Green-Technology Patent Applications Get a Green Light on Faster Examinations
By: NATALIE D. KADIEVITCH
December 2009
(We’ve talked before about the interplay of patent, trademark, and copyright law in protecting intellectual property rights. See Don’t Underestimate the Value of Your Point-of-Purchase Displays, Trademark TopicsSM, December 2007, and Protecting Your Product’s Shape, Trademark TopicsSM, December 2006. From time to time my patent colleague, Natalie Kadievitch, will write on interesting developments in U.S. patent practice. Ed.)
The United States Patent and Trademark Office (“USPTO”) began a pilot program last week aimed at accelerating the examination of certain “green” technology patent applications.
Currently, it takes about 30 months for the USPTO to issue a first office action for green technology applications.
Under the pilot program and upon petition, the USPTO will examine the first 3,000 applications related to green technologies on an accelerated basis. The USPTO hopes that the time from application to an issued patent will be reduced by an average of one year.
Applicants may participate in the program by filing a petition that must meet certain requirements. Most notably, the requirement for an examination support document is waived, as is the petition fee.
The application must contain three or fewer independent claims, twenty or fewer total claims, and must not have any multiple dependent claims. The petition must be filed electronically before December 8, 2010. For already-filed applications, the petition must be filed at least one day before a first office action appears in the Patent Application Information Retrieval System (“PAIR”).
Substantively, the claims must be directed to a single invention that either:
- materially enhances the quality of the environment, or
- materially contributes to:
- the discovery or development of renewable energy resources;
- the more efficient utilization and conservation of energy resources; or
- greenhouse gas emission reduction.
For inventions directed to category (a), the petition must state that special status is sought because the quality of the environment is enhanced by contributing to the restoration or maintenance of the basic life-sustaining natural elements. If the application does not clearly set this forward, the petition must then include a statement explaining how the materiality standard is met.
For inventions directed to category (b)(1), the term “renewable energy resources” includes hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current and thermal), geothermal and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources.
Inventions directed to category (b)(2) include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances.
Inventions directed to category (b)(3) include, but are not limited to, advances in nuclear power generation technology or fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies).
For inventions directed to categories (B)(1)-(3), the petition must state the basis for special status. If the application is not clear on its face how the invention materially contributes in one of the listed categories, the petition must include a statement explaining how the materiality standard is met.
In his remarks at the December 7 announcement of the pilot program, Secretary of Commerce Gary Locke said
“[t]oday, the top 5 Internet technology companies in the world are based right here in the U.S. But of the top 30 alternative energy companies in the world, only 1 in 5 are American. We cannot sit idly by as the Silicon Valley of alternative energy is created in Berlin or Shanghai or New Delhi.
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I’m proud to announce the creation of a pilot program to accelerate the patent process for green technology inventions, a program we believe will ultimately lead to more American jobs being created in the critically important green energy sector.
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It is critical that American innovators lead the way in green technology fields, and it’s so important that we have robust green energy job creation right here in America. This pilot program is an important step in ensuring that American entrepreneurs have every advantage to commercialize and thrive in the green energy sector.”