List will be updated.

18) What is defensive termination?

Defensive termination is a generally applicable contract provision in license agreements or covenants not to sue (like non-asserts). It sets forth conditions under which the patent holder may terminate a specific party’s rights on the occurrence of a specified condition that is typically an offensive use of patents or other intellectual property (IP) by that party. In the Commons, one defensive termination applies to pledgers and a second defensive termination applies to others. If a non-pledger asserts any patent against a pledger, the pledger may terminate its non-assert. If one pledger asserts against another pledger, the attacked pledger may terminate only if the asserted patent has a homeclass on the Classification List. If the asserted patent(s) are outside the Commons (do not have a homeclass on the Classification List), there is no defensive termination against the attacking pledger—both parties can continue to operate within the Commons. This provides a reasonable benefit to those who contribute to the Commons.

19) Can the non-assert pledge be terminated?

A patent gives the patent owner the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. Patents included in the Commons are subject to a covenant, or pledge, by the patent owner not to assert the patent against an environmentally beneficial use of the invention. Thus, the subject matter covered by the claims of a pledged patent is available for unencumbered use by any party, provided the use by that party achieves environmentally beneficial results.

The Eco-Patent Commons has provided two circumstances under which a member of the Commons can terminate its non-assert pledge (referred to as defensive termination). Both of these circumstances arise only when another party attempts to enforce a patent against a member of the Commons as follows:

  • If a third party that is not a member of the Commons attempts to enforce a patent against a member of the Commons, the member of the Commons may terminate its non-assert pledge with respect to that third party
  • Example: Company A is a member of the commons. Company B, not a member of the commons, sues Company A for patent infringement. Company A can terminate its non-assert pledge for any patents it has pledged to the Commons with respect to Company B, thereby making those patents available for Company A to use in a countersuit against Company B. The non-assert pledge will continue to operate with respect to any other companies.
  • If a member of the Commons attempts to enforce a non-pledged patent against another member of the Commons, the attacked member may terminate its non-assert pledge only (i) if the non-pledged patent asserted by the attacking member has a home class that is included in the Classification List of the Commons, and (ii) the activity against which the non-pledged patent is asserted provides environmental benefits. If the asserted patent(s) are outside the Commons (i.e., do not have a home class on the Classification List) or the activity against which the non-pledged patent is asserted does not have environmental benefits, there is no defensive termination and the attacked member can not terminate its non-assert pledge.

Example: Company A and Company B are members of the Commons. Company B, owner of Patent X that has not been pledged to the Commons, sues Company A for infringement of Patent X. Company A can terminate its non-assert pledge for any patents it has pledged to the Commons with respect to Company B, thereby making those patents available for Company A to use in a countersuit against Company B, only if (i) Patent X has a home class that is included in the Classification List of the Commons, and (ii) Company A’s activities which allegedly infringe Patent X provides an environmental benefit. The non-assert pledge will continue to operate with respect to any other companies.

20) Is it possible that the cost of maintaining the pledged patents could be reduced under “license of right” rules?

That may be possible in some countries. For example, there is a provision in the UK Patents Act 1977 (Section 46) that allows a patentee to have its patent endorsed “licenses of right” and this reduces the annual renewal fees by 50%. Patent holders are encouraged to determine how “license of right” applies in the various countries.

21) Is it possible that pledged patents could be considered “charitable donations” and be subject to tax deductions for the annual patent renewal fees?

It is possible that there could be tax benefits for making donations or pledges of patents, but it may be difficult to structure the Commons to enable that benefit, and it may require a greater degree of governance and operational cost than is currently being envisioned for the initiative. In any event, this benefit would greatly depend on the pledger and facts surrounding its tax situation.

22) What should businesses interested in joining the Eco-Patent Commons do?

If your business wishes to join, please visit the Eco-Patent Commons Join page, review the materials and submit the requested signed form and attached documents.

23) Does a business have to be a member of ELI to be a member of the Eco-Patent Commons?

No. Any business pledging one or more patents is welcome to become a member of the Eco-Patent Commons.