USPTO Fast Tracks Green Patent Applications

By: THOMAS R. HIPKINS & ADONIS A. NEBLETT

December 11, 2009

This week, the U.S. Patent & Trademark Office (“USPTO”) announced a pilot program under which many patent applications involving clean/green technology will be examined on an expedited basis.  The USPTO press release can be found here, and the official notice in the Federal Register can be found here.

In this article, we provide an overview of how the pilot program works.  Section A outlines the advantages of participating in the program, and Section B highlights the program’s eligibility requirements.

A.    Why Would You Want to Participate in the Program?

The USPTO is famous for how slowly it examines patent applications.  In its press release announcing this program, the USPTO confessed that the average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision.  This delay often results in missed opportunities for cleantech companies seeking to attract investment capital and commercialize their technology.

Patent applications that are accepted into the USPTO’s pilot program are given higher priority and examined much more rapidly.  Such applications are accorded “special” status—the USPTO’s most exclusive designation—as they await a first office action.  They also carry the “special” designation on appeal and in the patent publication process.  After the first office action, such applications are accorded a status that is lower than “special,” yet still prioritized.

The bottom line is that participating in the USPTO’s pilot program means that your green patent applications will reach final resolution much sooner than they otherwise would.

B.    Are Your Green Patent Applications Eligible for the Program?

Not all green patent applications are eligible for the USPTO’s pilot program.  The program has technology requirements, formal requirements, and timing requirements, which are discussed in the following subsections.

1.  Technology Eligibility Requirements

To be eligible, the patent application must be directed to an invention that does one of the following:

• “materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements”
• “materially contributes to the discovery or development of renewable energy resources,” which include “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”
• “materially contributes to the more efficient utilization and conservation of energy resources”—a category that “would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances”
• “materially contributes to greenhouse gas emission reduction”—a category that includes “inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)”

Additionally, the USPTO’s classification system—the system that determines which applications are assigned to which examiners—must classify the application into one of the established green technology classes listed in the official notice.

2.  Formal Requirements

In addition to the technology requirements, there are also formal requirements.  Specifically, the application must have been filed with the USPTO before December 8, 2009 and must not yet have received a first office action.  Also, the application must have no more than three independent claims and no more than twenty total claims, though applications that do not meet this criterion can be cured with a preliminary amendment.

Green patent applicants wishing to participate in the USPTO’s pilot program must file a “Petition to Make Special Under the Green Technology Pilot Program,” which is a form that can be found here.  The petition must choose one of the technology eligibility requirements listed above and, “if the application disclosure is not clear on its face,” explain how the application meets that requirement.  The official notice emphasizes that this explanation must not rely on “speculat[ion] as to how a hypothetical end-user might specially apply the invention.”

3.  Timing Requirements

Lastly, as the name “pilot program” suggests, this program is designed to be temporary.  It will end when 3,000 petitions have been filed or on December 7, 2010, whichever comes first.  The official notice states that the “USPTO may extend the pilot program (with or without modifications) depending on the feedback from the participants and the effectiveness of the pilot program.”  However, an extension is not guaranteed.  If you are interested in the program, you should apply early because there are a host of corporate and individual applicants already preparing to file their petitions for special status under the program.

Takeaway

The USPTO’s new pilot program represents an opportunity for cleantech companies to strengthen their patent position.  Please contact a member of Fredrikson & Byron’s Patent Group for additional information regarding the new pilot program or other procedures for accelerating examination of your green patent applications.