More Green Technology Inventions Eligible for Speedier Patenting
By: MIA E. MENDOZA
December 2010
A pilot program which speeds up the patenting process for green technology applications has now been expanded by the U.S. Patent Office. The Green Technology Pilot Program originally went into effect on December 8, 2009, and allowed certain green technology patent applications to go to the head of the line by granting them “special” status. The program was set to expire in December of this year, but has now been extended for an additional year, and the eligibility requirements have been expanded, so more applications should now qualify for this benefit. However, this special status is not automatically granted, and only the first 3,000 eligible petitions will be granted, so patent applicants interested in this benefit should not delay in making a request.
Moving to the head of the patent application waiting list can be a huge benefit to businesses in which patentable technology is key. Normally, patent applications are placed in line for examination in the order in which they are received. Given the backlog of applications waiting for examination, this can result in a long waiting period during which the patentability of the invention remains uncertain. On average, the waiting period for a first action by the Patent Office is 26.2 months, according to Patent Office figures. In comparison, once an application has been granted special status under the Green Technology Pilot Program, the average time until the first office action is only 49 days. The Patent Office even reports that some patent applications in the Green Technology Pilot Program have been allowed as patents within a year of filing. Such speedy patenting is simply not possible for routine patent applications.
For young technology companies the benefits to obtaining patent coverage more quickly are enormous and can make the difference between success and failure. Such companies need to bring in capital to commercialize their ideas and to move them forward, but investors may be uncomfortable putting money behind an idea where the strength of future patent coverage is uncertain. Once patent examination begins, however, the nature of the future patent claims becomes more predictable, and once the patent issues, the strength of the claims is certain. Early patent examination and issuance reduces investor uncertainty about the patentability of the invention, therefore, making investments less risky and encouraging investors to invest more heavily and at an earlier stage in the life cycle of the business. In addition, because the patent will issue more quickly, companies can begin enforcing their patent rights earlier to keep competitors from copying their inventions, which is a significant benefit to all businesses.
Biofuels related inventions are likely to fall squarely within the definition of the types of green inventions that are eligible for the program. To be eligible, the claimed invention must materially enhance the quality of the environment, or, alternatively, it must contribute to the discovery or development of renewable energy resources (which specifically include renewable biomass), to the more efficient utilization and conservation of energy resources, or to the reduction of greenhouse gas emissions.
It should also be noted that when the program was initiated it included an additional requirement that the invention fall within a narrow list of categories, but this limitation has been eliminated. Petitions which were previously rejected for failing to fall within one of the listed categories can reapply and may be accepted into the current expanded program. In addition, the program was initially only available to applications filed before December 8, 2009, but the current program is also open to applications filed on or after this date. As of November 2, 2010, there were 1,595 petitions filed for the program, and 790 of these had been granted. Under the expanded rules, many more applications should qualify for the program, including some which were previously denied. The Patent Office will continue to grant petitions for the program until December 31, 2011, or until 3,000 petitions are granted, whichever comes first.
It is easy to apply for the program; there is no application fee and only a simple form is required and, in some cases, a statement explaining why the application qualifies for the program. In some cases, adjustments to the number of claims may also be necessary. Given the low cost for applying, and the large potential benefit if accepted, all patent applicants in green technology fields should consider applying for the program. Even applicants who have discussed the option previously with patent counsel, or have applied and been rejected, should reconsider applying under the new, more open program.